Bradley Dobos

Trademark Trial and Appeal Board

Oct 13, 2009

No. 76680112 (T.T.A.B. Oct. 13, 2009)

Mailed:
October 13, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Bradley Dobos
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Serial No. 76680112
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Bradley Dobos, pro se.

Margaret Power, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney).
_______

Before Rogers, Bergsman and Wellington, Administrative
Trademark Judges.
Opinion by Wellington, Administrative Trademark Judge:
Bradley Dobos seeks registration on the Principal
Register of GOJI BERRY (in standard character format) as a
mark for “fruit, namely, raw and unprocessed berry only
indigenous to several regions in the Himalayas” in
International Class 31.1 The term “Berry” has been
disclaimed in the application. Applicant also amended the
application to seek registration based on a claim that the

1 Application Serial No. 76680112 was filed on July 31, 2007
based upon applicant’s allegation of first use in commerce at
least as early as December 31, 1977.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 76680112
2
proposed mark has acquired distinctiveness under Trademark
Act Section 2(f).
This case is now before the Board on appeal from the
final refusal of the examining attorney to register the
proposed mark based upon the ground that GOJI BERRY is
generic for the identified goods, and in the alternative
that if it is not found to be generic, that it is merely
descriptive and applicant has failed to show that the
proposed mark has acquired distinctiveness. Applicant and
the examining attorney have fully briefed the issues in
this case. We affirm the refusal to register on the basis
that GOJI BERRY is generic.
Generic terms are by definition incapable of
indicating source and thus can never attain trademark
status. In re Merrill, Lynch, Pierce, Fenner, and Smith
Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987). A
designation is a generic name if it refers to the class or
category of goods and/or services on or in connection with
which it is used. In re Dial-A-Mattress Operating Corp.,
240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001), citing H.
Marvin Ginn Corp. v. International Association of Fire
Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986).
The test for determining whether a designation is generic
Serial No. 76680112
3
is its primary significance to the relevant public.
Section 14(3) of the Trademark Act; In re American
Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir.
1999); Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d
1551 (Fed. Cir. 1991); and H. Marvin Ginn Corp., Id. The
United States Patent and Trademark Office has the burden of
establishing by “clear evidence” that a designation is
generic and thus unregistrable. In re Merrill Lynch, 4
USPQ2d at 1143. Evidence of the relevant public's
understanding of a designation may be obtained from any
competent source, including testimony, surveys,
dictionaries, trade journals, newspapers, and other
publications. In re Northland Aluminum Products, Inc., 777
F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985).
We first consider the category or genus of goods.
Applicant's goods, as recited in the application, are
“fruit, namely, raw and unprocessed berry only indigenous
to several regions in the Himalayas.” Applicant and the
examining attorney do not dispute the genus of goods and,
based on the record, we find that the genus of goods may be
broadly characterized as “berries from the Himalayas,” for
while applicant has limited its goods to those that are
Serial No. 76680112
4
indigenous to “several regions in the Himalayas,”2 applicant
has not limited the goods to any particular type of berry.
Nonetheless, if the relevant purchasing public would find
GOJI to be the name of even one type of berry from the
Himalayas, then the refusal must be affirmed, for it is not
necessary that the term describe all berries indigenous to
the region. See In re Analog Devices, Inc., 6 USPQ2d 1878)
(Fed.Cir. 1989) (A registration can be cancelled if the
registered mark has become generic for any or all of the
goods identified).
We next must determine whether the term GOJI BERRY is
understood by the relevant public primarily to refer to one
or more types of berries from the Himalayas. The examining
attorney contends that “[t]he relevant public understands
the term ‘goji berry’ to be the common name for [the
identified goods].” Brief, (unnumbered) p. 4. She
attached third-party website evidence to her Office actions
which, she contends, “defines goji berry, discusses the
health benefits of the goji berry, describes the

