Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA587044
`ESTTA Tracking number:
`02/12/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`77658158
`Trivita, Inc.
`NOPALEA
`ADAM R STEPHENSON
`ADAM R STEPHENSON LTD
`401 W BASELINE ROAD , SUITE 207
`TEMPE, AZ 85283
`UNITED STATES
`adam@patentproblempro.com, janice@patentproblempro.com
`Appeal to CAFC
`NoticeofAppeal_FiledWithESTTA.pdf(831367 bytes )
`Adam R. Stephenson
`adam@patentproblempro.com
`/Adam R. Stephenson/
`02/12/2014
`
`Proceeding
`Applicant
`Applied for Mark
`Correspondence
`Address
`
`Submission
`Attachments
`Filer's Name
`Filer's e-mail
`Signature
`Date
`
`
`ESTTA587044
`ESTTA Tracking number:
`02/12/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`77658158
`Trivita, Inc.
`NOPALEA
`ADAM R STEPHENSON
`ADAM R STEPHENSON LTD
`401 W BASELINE ROAD , SUITE 207
`TEMPE, AZ 85283
`UNITED STATES
`adam@patentproblempro.com, janice@patentproblempro.com
`Appeal to CAFC
`NoticeofAppeal_FiledWithESTTA.pdf(831367 bytes )
`Adam R. Stephenson
`adam@patentproblempro.com
`/Adam R. Stephenson/
`02/12/2014
`
`Proceeding
`Applicant
`Applied for Mark
`Correspondence
`Address
`
`Submission
`Attachments
`Filer's Name
`Filer's e-mail
`Signature
`Date
`
`
`
`UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
`
`TriVita, Inc.,
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`V_
`
`Appellant
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`NOTICE OF APPEAL
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`United States Patent and Trademark
`Office, Trademark Trial and Appeal Board,
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`Seria1N0' 77658158
`
`Appellee
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`Appellant, TriVita, Inc. hereby gives Notice of Appeal of the Order of the
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`Trademark Trial and Appeal Board, in its entirety, refusing registration of NOPALEA in
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`Class 5, Serial No. 77/658,158, entered on December 17, 2013 (the “Order”). The
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`Appellant received the Order on December 17, 2013. A copy of the Order is attached
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`hereto.
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`Dated this 12th ofFebruary, 2014
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`2
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`Respectfully submitted,
`
`Adam R. Stephenson
`Adam R. Stephenson, LTD.
`40 W. Baseline Rd., Ste. 101
`
`Tempe, AZ 85283
`480-264-6075
`
`adam@patentproblempro.com
`(Attorney for Applicant and Appelant
`TriVita, Inc.)
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that the foregoing Notice of Appeal has been served upon the
`Trademark Trial and Appeal Board electronically through ESTTA, with a duplicate copy
`sent Via certified mail to the Office of the General Counsel, United States Patent and
`Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450, on this 12th day of
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`February, 2014.
`
`Adam R. Stephenson, Esq.
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`Hearing:
`November 13, 2013
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`Mailed:
`December 17, 2013
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`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
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`
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`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.
`
`
`
`Ser. No. 77658158
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`“NOPALEA,”2 in standard character format, for goods
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`identified as “Dietary and nutritional supplements sold
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`exclusively through multi-level direct marketing;
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`nutritional supplements sold exclusively through multi-
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`level direct marketing; all of the foregoing containing, in
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`whole or in substantial part, nopal juice,” in
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`International Class 5. The trademark examining attorney
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`finally refused registration on the ground that applicant’s
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`proposed mark is merely descriptive of the identified goods
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`under Trademark Act Section 2(e)(1), 15 U.S.C.
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`§ 1052(e)(1).
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`Both applicant and the examining attorney filed
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`briefs, and applicant filed a reply brief. At applicant’s
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`request, a hearing was held and presided over by this panel
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`on November 13, 2013.
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`Descriptiveness
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`A term is deemed to be merely descriptive of goods or
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`services, within the meaning of Section 2(e)(1), if it
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`forthwith conveys an immediate idea of an ingredient,
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`quality, characteristic, feature, function, purpose or use
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`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.
`
`2
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`
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`Ser. No. 77658158
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`of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed.
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`Cir. 2012), citing In re Gyulay, 820 F.2d 1216, 3 USPQ2d
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`1009 (Fed. Cir. 1987); see also In re Abcor Development
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`Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978).
`
`Whether a term is merely descriptive is determined not in
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`the abstract, but in relation to the goods or services for
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`which registration is sought, the context in which it is
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`being used on or in connection with those goods
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`or services, and the possible significance that the term
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`would have to the average purchaser of the goods or
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`services because of the manner of its use. That a term may
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`have other meanings in different contexts is not
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`controlling. In re Bright-Crest, Ltd., 204 USPQ 591, 593
`
`(TTAB 1979).
