Hikari Sales USA, Inc.

Trademark Trial and Appeal Board

Mar 29, 2018

EX (T.T.A.B. Mar. 29, 2018)

From: Kuykendall, Lyndsey

Sent: 3/29/2018 4:25:21 PM

To: TTAB EFiling

CC:

Subject: U.S. TRADEMARK APPLICATION NO. 86439012 - ALGAE WAFERS - 112604-4000. - EXAMINER
BRIEF

*************************************************
Attachment Information:
Count: 1
Files: 86439012.doc

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

U.S. APPLICATION SERIAL NO. 86439012

MARK: ALGAE WAFERS

*86439012*
CORRESPONDENT ADDRESS:
PATCHEN M HAGGERTY
PERKINS COIE
1201 3RD AVE STE 4900
SEATTLE, WA 98101-3099

GENERAL TRADEMARK INFORMATION:
http://www.uspto.gov/trademarks/index.jsp

TTAB INFORMATION:
http://www.uspto.gov/trademarks/process/appeal/index.js
p
APPLICANT: Hikari Sales USA, Inc.

CORRESPONDENT’S REFERENCE/DOCKET NO:
112604-4000.
CORRESPONDENT E-MAIL ADDRESS:
pctrademarks@perkinscoie.com

EXAMINING ATTORNEY’S APPEAL BRIEF

The applicant is appealing the Trademark Examining Attorney’s final refusal to register the mark
ALGAE WAFERS in standard character form for goods currently identified as “Fish food” in International
Class 031, on the grounds that the mark is generic and thus incapable of distinguishing applicant’s goods
under Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051, 1052, 1127.

STATEMENT OF FACTS

On October 29, 2014, the applicant filed an application to register the mark ALGAE WAFERS in
standard character form under Trademark Act Section 2(f) based on length of use for goods identified as
“Fish food” in International Class 031.
In an Office Action dated February 21, 2015, the examining attorney refused registration on the
grounds that the mark is merely descriptive of the identified goods under Section 2(e)(1) of the
Trademark Act, 15 U.S.C. Section 1052(e)(1). Applicant was also advised that the mark appeared to be
generic and that Trademark Act Section 2(f) or an amendment to the Supplemental Register could not
overcome such a determination.
On August 20, 2015, applicant filed a response containing a Request for Suspension pending
resolution of ongoing litigation involving the Mark.
On August 23, 2015, the examining attorney suspended the application pending the resolution
of the civil proceeding.
On February 23, 2016, the examining attorney issued a Suspension Inquiry to check on the
status of the pending civil proceeding.
On August 23, 2016, the applicant responded to the Suspension Inquiry by claiming acquired
distinctiveness under Trademark Act Section 2(f) based on evidence, and by submitting a declaration
from the President of Hikari Sales USA, Inc., evidence and a survey all in support of acquired
distinctiveness.
On October 4, 2016, the examining attorney responded officially issuing a generic refusal,
informing applicant the extrinsic evidence was insufficient for Section 2(f) acquired distinctiveness, and
maintaining and continuing the Section 2(e)(1) descriptiveness refusal.
Applicant filed a response on April 4, 2017 setting forth arguments in favor of registration.
However, the examining attorney found the arguments unpersuasive.
On May 5, 2017, a Final refusal for genericness was issued, and the examining attorney
maintained that in the alternative the mark was merely descriptive, and that applicant had not
satisfactorily demonstrated acquired distinctiveness.
On November 3, 2017 applicant filed a Notice of Appeal and paid the required fee and on
November 6, 2017 applicant filed a Request for Reconsideration.
On November 9, 2017, the examining attorney denied the Request for Reconsideration.
On January 23, 2018, applicant filed its appeal brief. The Trademark Trial and Appeal Board
forwarded the appeal brief to the examiner on January 29, 2018.

ISSUE
The two issues on appeal are: (1) whether applicant’s proposed mark, ALGAE WAFERS, is generic
for the identified goods so as to preclude registration under Trademark Act Sections 1, 2, and 45, 15
U.S.C. §§1051, 1052, 1127; and (2) whether, in the alternative, applicant’s proposed mark is merely
descriptive of the goods under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), and applicant has
not established acquired distinctiveness in the mark.

ARGUMENTS
I. THE MARK IS GENERIC FOR THE GOODS AND ACCORDINGLY, REGISTRATION IS PROPERLY
REFUSED UNDER SECTIONS 1, 2, and 45 OF THE TRADEMARK ACT.