2 A mountain system of south-central Asia extending about 2,414
km (1,500 mi) through Kashmir, northern India, southern Xizang
(Tibet), Nepal, Sikkim, and Bhutan. The Himalayas include nine
of the world's ten highest peaks, including Mount Everest.
The American Heritage Dictionary of the English Language, (4th ed.
2000). The Board may take judicial notice of dictionary
definitions. University of Notre Dame du Lac v. J. C. Gourmet
Serial No. 76680112
5
characteristics of the goji berry, references products such
as juice, supplements, and creams that contain the goji
berry as an ingredient, discusses the history of the goji
berry, shows vendors of the goji berry other than
applicant, and explains the different types of goji berries
from the Himalayas.”3 Id. She also attached printouts of a
Wikipedia entry for “Wolfberry” which states that
“[a]ccording to the United States Department of Agriculture
Germless Resources Information Network, [Wolfberry] is also
known as Chinese wolfberry, goji berry...Unrelated to the
plant’s geographic origin, the names Tibetan goji and
Himalayan goji are in common use in the health food market
for products from this plant.” Based on the evidence, the
examining attorney concludes that “the term ‘goji berry’ is
generic for raw and unprocessed fruit berries from the
Himalayas; thus, the term ‘goji berry’ cannot become a
trademark under any circumstance.” Id. at (unnumbered) p.
8.
In response, applicant essentially argues that he
coined the term “Goji” several decades ago and that others

Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983).
3 We note that the evidence displays third-party use of the term
being spelled with an uppercase “G” (Goji) and with a lowercase
“g” (goji). This does not detract from the import of the
Serial No. 76680112
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have since used the term improperly or “fraudulently” to
refer to berries. Specifically, he contends that he
created the term “goji” in 1974 for the Lycium4 berry that
he found while conducting research in the Himalayas and
that the term is based on various regional nomadic names
given to the berry. He asserts that in 1977 he began to
“import and distribute these berries calling them Goji
Berry, in commerce to my clients and customers.” Brief, p.
8. Applicant further states that he later learned (in
2003) that “berries that were being sold [by others] as
Goji berries were in fact the Chinese Wolfberry of the same
botanical family as the Goji, but of lesser medicinal value
than the Goji.” Id. According to applicant, “the sole
purpose of [his] application is to protect consumers from
purchasing fraudulent products under the guise of this very
specific natural medicinal fruit...which can only be found
in very specific regions of the Himalayan Mountains as
described [in the identification of goods].”
Applicant does not attempt to rebut the examining
attorney’s evidence to the extent that the evidence shows

evidence, namely, that the term itself is being used generically
and not a source-identifier for any one product.
4 “Lycium” is defined as:
Prop. n. 1. A genus of deciduous and evergreen shrubs often
spiny; cosmopolitan in temperate and subtropical regions.
Webster's Revised Unabridged Dictionary.
Serial No. 76680112
7
considerable third-party use of the term “Goji” or “Goji
berry” as a generic reference to berries from the
Himalayas. Rather, he argues that any other use of “Goji”
is “fraudulent” because “the only authentic [Goji] berries
came from my company.” Id. at p. 9. Furthermore, as the
examining attorney noted in her brief, applicant apparently
concedes that the term “goji” is now generic.
Specifically, on page 7 of his brief under the heading
“Summary of Argument,” applicant states:
V. That the term Goji very recently became a generic
term making it supposedly merely descriptive under
Section 2(e)(1).

Applicant makes several other references to the identified
goods in an apparent generic fashion as “Goji berries” or
“Gobies”. To wit,
That Applicant/Appellant has annually purchased the
entire crop of “Goji” Berries from these regions where
they grow wild. That Applicant/Appellant is and has
been the only importer of the authentic “Goji” Berry
for three decades. For the first two decades “Gojis”
were sold to consumers primarily in the (sic) Seattle,
Washington, followed by another decade…

