United States Court of Appeals 

for the Federal Circuit ______________________ 

IN RE: TRIVITA, INC.,

Appellant

______________________ 

2014-1383

______________________ 

Appeal from the United States Patent and Trademark 

Office, Trademark Trial and Appeal Board in No. 

77658158.

______________________ 

Decided: April 17, 2015

______________________ 

ADAM STEPHENSON, Adam R. Stephenson, LTD., Tempe, AZ, for appellant.

NATHAN K. KELLEY, Office of the Solicitor, United 

States Patent and Trademark Office, Alexandria, VA, for 

appellee. Also represented by THOMAS L. CASAGRANDE,

CHRISTINA HIEBER, THOMAS W. KRAUSE. 

______________________ 

Before NEWMAN, MOORE, and HUGHES, Circuit Judges.

NEWMAN, Circuit Judge.

TriVita filed trademark application Serial No. 

77/658,158 to register the mark NOPALEA on the Principal Register for dietary and nutritional supplements 

“containing, in whole or in substantial part, nopal juice.” 

The examiner rejected the application under section 
2 IN RE: TRIVITA, INC. 

2(e)(1) of the Lanham Trademark Act as “descriptive of a 

feature of applicant’s goods on the grounds that applicant’s products contain nopal which is derived from an 

[ex]tract of the nopalea plant.” TriVita appealed to the 

Trademark Trial and Appeal Board, arguing that “nopalea plant” is not a term used in the food industry, and 

that the term is not descriptive because TriVita’s products 

contain extracts from the Opunti genus of nopal cactus, 

not the Nopalea genus.

The Board affirmed the rejection. The Board cited

various websites showing Nopalea as the name of a genus 

of cactus used in food and supplements, noting that some 

of the websites were those of TriVita’s affiliates, and that 

some explicitly stated that TriVita’s products were derived from the Nopalea cactus. The Board acknowledged 

that both Opuntia and Nopalea cacti may be referred to 

as nopal cacti, but that TriVita’s registration application 

states only that the goods contain “nopal juice,” and does 

not state whether the nopal juice is derived from cacti in

either the Opuntia or Nopalea genus. The Board cited 

instances of the word “nopal” used interchangeably with

the word “nopalea,” and stated:

The record indicates that nopalea is indeed a genus of cacti which is used for food and medicine, 

and which is commonly referred to as “nopal.” 

Consumers may well assume, (as apparently do 

some of [TriVita’s] affiliates) that, as a characteristic of nopal juice, [TriVita’s] goods derive from 

genus nopalea.

In re Trivita, Inc., 2013 WL 6858011, at *4 (T.T.A.B. Dec. 

17, 2013). The Board concluded that there was “no doubt 

that a consumer would understand the term ‘nopalea’ 

used in connection with [TriVita’s] goods as conveying 

information about them,” and affirmed the refusal to 

register NOPALEA because it is “merely descriptive” 

under section 2(e)(1). Id. at *5. 
IN RE: TRIVITA, INC. 3

DISCUSSION

Section 2(e)(1) of the Lanham Act provides that a 

term is not a registerable trademark when it “consists of a 

mark which (1) when used on or in connection with the 

goods of the applicant is merely descriptive or deceptively 

misdescriptive of them.” 15 U.S.C. § 1052(e)(1) (2014). A 

mark is merely descriptive if it “‘consist[s] merely of 

words descriptive of the qualities, ingredients or characteristics of’ the goods or services related to the mark.” In 

re Oppedahl & Larson LLP, 373 F.3d 1171, 1173 (Fed. 

Cir. 2004) (alteration in original) (quoting Estate of P.D. 

Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 

(1920)). The Board’s determination that a mark is merely 

descriptive is a factual finding that is reviewed for support by substantial evidence. In re Bayer Aktiengesellschaft, 488 F.3d 960, 964 (Fed. Cir. 2007). 

Whether a mark is merely descriptive is determined 

in relation to the goods or services for which registration 

is sought. See 15 U.S.C. §1052(e)(1). The question is 

whether someone who is presented with the mark in 

connection with the goods or services would understand 

that the mark describes the goods or services. See 2 J. 

Thomas McCarthy, McCarthy on Trademarks and Unfair 

Competition §11:16 (4th ed. 2014) (“Descriptiveness 

cannot be determined as an abstraction. The possible 

descriptiveness of a designation is highly dependent on 

the goods or services in connection with which the designation is used. A term can be descriptive of one product 

and nondescriptive of another.”). “A merely descriptive 

mark qualifies for registration only if the applicant shows 

that it has acquired secondary meaning.” In re Nett 

Designs, Inc., 236 F.3d 1339, 1341 (Fed. Cir. 2001).

The record contains somewhat conflicting evidence as 

to the content of TriVita’s goods. TriVita initially stated 

that “the term NOPALEA refers to the nopalea plant in 

the relevant industry” and that “the goods contain nopal 
4 IN RE: TRIVITA, INC. 

which is an extract of the nopalea plant.” TriVita later 

stated that its goods contain extracts of a nopal cactus, 

but not of a Nopalea cactus. TriVita referred the examiner to a Master’s thesis stating that the term “nopal cactus” is used to refer to prickly pear cacti from both the 

Opuntia and Nopalea genera. The TriVita labels list as 

ingredients of its products “Nopal fruit puree (Opuntia 

ficus indica)” and “Nopal powder (Opuntia ficus indica).”

