In re Nordic Naturals, Inc.
Published By Brinks Article June 23, 2014

Case No. 2013-1492
Federal Circuit Judges: Reyna, Wallach, and Taranto
Decided: June 23, 2014
Appeal from the Trademark Trial and Appeal Board: In re Nordic Naturals, Inc., 2013 TTAB LEXIS 167 (TTAB March 27, 2013)

On June 23, 2014, the Federal Circuit affirmed the Trademark Trial and Appeal Board’s determination that the USPTO had correctly refused registration of the mark CHILDREN’S DHA for use in connection with “nutritional supplements containing DHA” as generic.

The Court explained, “[a] mark is generic if the relevant public primarily uses or understands the mark to refer to the category or class of goods in question,” and whether a mark is generic is a question of fact that must be proven by “clear evidence of generic use.” On appeal, the Federal Circuit “must determine whether the Board’s factual finding is supported by substantial evidence, taking into account the clear evidence standard.”

The TTAB had held that the goods in question were properly defined by Nordic’s recitation of goods, “nutritional supplements containing DHA” and that the relevant public consisted of parents and other adults shopping for nutritional supplements containing DHA for children. In reliance upon dictionary definitions of “child” and “DHA” (docosahexaenoic acid, an omega-3 fatty acid that aids in brain development), and third-party uses of “children’s DHA” the TTAB held that CHILDREN’S DHA “is the generic name for nutritional supplements containing DHA inasmuch as this wording encompasses nutritional supplements containing DHA formulated for children.” The TTAB also concluded that the mark had not acquired distinctiveness.

On appeal, Nordic did not challenge the TTAB’s determinations regarding the goods at issue or its definition of the relevant public. Nordic, instead, asserted that it was the first to use the phrase CHILDREN’S DHA, that it invested substantial resources into marketing the product under the mark and that third parties recognize CHILDREN’S DHA as Nordic’s mark. Nordic specifically argued that the evidence established a “mixture of uses” and the Board could not meet its burden of proof that there is clear evidence of generic use when there is a mixture of uses, citing to In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 1571 (Fed. Cir. 1987).

The Federal Circuit distinguished Nordic’s situation from Merrill Lynch where the Court, in reversing the TTAB, found that CASH MANAGEMENT SERVICES was not generic based on several third-party references explicitly referring to Merrill Lynch as the source of the mark. The Court noted that Nordic’s evidence fell short of the evidence submitted in Merrill Lynch, partly because there were no unambiguous third party references to CHILDREN’S DHA as a source identifier, there were no unsolicited references to Nordic as the source of CHILDREN’S DHA, and because supporting declarations were generally prepared by Nordic and submitted by Nordic’s retailers, not “parents and other adults seeking nutritional supplements containing DHA for children.”