In re Hikari Sales USA, Inc.

• Decision Date: 29 March 2019
• Docket Number: 86439012
• Parties: In re Hikari Sales USA, Inc.
• Court: Trademark Trial and Appeal Board

In re Hikari Sales USA, Inc.

No. 86439012

United States Patent and Trademark Office, Trademark Trial and Appeal Board

March 29, 2019

This Opinion is a Precedent of the TTAB

Patchen M. Haggerty and Stefan B. Blum of Perkins Coie, for Hikari Sales USA, Inc.

Lyndsey Kuykendall, Trademark Examining Attorney, Lydia Belzer, Managing Attorney.

Before Bergsman, Hightower and Goodman, Administrative Trademark Judges.

OPINION

GOODMAN, ADMINISTRATIVE TRADEMARK JUDGE.

On October 29, 2014, Hikari Sales USA, Inc.("Applicant") filed an application to register the mark ALGAE WAFERS (in standard characters) for "Fish food" in International Class 31, on the Principal Register, claiming acquired distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), based on five years of substantially exclusive and continuous use in commerce.^[1]

I.Procedural Background

The Trademark Examining Attorney initially refused registration of Applicant's applied-for mark on the ground that the mark is merely descriptive of Applicant's goods under Trademark Act Section 2(e)(1), 15 U.S.C. § 1052(e)(1).^[2] In response, Applicant submitted additional evidence to support its claim of acquired distinctiveness.Thereafter, in a second nonfinal Office Action registration was refused because the proposed mark is generic as applied to the goods.The Examining Attorney also refused registration on the basis that if the mark is not generic, Applicant's claim of distinctiveness based on five years' use and additional evidence of distinctiveness is insufficient due to the highly descriptive nature of the mark.

When the refusal was made final, Applicant appealed and requested reconsideration.After the Examining Attorney denied the request for reconsideration, the appeal resumed.We affirm the refusal to register on both grounds.

For clarity, we note that by issuing a Section 2(e)(1) descriptiveness refusal with an advisory that the designation was likely generic in the first Office Action when the Applicant filed the application for registration on the Principal Register based on a claim of distinctiveness under Section 2(f), the Examining Attorney did not follow the examination procedure set forth in Section 1209.02(b) of the Trademark Manual of Examining Procedure ("TMEP")(October 2018).

"Where, as here, an applicant seeks a registration based on acquired distinctiveness under Section 2(f), the statute accepts a lack of [inherent] distinctiveness as an established fact."Yamaha Int'l Corp. v. Hoshino Gakki Co., 840 F.2d 1571, 6 U.S.P.Q.2d 1001, 1005(Fed. Cir.1988).For an applicant seeking "registration on the basis of Section 2(f), the mark's descriptiveness is a nonissue; an applicant's reliance on Section 2(f) during prosecution presumes that the mark is descriptive."Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92 U.S.P.Q.2d 1626, 1629(Fed. Cir.2009).The Examining Attorney may rely on this concession alone.TMEP § 1212.02(b).

As a result, the Examining Attorney should not have issued a descriptiveness refusal with an advisory that the designation was likely generic in the first Office Action.Rather, the Examining Attorney, in the first Office Action, should have issued a refusal that the designation is a generic name for the Applicant's goods under Trademark Act §§ 1, 2and45, 15U.S.C. §§ 1051,1052,1127, ^[3] and alternatively refused registration on the basis that even if the mark is not found generic, it is merely descriptive under Section 2(e)(1) and Applicant's claim of distinctiveness based on five years of substantially exclusive use was insufficient given the highly descriptive nature of the mark.TMEP § 1209.02(b).

II.Genericness

"A generic mark, being the 'ultimate in descriptiveness,' cannot acquire distinctiveness, and is not entitled to registration on either the Principal or Supplemental Register under any circumstances."In re La. Fish Fry Prods., Ltd.,797 F.3d 1332, 116 U.S.P.Q.2d 1262, 1264(Fed. Cir.2015)(quotingH. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc.,782 F.2d 987, 228 U.S.P.Q. 528, 530(Fed. Cir.1986)).A designation is generic if it refers to the class or category of goods or services on or in connection with which it is used.In re Dial-A-Mattress Operating Corp.,240 F.3d 1341, 57 U.S.P.Q.2d 1807(Fed. Cir.2001)(citingMarvin Ginn,228 U.S.P.Q. 528)."[A] term [also] is generic if the relevant public understands the term to refer to part of the claimed genus of goods or services, even if the public does not understand the term to refer to the broad genus as a whole."In re Cordua Rests., Inc.,823 F.3d 594, 118 U.S.P.Q.2d 1632, 1638(Fed. Cir.2016)("the term 'pizzeria' would be generic for restaurant services, even though the public understands the term to refer to a particular sub-group or type of restaurant rather than to all restaurants")."The test is not only whether the relevant public would itself use the term to describe the genus, but also whether the relevant public would understand the term to be generic."In re 1800Mattress.com IP LLC,586 F.3d 1359, 92 U.S.P.Q.2d 1682, 1685(Fed. Cir.2009).

