NOPALEA mark merely descriptive of product derived from nopal cactus

United States of America

In In Re TriVita Inc (Case No 14-1383, April 17 2015, Newman J), the US Court of Appeals for the Federal Circuit has affirmed the Trademark Trial and Appeal Board’s (TTAB) decision that the trademark NOPALEA was descriptive of TriVita’s products, which contain juice from the nopal cactus.

TriVita applied for registration of NOPALEA for use in connection with “dietary and nutritional supplements... containing, in whole or in substantial part, nopal juice”. The examiner rejected TriVita’s application under § 2(e) of the Lanham Act, which provides that a term is not a registrable trademark when it “consists of a mark which, when used on or in connection with the goods of the applicant, is merely descriptive or deceptively misdescriptive of them”. The record showed that TriVita’s product contains nopal juice, which is derived from an extract of the nopalea plant.

TriVita appealed the decision to the TTAB, arguing that the “nopalea plant is not a term used in the food industry, and that the term is not descriptive because TriVita’s products contain extracts from the Opunti genus of nopal cactus, not the Nopalea genus”. The TTAB affirmed the rejection because “the record indicates that nopalea is indeed a genus of cacti which is used for food and medicine, and which is commonly referred to as nopal”, and “consumers may well assume that, as a characteristic of nopal juice, TriVita’s goods derive from genus nopalea”.

TriVita appealed to the Federal Circuit, arguing that adding the letters 'EA' to the word 'nopal' made the mark NOPALEA substantially different from NOPAL. The Federal Circuit disagreed, stating that “'nopalea' is not a made-up word obtained by adding arbitrary letters. The record shows, and the [TTAB] found, that ‘nopalea’ is a genus of cacti from which nopal juice, the product at issue, is derived”.

TriVita also claimed that an ordinary purchaser of its products is of low botanical sophistication and will not immediately recognise the botanical meaning of the word 'nopalea'. The Federal Circuit again disagreed, noting “abundant evidence, scientific and non-scientific, of the words ‘nopalea’ and ‘nopal’ being used interchangeably”, largely in the context of discussion of the health benefits of this class of cactus. The court also found that there was no factual showing of non-descriptive use by TriVita. In light of the record, the court concluded that relevant consumers who knew that the goods contained nopal cactus juice would understand the mark NOPALEA to convey information that the goods contained ingredients from the Nopalea cactus.

Ulrika E Mattsson, McDermott Will & Emery LLP, Chicago

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