Trademark That Is Descriptive Of Nutritional Supplement Ingredients Is Not Registrable

In In re TriVita, Inc., No. 14-1383 (Fed. Cir. Apr. 17, 2015), the Federal Circuit affirmed the TTAB's rejection of the mark NOPALEA as merely descriptive under section 2(e)(1) of the Lanham Act.

TriVita, Inc. ("TriVita") filed a trademark application to register the mark NOPALEA for dietary and nutritional supplements containing nopal juice, which comes from the Nopalea genus of nopal cactus. The trademark examining attorney rejected the application as merely descriptive of the product. TriVita appealed to the TTAB, arguing that the mark could not be descriptive because its products contained extracts from the Opuntia genus of nopal cactus, not from the Nopalea genus. The TTAB affirmed the examining attorney's rejection, citing instances where "nopalea" was used interchangeably with "nopal" and concluding that consumers would understand the term "nopalea" to describe an aspect of TriVita's products. TriVita appealed.

TriVita made four primary arguments on appeal, each of which was rejected by the Federal Circuit. First, the Court considered TriVita's argument that the TTAB failed to compare the word "nopalea" with "nopal," the common name for the prickly pear cacti of both the Nopalea genus and Opuntia genus. The Court disagreed with TriVita that the addition of "EA" to the end of "nopal" made the mark NOPALEA substantially different in sight and sound from the common word, explaining that "'nopalea' is not a made-up word obtained by adding arbitrary letters." Slip op. at 4. The Court explained that, as found by the TTAB, "nopalea" is a genus of cacti from which nopal juice in TriVita's product is derived.

"The [TTAB] based its finding on evidence that 'nopalea' is the name of a genus of cacti used in food and supplements, that the word 'nopal' is a common name for prickly pear cacti including cacti in the genus Nopalea, and that the words 'nopal' and 'nopalea' are used interchangeably to refer to cacti of that genus." Slip op. at 6.

Second, the Court considered TriVita's argument that the TTAB did not make any factual findings about the sophistication of the average consumers likely to encounter TriVita's goods. The Court was not persuaded by TriVita's argument that the ordinary purchaser "will be of low botanical sophistication," and therefore would not recognize that the word "nopalea" had any botanical significance. Id. at 5. The Court found that "there is abundant evidence, scientific and non-scientific, of the words...