In re TriVita, Inc., No. 2014-1383, 2015 U.S. App. LEXIS 6301 (Fed. Cir. Apr. 17, 2015) (Newman, J.). Click Here for a copy of the opinion.
TriVita filed a trademark application to register the mark NOPALEA for dietary and nutritional supplements "containing, in whole or in substantial part, nopal juice." The examiner rejected the application as "descriptive of a feature of applicant's goods on the grounds that applicant's products contain nopal which is derived from an [ex]tract of the nopalea plant." TriVita appealed to the Board, arguing that the term "nopalea plant" is not used in the food industry and that TriVita's products contain extracts from the Opunti genus of the nopal cactus, not the Nopalea genus.
The Board acknowledged that both Opuntia and Nopalea cacti may be referred to as nopal cacti but concluded that there was "no doubt that a consumer would understand the term 'nopalea' used in connection with [TriVita's] goods as conveying information about them." The Board pointed to several websites, including those of TriVita's affiliates, showing Nopalea genus as the cactus used in food and supplements. In addition, some websites also explicitly stated that TriVita's products were derived from the Nopalea cactus. Furthermore, TriVita's registration application did not mention the genus from which its "nopal juice" derived. Based on these findings, the Board affirmed the rejection.
The Federal Circuit affirmed. Section 2(e)(1) of the Lanham Act provides that a term is not registerable if it "consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them." TriVita first argued for the distinction between the words "NOPALEA" and "nopal" and that the letters "EA" made NOPALEA substantially different in sight and sound. However, "nopalea" is not a made-up word; it is a genus of cacti from which nopal juice is derived. Even if TriVita's products derived from Opunti and not Nopalea cacti, "substantial evidence supports a finding that consumers are likely to assume that the NOPALEA mark denotes that TriVita's products contain ingredients from the Nopalea cactus."
TriVita next argued that "the ordinary purchaser of its products will be of low botanical sophistication and will not immediately recognize the botanical meaning of the word 'nopalea.'" However, substantial scientific and non-scientific evidence indicated that the words "nopalea" and "nopal" were used interchangeably. TriVita also suggested that it could take measures to "ensure NOPALEA is used non-descriptively in conjunction with the goods in question at the point of sale." However, the Court found no factual showing of such non-descriptive use. Furthermore, the records showed that TriVita's distributors stated that the products contain juice from Nopalea cactus.
Based on the Board's factual findings, the Federal Circuit affirmed the Board's conclusion that "nopalea" is merely descriptive of TriVita's goods.
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