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Oct. 18 --The Trademark Trial and Appeal Board did not err in determining that the term “probiotic” was not distinctive with respect to fertilizer and thus properly affirmed a decision to reject an application to register the term as a trademark, the U.S. District Court for the Eastern District of Virginia ruled Oct. 15 (Shammas v. Rea, E.D. Va., No. 1-12-cv-01462, 10/15/13).
Granting summary judgment in favor of the Patent and Trademark Office, the court found it unnecessary to reach a conclusion on the question of secondary meaning.
Milo Lou Shammas is the founder of Dr. Earth Inc. of Winters, Calif., which produces organic soil, fertilizer, insecticides and other products related to organic gardening. Many of Dr. Earth's products use live bacteria.
In 2009, Shammas filed an application to register the term “Probiotic” as a trademark for its fertilizer. A trademark examiner declined registration on the grounds that “probiotic” was generic in this context, or, at most, was descriptive and there was no evidence of secondary meaning to support Shammas's claim of trademark use.
Shammas appealed to the TTAB, which affirmed the examiner's findings. Dr. Earth then sought review in federal court pursuant to 15 U.S.C. §1071(b)(1).
Judge Thomas Selby Ellis III first determined that the preponderance of the record evidence as a whole supported the TTAB's conclusion that “probiotic” was generic in context.
Addressing the TTAB's conclusion in the alternative, that “probiotic” was descriptive, the court again agreed that Shammas had failed to show that there was any significant segment of the consuming public that considered “probiotic” to indicate that Dr. Earth was the source of the relevant goods.
The court first rejected evidence that Dr. Earth's $74 million in sales over a period of 12 years had any probative value with respect to the question of secondary meaning because “there is no clear information concerning whether these sales constitute a significant share of the national market for organic fertilizers containing microbes and mycorrhizae.”
Furthermore, Shammas's evidence of spending on advertising also did not constitute evidence that in the minds of consumers, the term “probiotic” was linked to Dr. Earth.
However, because the court had already found against Shammas on the question of genericness, the court found it unnecessary to resolve the question of secondary meaning. The court thus granted summary judgment in favor of the PTO.
Shammas was represented by John Nolan Jennison of Jennison & Shultz P.C., Arlington, Va. The PTO was represented by Bernard G. Kim of the Office of the U.S. Attorney for the Eastern District of Virginia, Alexandria, Va.
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