Ninth Circuit confirms that ORGANIC FOOD BAR is generic

United States of America
In Premier Nutrition Inc v Organic Food Bar Inc (Case 08-55656, 2009 WL 1353756, May 15 2009), in a short memorandum decision, the US Court of Appeals for the Ninth Circuit has affirmed a district court decision on summary judgment in which the latter had found that the term 'organic food bar' was generic for use with organic food bar products.   
The court first outlined its test for determining whether a term is generic and therefore not protectable as a trademark. The test focuses on how the term is understood by the consuming public. The court explained the test as follows, relying on its 1999 decision in Filipino Yellow Pages Inc v Asian Journal Publ’ns Inc (198 F3d 1143, 1148 (1999)):

"In evaluating the public’s understanding, we favour the 'who are you/what are you' test: a [protectable] mark answers the buyer’s questions ‘who are you?’, ‘where do you come from?’, ‘who vouches for you?’. But the generic name of the product answers the question ‘what are you?'".

The court held that in the present case, the term 'organic food bar' describes a type of product by answering the question 'what are you?'. The court stated that where the primary significance of a trademark is to describe the type of product rather than the producer of that product, the term is generic and cannot function as a valid trademark.

Further, the court found direct and circumstantial evidence of genericness to be persuasive. This evidence included:

  • dictionary definitions;
  • media use of the term;
  • competitors’ use of the term;
  • the trademark owner’s use of similar terms; and
  • a consumer survey.
The court noted that the party seeking to enforce trademark rights bears the burden of proving that its claimed trademark is not generic. Here, the trademark owner’s own survey failed to establish a genuine dispute about any material facts relating to genericness. While the trademark owner’s survey showed that consumers use multiple generic names for this type of product, the survey did not establish a genuine dispute about the generic nature of the term 'organic food bar'.

David S Fleming, Brinks Hofer Gilson & Lione, Chicago

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