`
`The examining attorney argues that the term “nopalea”
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`is merely descriptive of the goods in the application, in
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`that the goods contain nopal, “which is derived from an
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`abstract of the nopalea plant.” (EA’s brief at unnumb’d 5
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`of 14). Applicant admits that nopal juice may derive from
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`the nopalea cactus, but argues that 1.) because nopal juice
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`may derive from either the nopalea or the opuntia cactus,
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`it cannot be considered merely descriptive, but rather, at
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`3
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`Ser. No. 77658158
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`worst suggestive;3 and 2.) applicant’s specific product, as
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`shown on the label on its specimen, in fact derives from
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`the opuntia rather than the nopalea cactus. We take these
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`arguments in turn and discuss the evidence of record.
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`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.
`
`4
`
`
`
`Ser. No. 77658158
`
`
`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
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`sometimes medicinally. We note that some of these
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`sites appear to be from affiliates of applicant,
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`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
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`5
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`Ser. No. 77658158
`
`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?
`
`6
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`
`
`Ser. No. 77658158
`
`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:
`
`
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`7
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`Ser. No. 77658158
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`
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`8
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`Ser. No. 77658158
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`
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`Applicant submitted into evidence a thesis on prickly
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`pear cacti to show the difference between nopalea and
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`opuntia cacti. However, information contained therein
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`appears to state that while the blooming times are
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`different, “One new combination has been made, transferring
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`Nopalea hondurensis from Opuntia.” Puente-Martinez,
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`Taxonomic Revision and Phylogeny of the Genus Nopalea,
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`Salm-Dyck (Cactaceae Opuntioideae) (Thesis 2006 at Abstract
`
`iii). The thesis further discusses how both genuses refer
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`to, or are referred to as “nopal”:
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`Etymology: The genus name is derived of the
`Spanish word ‘nopal’, used in Mexico for all
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`9
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`Ser. No. 77658158
`
`flat-stemmed pricklypears in Nopalea and Opuntia.
`[sic]
`Id. at 51.
`
`Applicant admits to being “familiar with the word
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`‘nopal’ as it refers generically to a number of different
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`prickly pear cactus species.” (Henderson decl., at para.
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`5). However, Mr. Henderson attested that he is “unaware
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`that any extract or compound of a nopal plant, nopal
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`cactus, or prickly pear cactus is referred to or known by
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`the word ‘nopal’ in the industry.” Id. He further stated
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`that “In the industry, the prickly pear cactus is referred
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`to as a ‘nopal plant’ or ‘nopal cactus’ but not as a
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`‘nopalea plant.’” Id. at para. 6. He further added, “I
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`declare that the applied for goods do contain extracts of
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`the nopal plant or nopal cactus.” Id. at para. 5.
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`Finally, applicant argues that while “nopal” may refer
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`to both or either genus, applicant’s product “[p]resently
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`contains juice from the fruit of the Opuntia ficus-indica
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`prickly pear cactus, also known as the Indian fig prickly
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`pear.” (Henderson decl. at para. 6). However, we note
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`that applicant’s identification of goods is not so limited.
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`We are bound to make a determination not by applicant’s
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`current use or labeling, but rather by applicant’s
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`identification of goods in its application. Octocom
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`Systems, Inc. v. Houston Computers Services Inc., 918 F.2d
`
`10
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`
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`Ser. No. 77658158
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`937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“[t]he
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`authority is legion that the question of registrability of
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`an applicant’s mark must be decided on the basis of the
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`identification of goods set forth in the application
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`regardless of what the record may reveal as to the
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`particular nature of an applicant’s goods, the particular
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`channels of trade or the class of purchasers to which the
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`sales of goods are directed.” [Citations omitted]). There
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`is no indication in applicant’s identification of goods
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`that the “nopal juice” in its goods derives from opuntia
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`rather than nopalea cacti. The record indicates that
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`nopalea is indeed a genus of cacti which is used for food
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`and medicine, and which is commonly referred to as “nopal.”5
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`Consumers may well assume, (as apparently do some of
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`applicant’s affiliates) that, as a characteristic of nopal
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`juice, applicant’s goods derive from genus nopalea. In
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`this regard, applicant helpfully pointed us to the case
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`Amer. Aloe Corp. v. Aloe Crème Laboratories, Inc.,6 420 F.2d
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`1248, 164 USPQ 266 (7th Cir. 1970) (ALOE as generic or
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`descriptive because identical to plant genus name). As the
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`
`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).
`
`11
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`Ser. No. 77658158
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`court there noted, where the alleged mark holder sought to
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`register variants of a plant genus “aloe,” the terms were
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`found to be generic not only for pharmaceuticals but for
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`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
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`would understand the term “nopalea” used in connection with
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`applicant's goods as conveying information about them. See
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`In re Tower Tech Inc., 64 USPQ2d at 1316-17; see also In re
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`Conductive Services, Inc., 220 USPQ 84, 86 (TTAB 1983).
`
`Therefore we find that the applied-for mark is merely
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`descriptive of the identified goods.
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`Decision: The refusal to register under Trademark Act
`
`Section 2(e)(1) is affirmed.
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`
`
`12
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