In In re Nordic Naturals, Inc., No. 13-1492 (Fed. Cir. June 23, 2014), the Federal Circuit affirmed the TTAB's refusal to register CHILDREN'S DHA because the mark was generic.

Nordic Naturals, Inc. ("Nordic") applied to register CHILDREN'S DHA for nutritional supplements containing docosahexaenoic acid ("DHA"), an omega-3 fatty acid that assists in brain development.  During prosecution, Nordic disclaimed exclusive use of DHA apart from its use in the mark as a whole and clarified that it was designed for use by children.  The examining attorney refused registration because the mark was generic or, alternatively, because it lacked acquired distinctiveness.  Nordic appealed to the TTAB, which upheld the examining attorney's findings that the mark was generic and had not acquired distinctiveness.  The TTAB found that the relevant goods were "nutritional supplements containing DHA" and that the relevant public for these goods "consists of parents or other adults seeking nutritional supplements containing DHA for children."  Slip op. at 2 (citation omitted).  The TTAB cited dictionary definitions of "child" and "DHA" and third-party uses of "children's DHA" describing DHA products for children to support its finding that "'children's DHA' merely described an essential fatty acid for children, without indicating source."  Id. (citation omitted).

"Here, there is a lack of third-party references recognizing Nordic as the source of 'children's DHA.'  Instead, the record contains references that use this phrase in a generic and descriptive manner."  Slip op. at 7.

On appeal, the Federal Circuit upheld the TTAB's refusal to register the mark as generic.  Because it affirmed the TTAB's decision on genericness, the Court did not address the parties' arguments on acquired distinctiveness.  "A mark is generic if the relevant public primarily uses or understands the mark to refer to the category or class of goods in question."  Id. at 3.  Because Nordic did not challenge the TTAB's characterization of the category of goods and relevant public, the Court adopted the TTAB's definitions of these terms.  In analyzing the evidence of record, the Court noted that "nothing in the definition of 'child' and 'DHA' . . . suggests 'children's DHA' might identify the source of a product, rather than just describe the product."  Id. at 4.  The Court held that, rather than indicating a source, the dictionary definitions of record showed that "children's" merely described a category of DHA.  Id.

The Federal Circuit then explained that third-party uses of "children's DHA" further supported its holding, noting that the evidence of record did not support a "mixture of usages," which might negate a finding of genericness.  Rejecting Nordic's argument that third parties used "children's DHA" to refer to its products, the Court distinguished this case from In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567 (Fed. Cir. 1987), in which third-party uses "showed recognition . . . that the source of the [goods and services] was the appellant."  Slip op. at 6 (quoting In re Merrill Lynch, 828 F.2d at 1571).  The Court held that third parties using "children's DHA" to refer to Nordic's goods used it "to describe those goods in a generic manner."  Id. at 7.  The Court also did not afford great weight to declarations of retailers of Nordic's products because the retailers were not members of the relevant public.  Because substantial evidence supported the TTAB's findings, the Court affirmed the refusal to register "CHILDREN'S DHA" because the mark was generic.

Judges:  Reyna (author), Wallach, Taranto
[Appealed from TTAB]

This article previously appeared in Last Month at the Federal Circuit, July 2014.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.