United States: Precedential No. 6: TTAB Finds ALGAE WAFERS Generic For .... Guess What?

Last Updated: April 16 2019
Article by John L. Welch

Adding to a growing list of genericness rulings, the Board affirmed a refusal to register ALGAE WAFERS for "fish food," finding it to be generic for the goods. The Board also affirmed an alternative refusal under Section 2(e)(1), deeming Applicant Hikari's proof of acquired distinctiveness under Section 2(f) to be inadequate in view of the highly descriptive nature of the term. In re Hikari Sales USA, Inc., Serial No. 86439012 (March 29, 2018) [precedential] (Opinion by Judge Cheryl S. Goodman).

Genericness: The test for determining whether a proposed mark is generic is its primary significance to the relevant public. Magic Wand Inc. v. RDB Inc., 19 USPQ2d 1551, 1553-54 (Fed. Cir. 1991); H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 228 USPQ 528, 530 (Fed. Cir. 1986)).

As usual, there was no dispute here as to the genus of goods, which the Board found to be congruent with applicant's identification, i.e., "fish food." See Magic Wand, 19 USPQ2d at 1552 ("[A] proper genericness inquiry focuses on the description of [goods or] services set forth in the [application or] certificate of registration."). The relevant public comprises consumers who use or purchase fish food, i.e., plant or animal material for consumption by fish kept in aquariums or ponds.

The record evidence bearing on the public's understanding of "Algae Wafers" included dictionary definitions of the constituent terms; Applicant Hikari's specimen of use (shown above) depicting the goods in wafer or disk form (see lower left corner), stating ""Ideal for Algae Eaters," and indicating that the goods include spirulina (a microalgae) as an ingredient; applicant's brochure referring to the goods as a "sinking wafer;" examples of use of the term by competitors; third-party Internet evidence referring to fish food for algae-eating fish; use of the term in books and news stories; Google search results; applicant's policing efforts; applicant's survey results; and testimony from Hikari's linguistic expert.

Hikari pointed to its filing of four infringement suits against competitors, two of whom no longer use "algae disks" with their products. The Board gave this evidence no weight, since the competitors may have agreed to discontinue use of the term in order to avoid litigation rather than because they considered the term distinctive.

Turning to Hikari's survey evidence, the Board pointed out that, like various circuit courts of appeals, it has found that as to genericness, consumer surveys "are only appropriate to consider in a case where the question is whether a coined or arbitrary mark has become generic, and is not appropriate to prove recognition of an otherwise not inherently distinctive mark." Frito-Lay, 124 USPQ2d at 1196 (citing Hunt Masters, Inc. v. Landry's Seafood Restaurant, Inc., 240 F.3d 251, 57 USPQ2d 1884, 1886 (4th Cir. 2001)

The Board observed, however, that even if it considered the survey evidence, it was entitled to little weight due to numerous flaws in the survey and Hikari's interpretation thereof. Hikari claimed a recognition rate of more than 50% in arguing that ALGAE WAFERS is not generic and has secondary meaning. The Board noted, on the other hand, that more than 47% of the 1001 respondents that identified "Algae Wafers" with multiple sources, named someone other than Hikari.

Moreover, the survey was flawed because it did not utilize a control group and no pre-testing was performed, and therefore the Board could not be sure that survey participants actually understood what they were being asked.

The survey asked consumers whether they "associated" the term "Algae Wafers" with one or more companies. But the survey does not adequately reveal the nature of the association a consumer perceives between "Algae Wafers" and Applicant Hikari and the other companies identified, as there were no follow-up questions inquiring as to the  reason for identifying Hikari, or another company that would establish what the respondent understood.

Moreover, the survey did not explore the proper universe. Although the goods were broadly identified as "fish food," the survey respondents were limited to purchasers of fish food for tropical fish in households where tropical fish are owned and did not include those who purchase fish food for fish other than tropical fish. See Omaha Steaks Int'l, Inc. v. Greater Omaha, 128 USPQ2d 1686, 1692 (Fed. Cir. 2018) (where identification of goods broadly identified goods as meat and beef, survey universe too narrow because it eliminated from survey meat eaters who buy their meat from sources other than plaintiff). Also, the survey may have been skewed towards Hikari by excluding respondents who had not seen the term "Algae Wafers" on any food products for tropical fish but owned or cared for tropical fish and purchased food.

Turning to the analysis of the term ALGAE WAFERS by Hikari's linguistic expert, the Board found that evidence to be useless:

We do not know the sources he used to support his conclusions regarding the meaning of "wafer." But in his analysis of the term "algae," Dr. Habick focuses on the ingredient in a wafer that is for human consumption, rather than considering algae as an ingredient in connection with fish food, the relevant goods. Dr. Habick did not explain why he did not consider in his analysis other definitions or meanings for "wafer," including those referencing a disc shape. Dr. Habick also did not consider Applicant's own advertising and promotional materials which describe the goods as having a disc shape, containing algae, and for algae eaters; nor did Dr. Habick consider any third party use. Moreover, there is no evidence suggesting that Dr. Habick is a trademark expert, and his opinion as to whether "Algae Wafers" is suggestive, descriptive or generic is not entitled to any weight.

Finding that ALGAE WAFERS "has a plain and readily understood meaning as a type of fish food in wafer form containing algae," the Board deemed the term generic and ineligible for trademark registration.

Acquired Distinctiveness: For completeness, the Board considered Hikari's claim of acquired distinctiveness. Not surprisingly in light of the record evidence and its finding of genericness, the Board found ALGAE WAFERS to be highly descriptive of fish food, and thus that Hikari had a correspondingly higher burden of proof under Section 2(f).

Applying the CAFC's Converse factors, the Board observed again that Hikari's survey carried little probative weight due to its several deficiencies, and that the conclusion of its linguistics expert that "Algae Wafers" has acquired distinctiveness was likewise of little probative value.

Hikari has used the term ALGAE WAFERS since 1991, and spent about $95,000 per year on print and Internet advertising, but the record lacked "sufficient information as to whether the amounts stated are significant in the industry." Moreover, its advertisements also featured other Hikari products sold under other brand names, "thus diluting how much of the advertising spending should be counted toward building consumer awareness of 'Algae Wafers.'" Hikari's trade show expenditures averaged about $80,000 per year, but it was unclear  how much of the advertising and trade show expenses were related to products sold under the "Algae Wafers" designation. There was no information of record as to the circulation of the magazines in which Hikari advertised, and no information as to the number of visitors at its trade show booths. Consequently, there was nothing to indicate "the extent of consumer exposure and any resulting impact on consumer perception."

The Board concluded that, "[g]iven that the designation is highly descriptive, much more persuasive evidence than Applicant has submitted would be necessary to show that "Algae Wafers" has become distinctive as a source indicator for Applicant's fish food."

And so the Board affirmed the alternative refusal to register on the ground of mere descriptiveness and lack of acquired distinctiveness.

The TTABlog

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions