Trademark law is designed to protect consumers from confusion as to the sources of products or services. Strong trademarks are those that are distinctive – that is, they are capable of identifying the source of a particular good. At the other end of the trademark spectrum are generic marks. These marks are incapable of functioning as trademarks because they have come to be identified by the relevant purchasing public as common names for the goods or services with which they are associated. A finding that a mark has become or is generic means that it has lost (or has never had) the ability to identify the source of a product or service, and thus cannot function as a trademark. For this reason, a finding that a potential mark is “generic” presents a serious problem to a trademark application because it means that a mark has become synonymous in the public’s mind with a particular product or service as opposed to its source.
Dr. Earth, a California organic gardening company, learned this lesson after a lengthy legal battle in which its trademark application for PROBIOTIC was ultimately denied by the U.S. District Court for the Eastern District of Virginia. Dr. Earth sought to register the word PROBIOTIC for fertilizers. The U.S. Patent and Trademark Office (PTO) Examiner initially refused registration, stating that the term was generic in connection with fertilizer, and that at most, the term was merely descriptive and had not acquired a secondary meaning. Merely descriptive marks are similar to generic marks and are considered “weak” marks because they simply convey information about a function, characteristic, or purpose of the goods or services. As Jeffrey Davidson states in his IP Registration and Enforcement blog, “[d]escriptive terms by their very nature apply to all goods of a particular type, and therefore do not identify any single source.” Nonetheless, merely descriptive marks can become distinctive of a source by achieving “secondary meaning.” Daniel A. Tysver, of the comprehensive Bitlaw Legal Resource, notes that if evidence such as long term use or large amounts of advertising and publicity can show that a mark has achieved this “‘second meaning’” (the first meaning being the generally understood meaning of the term or phrase), a protectable trademark is developed.”
But evidence can also show that a mark is too common a term in the industry to develop a “second meaning,” as was the case with PROBIOTIC. In its appeal of the initial refusal, Dr. Earth argued that PROBIOTIC had acquired distinctiveness through 10 years of use. The PTO Examiner did not find this argument persuasive, and issued a final refusal. On appeal by Dr. Earth, the Trademark Trial and Appeal Board (TTAB) affirmed the refusal, and agreed that the term was generic. The TTAB pointed to the fact that the applicant’s competitors used the term “PROBIOTIC” in the description of their products, and that articles about fertilizer identify “PROBIOTICS” as a main ingredient. Tellingly, Dr. Earth itself appeared to concede the generic nature of its proposed mark in its response to the original PTO refusal when it stated that “some probiotic elements are present in the fertilizer [although] the word probiotic is not specific to any ingredient.” In its summary of the TTAB decision, the law firm Troy and Schwartz notes that these factors pointed to PROBIOTIC being indicative of fertilizer ingredients and not the brand name under which the fertilizer with such ingredients was being sold, namely Dr. Earth.
Dr. Earth appealed the TTAB’s decision to federal district court. The district court ruled that the TTAB did not err in finding that PROBIOTIC was generic for fertilizer, and granted summary judgment in favor of the PTO. See Shammas v. Rea (Ellis), No. 1:13cv1462, Memorandum Opinion (EDVA Oct. 15, 2013). On the issue of generic-ness, the district court cited numerous articles, dictionary definitions, patents, and third-party websites to support its conclusion that in the minds of purchasers of fertilizer, PROBIOTIC describes fertilizers or a distinctive feature of fertilizers. The central issue was whether the term PROBIOTIC is understood by the relevant public – that is, purchasers of fertilizers – to refer to fertilizers or a distinctive characteristic of fertilizers, or to Dr. Earth’s product specifically. To prove that prospective purchasers would normally consider its product first, Dr. Earth submitted evidence showing that it sold 5 million products over 12 years, generating $74 million in sales, but submitted no evidence to show how much of the national market share this represented. Dr. Earth also claimed that it spent over $1 million dollars in advertising over a 4-year period. Nonetheless, the district court remained unpersuaded that there was a link in the minds of consumers between the term PROBIOTIC and a single source of fertilizer, stating that “mere expenditure of money [on advertising] is not, in itself, determinative of the actual result in buyers’ minds.”
This case is illustrative of the high evidentiary burden required to overcome a finding that a trademark is generic. It further shows that even brands that spend – and earn – significant amounts of money cannot always show that consumers regard their mark as a unique source-identifier. While the PTO has the burden of proving genericness by a “substantial showing” based on “clear evidence,” it can use a wide array of evidence to meet that standard. The TTAB did just that in relying on articles, competitors’ information, and third-party websites to show that PROBIOTIC was a common industry term. The district court further noted that Dr. Earth’s evidence of acquired distinctiveness – namely applicant-friendly testimony and general financial expenditures – was insufficient to overcome the TTAB’s finding of genericness, despite 10 years of trademark use.
Dr. Earth’s evidence did not sufficiently convey whether its advertising had secured significant market share, nor could the applicant produce independent third-party evidence of its sole use of the trademark. The Shammas decision ultimately shows that even a mark with financial success and years of use cannot overcome a PTO refusal for generic-ness when evidence shows it is a common industry term.
