Trivita, Inc.

Trademark Trial and Appeal BoardDec 17, 2013

No. 77658158 (T.T.A.B. Dec. 17, 2013)

Mailed: Hearing: December 17, 2013 November 13, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Trivita, Inc. ________ Serial No. 77658158 _______ Adam R. Stephenson of Adam R. Stephenson Ltd., for Trivita, Inc. Samuel Paquin, Trademark Examining Attorney, Law Office 111 (Ronald Sussman, Managing Attorney).1 _______ Before Quinn, Wellington and Ritchie, Administrative Trademark Judges. Opinion by Ritchie, Administrative Trademark Judge: Trivita, Inc., applicant herein (“applicant”), seeks registration on the Principal Register of the mark 1 Examining Attorney Erin Falk handled the prosecution of this application on behalf of the Office; however, subsequent to briefing of this appeal, Mr. Paquin was substituted as the assigned examining attorney and he represented the Office at oral argument. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Ser. No. 77658158 2 “NOPALEA,”2 in standard character format, for goods identified as “Dietary and nutritional supplements sold exclusively through multi-level direct marketing; nutritional supplements sold exclusively through multi- level direct marketing; all of the foregoing containing, in whole or in substantial part, nopal juice,” in International Class 5. The trademark examining attorney finally refused registration on the ground that applicant’s proposed mark is merely descriptive of the identified goods under Trademark Act Section 2(e)(1), 15 U.S.C. § 1052(e)(1). Both applicant and the examining attorney filed briefs, and applicant filed a reply brief. At applicant’s request, a hearing was held and presided over by this panel on November 13, 2013. Descriptiveness A term is deemed to be merely descriptive of goods or services, within the meaning of Section 2(e)(1), if it forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services. See, In re Chamber of Commerce 2 Serial No. 77658158, filed on January 28, 2009, amended to filing under Trademark Act Section 1(a) of the Trademark Act, 15 U.S.C. § 1052(a), with dates of first use and first use in commerce asserted from February 28, 2009, as filed with Statement of Use on April 9, 2011. Ser. No. 77658158 3 of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012), citing In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); see also In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). Whether a term is merely descriptive is determined not in the abstract, but in relation to the goods or services for which registration is sought, the context in which it is being used on or in connection with those goods or services, and the possible significance that the term would have to the average purchaser of the goods or services because of the manner of its use. That a term may have other meanings in different contexts is not controlling. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). The examining attorney argues that the term “nopalea” is merely descriptive of the goods in the application, in that the goods contain nopal, “which is derived from an abstract of the nopalea plant.” (EA’s brief at unnumb’d 5 of 14). Applicant admits that nopal juice may derive from the nopalea cactus, but argues that 1.) because nopal juice may derive from either the nopalea or the opuntia cactus, it cannot be considered merely descriptive, but rather, at Ser. No. 77658158 4 worst suggestive;3 and 2.) applicant’s specific product, as shown on the label on its specimen, in fact derives from the opuntia rather than the nopalea cactus. We take these arguments in turn and discuss the evidence of record. The term “nopalea” refers to a genus of cacti: Nopalea: noun, a genus of the cactus family with scarlet flowers. April 16, 2009 Office Action, p.40. Dictionary.com. Nopalea cochenillifera: Family Cactaceae; Genus Nopalea. Identification: Genus Nopalea; Species: cochenillifera; Variety: Cultivar; Common Names nopal; Family Cactaceae. April 16, 2009 Office Action, p. 37. www.crescentbloom.com. Genus Nopalea: (noun) a genus of the cactus family with scarlet flowers. December 13, 2011 Office Action, at 29. http://www.Elook.org. Dictionary definitions of “nopal” refer to both the genus “nopalea” and to the genus “opuntia”4: Nopal: 1. Any of various cacti of the genera Nopalea or Opuntia, including the prickly pear and similar species. 2. The fleshy, oval, edible pad of such a cactus. April 9, 2011 Response to Office Action, p.2. http.