(Brief, p. 7)
Even if we were to ignore applicant’s admission that
the term “Goji” has become generic and his own use of the
term “goji” in his brief, the evidence of record makes it
clear that the proposed mark GOJI BERRY is a generic
Serial No. 76680112
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reference for a type of berry falling within the relevant
genus of goods. The numerous website articles of record
demonstrate that “Goji berry” is a common term used by the
public to describe a certain type of berry obtained from a
plant in the Himalayas. The evidence also includes
advertisements from competitors of applicant, namely,
internet retailers of the berries touting the nutritional
benefits of the “Goji berries.” In her brief, the
examining attorney points to various examples of generic
use of the term “Goji” or “Goji berry” and, as noted,
applicant does not dispute or take issue with this
evidence. Finally, we take judicial notice of the
following definition for the term “Goji”:
Etymology: modification of Chinese (Beijing) gǒuqǐ the
shrub Lycium chinense
Date: 2003
: the dark red mildly tart berry of a thorny chiefly
Asian shrub (Lycium barbarum) that is typically dried
and used in beverages.

Merriam-Webster's Collegiate Dictionary, Eleventh
Edition.

In view of the overwhelming amount of evidence, we
have no trouble concluding that applicant’s mark, GOJI
BERRY, is a generic reference for the identified goods and
is perceived as such by the relevant public. The examining
attorney has met her burden of establishing by clear
Serial No. 76680112
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evidence that the term GOJI BERRY is generic for the
relevant genus of goods.
In our determination, we have considered all of the
evidence of record, including the affidavits submitted by
applicant in support of his contention that his mark has
acquired distinctiveness. These affidavits, which are
fairly uniform in substance, have little, if any,
persuasive value. For instance, there are averments such
as “I was purchasing berries known as ‘Goji’ from
[applicant]” and “to my knowledge this was the only source
of Goji Berries in the western world.” These statements
indicate generic use of the term “Goji” to describe the
type of berries being sold by applicant and seem to
indicate that there are currently other sources of “Goji
berries.”
Even if we were to accept a key factual assertion to
applicant’s argument, namely, that he coined the term
“Goji” and was the first to use the term in commerce in
connection with the Lycium berries from the Himalayas, it
is evident that the term has been subsequently adopted by
others in the relevant field as the generic name for
berries from the Himalayas. The examining attorney's
evidence makes this clear. It is well settled that
Serial No. 76680112
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although a term may at adoption be a distinctive
designation for a product, if the term over a period of
time comes to identify the product itself, rather than the
source thereof, it becomes generic and cannot be
exclusively appropriated by any one party. Continental
Airlines, Inc. v. United Air Lines Inc., 53 USPQ2d 1385
(TTAB 1999) [term “E-ticket” was adopted by many airlines
as common descriptive term for electronic ticketing and
reservation services]; see also, In re Randall and Hustedt,
226 USPQ 1031 (TTAB 1985); In re Texas Meat Brokerage,
Inc., 199 USPQ 40 (TTAB 1978); and J. T. McCarthy, 2
McCarthy on Trademarks and Unfair Competition, § 12:25 (4th
ed. 2006) for a general discussion of names for new
products becoming generic. Thus, although applicant
dismisses subsequent third-party uses of the term as
“fraudulent,” applicant has failed to introduce any
evidence that he has attempted to police his alleged
trademark rights, or that any such uses by others have been
found to be in any way improper or unlawful. In addition,
applicant’s claim that he annually purchases the entire
crop of the involved berries from the Himalayas and is the
only source for what he considers to be “Goji berries” does
not warrant a conclusion that the term is not generic. See
Serial No. 76680112
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In re American Institute of Certified Public Accountants,
65 USPQ2d 1972 (TTAB 2003) (CPA EXAMINATION found to be
generic notwithstanding applicant’s contention that it was
the only source of the cpa examination used throughout the
United States). In other words, it is irrelevant that
applicant may be the only purveyor of “Goji berries” so
long as others use said term as a generic reference to the
berries.
Accordingly, we find that the term GOJI BERRY is
primarily used and understood by the relevant public as a
generic name for a type of berry from the Himalayas and
thus is incapable of functioning as a mark indicating
applicant as the source of goods of this type.
In the alternative, even if we found that GOJI BERRRY
was not a generic term, the evidence of record, including
the previously-discussed declarations, is not sufficient to
establish that GOJI BERRY has acquired distinctiveness
under Trademark Act Section 2(f).
Decision: The refusal on the ground of genericness is
affirmed.