The test for determining whether a proposed mark is generic is its primary significance to the relevant public.Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 U.S.P.Q.2d 1551, 1553-54(Fed. Cir.1991);Marvin Ginn, 228 U.S.P.Q. at 530.Making this determination "involves a two-step inquiry: First, what is the genus of goods or services at issue?Second, is the term sought to be registered ... understood by the relevant public primarily to refer to that genus of goods or services?"Marvin Ginn, 228 U.S.P.Q. at 530.

Addressing the first part of the genericness inquiry, we find in this case that the genus of goods is commensurate with Applicant's identification of goods in the application, i.e., "fish food."SeeMagic Wand, 19 U.S.P.Q.2d at 1552("[A] proper genericness inquiry focuses on the description of [goods or] services set forth in the [application or] certificate of registration.").The Examining Attorney and the Applicant are in agreement that "fish food" is the genus.7 TTABVUE 13;9 TTABVUE 6.This genus includes the sub-category of fish food that comes in wafer form and contains algae.

We next proceed to the second part of the Marvin Ginn inquiry: whether the term "Algae Wafers" is understood by the relevant public primarily to refer to fish food, including the type of fish food offered by Applicant that comes in wafer form and contains algae.Marvin Ginn, 228 U.S.P.Q. at 530.In this case, where the goods are "fish food," the relevant public would be those individuals who use or purchase fish food, i.e., plant or animal material for consumption by fish kept in aquariums or ponds.We consider "[e]vidence of the public's understanding of the term [which] may be obtained from any competent source, such as purchaser testimony, consumer surveys, listings in dictionaries, trade journals, newspapers, and other publications."In re Merrill Lynch, Pierce, Fenner & Smith Inc., 828 F.2d 1567, 4 U.S.P.Q.2d 1141, 1143(Fed. Cir.1987).Competitor use may be evidence of genericness.SeeBellSouth Corp. v. DataNational Corp., 60 F.3d 1565, 35 U.S.P.Q.2d 1554, 1558(Fed. Cir.1995)("The cases have recognized that competitor use is evidence of genericness.")(citingRemington Prods., Inc. v. N. Am. Philips Corp., 892 F.2d 1576, 13 U.S.P.Q.2d 1444, 1446(Fed. Cir.1990));Continental Airlines, Inc. v. United Air Lines, Inc., 53 U.S.P.Q.2d 1385, 1395(TTAB1999)(use of term "e-ticket" by media and competitors indicates term is generic for electronic tickets);Philip Morris Inc. v. Brown & Williamson Tobacco Corp., 230 U.S.P.Q. 172, 176(1986)(evidence that competitors have used a particular word as the name of their goods is persuasive evidence of genericness).

The following evidence bearing on the public's understanding of "Algae Wafers" is of record.

a) Dictionary definitions of Algae and Wafer

Algae(plural of alga): "a plant or plantlike organism of any of several phyla, divisions, or classes of chiefly aquatic usually chlorophyll containing nonvascular organisms of polyphyletic origin that usually include the green, yellow-green, brown and red algae in the eukaryotes and especially formerly the cyanobacteria in the prokaryotes."February 21, 2015 Office Actionpp. 3-4, Merriam-webster.com.

Wafer, : "a small round thin object"; also "a thin disk or ring resembling a wafer and variously used."February 21, 2015 Office Actionpp. 6-7, Merriam-webster.com.^[4]

b) Applicant's use

Applicant's Specimen.

(Image Omitted)

As is evident from the packaging, Applicant's goods are pictured in wafer or disk form, and the packaging includes the following statements: "Ideal for Algae Eaters""Natural Green Color from Multiple Beneficial Algae""World's 1st Wafer Shaped Algae Diet," and "Vegetable Rich Wafer."Specimenp. 1.

The specimen also states "Contains Pure-Cultured Spirulina, "^[5] and Applicant's ingredient label, shown below, indicates that the goods include spirulina as an ingredient.Id.;August 23, 2016 Response to Suspension Inquiryp. 13.

INGREDIENTS

White Fish Meal, Wheat Flour, Wheat-germ Meal, alpha Starch Dehydrated Alfalfa Meal, soybean Meal, Fish Oil, Brewer's Dried Yeast, Shrimp Meal, Spirulina, Carotenoid, Sodium Phosphate, Salt, Vitamin A Supplement, vitamin D3 (D Activated Animal Sterol), Vitamin E (d1-d-Tocopherol Acetic Acid) Vitamin B1 (Thiamine Nitrate), Vitamin B2 (Riboflavin), Vitamin K3 (Menadion Dimethyl-pyrimidinol Disulfite), Ascorbic Acid, Choline Chloride, Magnesium Carbonate, Potassium Phosphate Bihydrate.

Applicant's brochure regarding "Algae Wafers" states, among other things, that the fish food was ...