//education.yahoo.com. 3 Applicant stated in its brief and confirmed at oral hearing: “Therefore, based on the usage in the industry, the term ‘nopal juice’ in the description of the goods could refer to extracts taken from both the genera Nopalea and Opuntea.” (appl’s brief at 8). We take this as an admission that the extract could derive from either cactus. These statements are also, as noted, confirmed by the record. 4 As noted, there is some disagreement in the record as to the relationship of the nopalea, opuntia, and prickly pear cacti. See also discussion in Henderson decl., infra. Ser. No. 77658158 5 Nopal: 1. Any of a genus (Nopalea) of cacti of Mexico and Central America that differ from the prickly pears in having erect petals and scarlet flowers with the stamens much longer than the petals; broadly prickly pears.; 2. A fleshy young tender stem segment of the prickly pear cactus (especially opuntia ficus-indica) or the nopal cactus used as food. April 9, 2011 Response to Office Action, p.3. www.merriam- webster.com (2011). Nopalea is used in food and recipes, and sometimes medicinally. We note that some of these sites appear to be from affiliates of applicant, touting the benefits of nopalea: Nopalea: A genus of the cactus family with scarlet flowers. Plants of Nopalea are pollinated by hummingbirds, and their winter flowering coincides with hummingbird migration. The stems and flowers are edible and used as forage. The plants are used medicinally as a tea to relieve kidney-stone pain and as a poultice on wounds and Diabetes. Nopal is often used to relieve the symptoms of overindulgence in alcohol, including dry mouth and nausea. It is also thought to lower fats and cholesterol in the blood and is becoming increasingly popular as a means to decrease blood sugar levels and control diabetes. April 16, 2009 Office Action, at 31-32. www.nopalea.org. Natural Benefits from Nopalea Health Products: To begin, it is important to highlight where the ingredients to these miracle juices are formed. The fruits used for these health drinks come from the cactus plants that grow in arid areas of the Southwestern United States. Once harvested, these fruits are turned into juices which are Ser. No. 77658158 6 then bottled and sent directly to customers. . . . The effects that these Nopalea products give off are varied and unmistakable after someone ingests these products. January 7, 2011 Office Action, at 2-3. www.healthhubarticles.com. Nopalea Cactus Fruit Health Gives Benefits and Protection from Obesity and Other Diseases: The power of Nopal cactus is Remarkable with Nopalea Sonoran Bloom by Trivita Wellness. Trivita is a World Class Direct Selling Company offering exclusively this Unique Miracle Formula of Nopalea by Trivita. Trivita’s Nopalea Cactus Fruit has been featured on Tv. Read More Here or See The Product. [sic] Nopalea (No-pah lay uh) blends antioxidant-rich Nopal cactus superfruit with naturally sweet Agave nectar to bring you a deliciously unique concentrated wellness drink. . . . The Nopal or Nopalea Cactus Fruit Contains Betalains. January 7, 2011 Office Action, at 5. Press Release. www.1888pressrelease.com. Nopalea: Nopalea juice can help relieve pain and inflammation in your body! Do you or anyone you know suffer from arthritis, heart disease, diabetes or any of the many autoimmune disorders like lupus or fibromyalgia? Medical research shows these health conditions and many more are associated with inflamed tissues in the body. The nopalea cactus is one of the most nutrient rich cactus species known to science. This desert plant has proven anti-inflammatory properties. Clinical studies show that the opuntia cactus is effective in fighting chronic inflammation. Nopal cactus juice is made from this plant’s magenta colored fruit. . . . Nopalea fruit is low in calories, as well as sodium. . . . What is Nopalea Cactus Juice? Ser. No. 77658158 7 Nopalea cactus juice is now available as a tasty nutrition drink! . . . Nopalea cactus supplements can also help improve immune system function in your body. January 7, 2011 Office Action, at 16-17. http://www.sonoranbloom.com/content/products/nopa lea/researchandscience. Commercially, the ingredients from the nopalea cactus fruit are used in the food industry as red food dyes to improve the color of tomato paste, sauces, desserts, jams and jellies, ice cream, sweets and breakfast cereals. Health Benefits: Due to its harsh arid environment, the nopalea cactus fruit of the Sonoran Desert has the highest concentration of betalains of any plant on earth! This includes other nopalea cactus from other regions of the world. These health promoting substances are now available in a specially formulated