Access practice tools, as well as industry leading news, customizable alerts, dockets, and primary content, including a comprehensive collection of case law, dockets, and regulations. Leverage...
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.
To contact the reporter on this story: Anandashankar Mazumdar in Washington at firstname.lastname@example.org
To contact the editor responsible for this story: Naresh Sritharan at email@example.com
All Bloomberg BNA treatises are available on standing order, which ensures you will always receive the most current edition of the book or supplement of the title you have ordered from Bloomberg BNA’s book division. As soon as a new supplement or edition is published (usually annually) for a title you’ve previously purchased and requested to be placed on standing order, we’ll ship it to you to review for 30 days without any obligation. During this period, you can either (a) honor the invoice and receive a 5% discount (in addition to any other discounts you may qualify for) off the then-current price of the update, plus shipping and handling or (b) return the book(s), in which case, your invoice will be cancelled upon receipt of the book(s). Call us for a prepaid UPS label for your return. It’s as simple and easy as that. Most importantly, standing orders mean you will never have to worry about the timeliness of the information you’re relying on. And, you may discontinue standing orders at any time by contacting us at 1.800.960.1220 or by sending an email to firstname.lastname@example.org.
Put me on standing order at a 5% discount off list price of all future updates, in addition to any other discounts I may quality for. (Returnable within 30 days.)
Notify me when updates are available (No standing order will be created).
This Bloomberg BNA report is available on standing order, which ensures you will all receive the latest edition. This report is updated annually and we will send you the latest edition once it has been published. By signing up for standing order you will never have to worry about the timeliness of the information you need. And, you may discontinue standing orders at any time by contacting us at 1.800.372.1033, option 5, or by sending us an email to email@example.com.
Put me on standing order
Notify me when new releases are available (no standing order will be created)