On receiving these arguments, the examiner also rejected TriVita’s application under section 2(a) of the 

Lanham Act, stating that “[i]f the goods do not contain 

Nopalea or ingredients or extracts derived from the 

Nopalea plant, then the applied-for mark contains a term 

that is misdescriptive of the composition of the goods 

marketed thereunder.” U.S. Trademark Appl. Serial No. 

77658158, Office Action, at 2 (Jan. 7, 2011). The examiner withdrew the misdescriptiveness rejection after TriVita 

amended the description of the goods to state that the 

goods contained nopal juice. 

TriVita makes four primary arguments on appeal. 

Although the PTO complains that some arguments were 

not presented to the Board, the need for these arguments 

did not appear until the Board’s decision. Thus we have 

considered all of TriVita’s arguments. 

First, TriVita argues that the Board failed to compare 

the word “nopalea” to the word “nopal,” the common name 

for prickly pear cacti of the Nopalea and Opuntia genera, 

and the term used in TriVita’s description of the goods. 

TriVita argues that in Bayer, 488 F.3d at 964–65, this 

court endorsed comparing the appearance and sound of a 

mark with the “common word” for the goods, to determine 

if the mark is “sufficiently similar” to the common word. 

TriVita argues that the addition of the letters “EA” at the 

end of “nopal” makes the mark NOPALEA substantially 

different in sight and sound. However, “nopalea” is not a 

made-up word obtained by adding arbitrary letters. The 
IN RE: TRIVITA, INC. 5

record shows, and the Board found, that “nopalea” is a 

genus of cacti from which nopal juice, the product at 

issue, is derived. Even if TriVita’s product contains 

ingredients derived from the Opuntia and not the Nopalea

cactus, substantial evidence supports the Board’s finding 

that consumers are likely to assume that the NOPALEA 

mark denotes that TriVita’s products contain ingredients 

from the Nopalea cactus.

Second, TriVita argues that the Board made no factual findings concerning the level of sophistication of the 

average consumer likely to encounter TriVita’s goods. 

TriVita argues that the ordinary purchaser of its products 

will be of low botanical sophistication and will not immediately recognize the botanical meaning of the word 

“nopalea.” TriVita is correct that descriptiveness is 

determined from the viewpoint of the relevant purchasing 

public. However, as the Board found, there is abundant 

evidence, scientific and non-scientific, of the words “nopalea” and “nopal” being used interchangeably. This 

interchangeability is seen largely in the context of discussion of the health benefits of this class of cactus. 

Third, TriVita argues that its products are sold 

through “multi-level direct marketing,” and that consumers purchase and obtain information about its products 

only directly from TriVita or its affiliates, and thus TriVita can “ensure the Mark is used non-descriptively in 

conjunction with the goods in question at the point of 

sale.” Appellant Br. at 23. However, such non-descriptive 

use was not established by any factual showing. See Roux 

Labs., Inc. v. Clairol Inc., 427 F.2d 823, 828 (CCPA 1970) 

(“The mere fact that a combination of words or a slogan is 

adopted and used by a manufacturer with the intent 

Clairol has manifested here—that it identify its goods and 

distinguish them from those of others—does not necessarily mean that the slogan accomplishes that purpose in 

reality.”). Further, the record shows that several of 

TriVita’s distributors state that the products contain juice 
6 IN RE: TRIVITA, INC. 

from the Nopalea cactus, rather than the limited nondescriptive use proposed by TriVita.

Fourth, TriVita argues that the Board erroneously relied on the Seventh Circuit’s decision in American Aloe 

Corp. v. Aloe Crème Labs., Inc. 420 F.2d 1248 (7th Cir. 

1970), to support the descriptiveness finding. That decision embodies the principle that the trademark applicant 

“cannot appropriate for its own trademark use the generic 

name of the distinguishing and effective ingredient in its 

product.” 420 F.2d at 1252. The Board did not err in 

applying this principle to the facts in the record.

The Board found that the relevant consumer, knowing 

that the goods are supplements containing nopal cactus 

juice, would understand the mark NOPALEA to convey 

information that the goods contain ingredients from the 

Nopalea cactus. The Board based its finding on evidence 

that “nopalea” is the name of a genus of cacti used in food 

and supplements, that the word “nopal” is a common 

name for prickly pear cacti including cacti in the genus 

Nopalea, and that the words “nopal” and “nopalea” are 

used interchangeably to refer to cacti of that genus. 

Substantial evidence supports the Board’s findings, and 

its conclusion that “nopalea” is merely descriptive of 

TriVita’s goods.

We affirm the Board’s decision that NOPALEA is not 

registrable on the Principal Register for TriVita’s nutritional supplements containing nopal juice.

AFFIRMED