cactus juice drink called Nopalea. December 13, 2011 Office Action, at 18. http://www.best-natural-health-supplements.com. Rivenrock Gardens sells as it’s [sic] premier variety the cactus called Nopalea Grande. This is a nearly spineless cactus that is easy to prepare, and has a delightful taste both raw and cooked. One should harvest the nopal cactus when the individual leaf is young and fresh. www.rivenrock.com/recipes. [images follow] December 13, 2011 Office Action, p8-11: Ser. No. 77658158 8 Ser. No. 77658158 9 Applicant submitted into evidence a thesis on prickly pear cacti to show the difference between nopalea and opuntia cacti. However, information contained therein appears to state that while the blooming times are different, “One new combination has been made, transferring Nopalea hondurensis from Opuntia.” Puente-Martinez, Taxonomic Revision and Phylogeny of the Genus Nopalea, Salm-Dyck (Cactaceae Opuntioideae) (Thesis 2006 at Abstract iii). The thesis further discusses how both genuses refer to, or are referred to as “nopal”: Etymology: The genus name is derived of the Spanish word ‘nopal’, used in Mexico for all Ser. No. 77658158 10 flat-stemmed pricklypears in Nopalea and Opuntia. [sic] Id. at 51. Applicant admits to being “familiar with the word ‘nopal’ as it refers generically to a number of different prickly pear cactus species.” (Henderson decl., at para. 5). However, Mr. Henderson attested that he is “unaware that any extract or compound of a nopal plant, nopal cactus, or prickly pear cactus is referred to or known by the word ‘nopal’ in the industry.” Id. He further stated that “In the industry, the prickly pear cactus is referred to as a ‘nopal plant’ or ‘nopal cactus’ but not as a ‘nopalea plant.’” Id. at para. 6. He further added, “I declare that the applied for goods do contain extracts of the nopal plant or nopal cactus.” Id. at para. 5. Finally, applicant argues that while “nopal” may refer to both or either genus, applicant’s product “[p]resently contains juice from the fruit of the Opuntia ficus-indica prickly pear cactus, also known as the Indian fig prickly pear.” (Henderson decl. at para. 6). However, we note that applicant’s identification of goods is not so limited. We are bound to make a determination not by applicant’s current use or labeling, but rather by applicant’s identification of goods in its application. Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d Ser. No. 77658158 11 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“[t]he authority is legion that the question of registrability of an applicant’s mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant’s goods, the particular channels of trade or the class of purchasers to which the sales of goods are directed.” [Citations omitted]). There is no indication in applicant’s identification of goods that the “nopal juice” in its goods derives from opuntia rather than nopalea cacti. The record indicates that nopalea is indeed a genus of cacti which is used for food and medicine, and which is commonly referred to as “nopal.”5 Consumers may well assume, (as apparently do some of applicant’s affiliates) that, as a characteristic of nopal juice, applicant’s goods derive from genus nopalea. In this regard, applicant helpfully pointed us to the case Amer. Aloe Corp. v. Aloe Crème Laboratories, Inc.,6 420 F.2d 1248, 164 USPQ 266 (7th Cir. 1970) (ALOE as generic or descriptive because identical to plant genus name). As the 5 Although Mr. Henderson’s declaration attests that it is not so known in the industry, the record indicates that dictionary and web evidence associates “nopal” with “nopalea.” 6 The case was subsequently cited by the Board in Aloe Crème Laboratories, Inc. v. Aloe 99, Inc., 188 USPQ 316 (TTAB 1975). Ser. No. 77658158 12 court there noted, where the alleged mark holder sought to register variants of a plant genus “aloe,” the terms were found to be generic not only for pharmaceuticals but for cosmetics as well, stating: Defendant cannot appropriate for its own trademark use the generic name of the distinguishing and effective ingredient in its product. (at 268). Accordingly, we are left with no doubt that a consumer would understand the term “nopalea” used in connection with applicant's goods as conveying information about them. See In re Tower Tech Inc., 64 USPQ2d at 1316-17; see also In re Conductive Services, Inc., 220 USPQ 84, 86 (TTAB 1983). Therefore we find that the applied-for mark is merely descriptive of the identified goods. Decision: The refusal to register under Trademark Act Section 2(e)(1) is affirmed.