IP Law Daily, TRADEMARK—Fed. Cir.: Genericness rejection of CHILDREN’S DHA affirmed, (Jun 23, 2014)

By Mark Engstrom, J.D.

The Trademark Trial and Appeal Board did not err in refusing to register CHILDREN’S DHA for “nutritional supplements containing DHA” because the applied-for mark was a generic term for nutritional supplements that contained DHA, the U.S. Court of Appeals for the Federal Circuit has ruled (In re Nordic Naturals, Inc., June 23, 2014, Reyna, J.). Because the Board’s conclusion was supported by substantial evidence, the refusal was affirmed.

Nordic Naturals sought registration of the standard character mark CHILDREN’S DHA for nutritional supplements that contained docosahexaenoic acid (DHA), an omega-3 fatty acid that facilitated brain development. The examining attorney denied registration because the mark was generic, and the TTAB affirmed.

The court noted that the record included numerous uses of “children’s DHA” to: (1) describe the category of DHA products for children and (2) describe non-Nordic DHA products for children. According to the court, the record evidence supported the Board’s conclusion that the relevant public used the phrase “children’s DHA” primarily in its dictionary sense—as a description of DHA products that were formulated for children.

Nordic conceded that some of the record uses of “children’s DHA supplement” could have been descriptive, but it argued that CHILDREN’S DHA, by itself, was not. Nordic supported that argument by asserting that: (1) Nordic was the first to use CHILDREN’S DHA in 2000 and (2) since then, the company had invested a significant amount of time and money to market its products with the use of that phrase.

Nordic further argued that its commercial success was based in part on the use of CHILDREN’S DHA to identify its product. To support that argument, Nordic proffered declarations from its retailers, its own advertising, and third-party use of “children’s DHA” to refer to Nordic’s products. Based upon that evidence, Nordic argued that the record included a “mixture of usages” that did not reveal clear evidence of genericness.

The court disagreed. The record did not reflect a mixture of usages for “children’s DHA” among the relevant public, and a “lack of third-party references” recognized Nordic as the source of “children’s DHA.” According to the court, the record contained references that used the term in a generic and descriptive manner. Even some of the references that used “children’s DHA” to refer to Nordic’s goods “used it to describe those goods in a generic manner.”

Moreover, Nordic’s proffered declarations did not undermine the Board’s conclusion. Nordic had obtained those declarations from its retailers, not from members of the relevant public. Moreover, the declarations were prepared primarily by Nordic, with the declarants providing only personal information. Although Nordic may have been the first to use the phrase “children’s DHA” in the market for nutritional supplements, that fact did not answer the crucial question: in light of Nordic’s use and all other relevant uses, what did “children’s DHA” primarily mean to the relevant public? In the court’s view, the evidence was sufficiently clear. The relevant public used “children’s DHA” primarily to refer to DHA products for children.

The case is No. 2013-1492.

Attorneys: Meredith M. Wilkes (Jones Day) for Nordic Naturals, Inc. Nathan K. Kelley, Deputy General Counsel for Intellectual Property Law and Solicitor, USPTO.

Companies: Nordic Naturals, Inc.

Cases: Trademark FedCir