The applicant’s mark ALGAE WAFERS is a generic term in relation to the applicant’s goods, “Fish
food” in International Class 031. A generic term is a common name that the relevant public uses or
understands primarily as referring to the category or genus of the goods and/or services in question. In
re Nordic Naturals, Inc., 755 F.3d 1340, 1342, 111 USPQ2d 1495, 1497 (Fed. Cir. 2014); H. Marvin Ginn
Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989-90, 228 USPQ 528, 530 (Fed. Cir. 1986); see
TMEP §1209.01(c). Trademark Act Section 1, 2, and 45 bar registration of an applied-for mark that is
generic for the relevant goods. Generic terms are by definition incapable of indicating a particular
source of goods and/or services and cannot be registered as trademarks or service marks. In re Cordua
Rests., Inc., 823 F.3d 594, 599, 118 USPQ2d 1632, 1634 (Fed. Cir. 2016) (quoting In re Merrill Lynch,
Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 1569, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987)); see TMEP
§1209.01(c). Registering generic terms “would grant the owner of [a] mark a monopoly, since a
competitor could not describe his goods as what they are.” In re Merrill Lynch, Pierce, Fenner, & Smith,
Inc., 828 F.2d at 1569, 4 USPQ2d at 1142.
“A mark is generic if its primary significance to the relevant public is the class or category of goods
or services on or in connection with which it is used.” TMEP §1209.01(c)(i) (citing H. Marvin Ginn Corp.
v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989-90, 228 USPQ 528, 530 (Fed. Cir. 1986); In re
ActiveVideo Networks, Inc., 111 USPQ2d 1581, 1600 (TTAB 2014)). Determining whether a mark is
generic requires a two-step inquiry:

(1) What is the genus of goods and/or services at issue?

(2) Does the relevant public understand the designation primarily to refer to that genus of
goods and/or services?

In re Cordua Rests., Inc., 823 F.3d 594, 599, 118 USPQ2d 1632, 1634 (Fed. Cir. 2016) (citing H. Marvin
Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d at 990, 228 USPQ at 530); TMEP §1209.01(c)(i).

Regarding the first part of the inquiry, the genus of the goods and/or services may be defined by
an applicant’s identification of goods. See In re Cordua Rests., Inc., 823 F.3d at 602, 118 USPQ2d at 1636
(citing Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 640, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991)); see also
In re 1800Mattress.com IP, LLC, 586 F.3d 1359, 1361, 1363, 92 USPQ2d 1682, 1682, 1684 (Fed. Cir.
2009). In this case, the application identifies the goods as “fish food,” which adequately defines the
genus at issue. The applicant agrees with this definition. Applicant’s Appeal Brief pg. 6.
Regarding the second part of the inquiry, the relevant public is the purchasing or consuming public
for the identified goods and/or services. Sheetz of Del., Inc. v. Doctor’s Assocs. Inc., 108 USPQ2d 1341,
1351 (TTAB 2013) (citing Magic Wand Inc. v. RDB Inc., 940 F.2d at 640, 19 USPQ2d at 1553). In this case,
the relevant public comprises ordinary consumers who purchase applicant’s goods, because there are
no restrictions or limitations to the channels of trade or classes of consumers.
The previously attached evidence from Merriam-Webster Dictionary Online shows that the word
“ALGAE” in the applied-for mark means “a plant or plantlike organism of any of several phyla, divisions,
or classes of chiefly aquatic usually chlorophyll-containing nonvascular organisms of polyphyletic origin
that usually include the green, yellow-green, brown, and red algae in the eukaryotes and especially
formerly the cyanobacteria in the prokaryotes” and “WAFERS” means “a small, round, thin object.”
February 21, 2015 Office Action Outgoing, TSDR pp. 5-12. Thus, the relevant public would understand
this designation to refer primarily to that genus of goods because it indicates that the food, algae, comes
in the form of a wafer.
The individual words within the composite term retain their original meaning and no additional
meaning is created by their combination. As a result, the relevant public would perceive the mark as a
whole to be generic when applied to the relevant goods. Only where the combination of descriptive
terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in
relation to the goods and/or services is the combined mark registrable. See In re Colonial Stores, Inc.,
394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63
(TTAB 2013). In this case, both the individual components and the composite result do not create a
unique, incongruous, or nondescriptive meaning in relation to the goods. Specifically, the evidence
shows that applicant offers an edible wafer made of algae.
Further, the evidence of record is more than sufficient to show the genericness of the compound
word mark ALGAE WAFERS. The examining attorney attached evidence showing the manner in which
ALGAE WAFERS is used in numerous third party examples, including by companies, in books, and in
articles, to refer generically to a type of fish food. Specifically, the following evidence was provided:
• Ocean Nutrition, February 21, 2015 Office Action Outgoing, TSDR pp. 13-14 showing
products going by the name of “Algae Wafers.”
• Fresh Aquarium, February 21, 2015 Office Action Outgoing, TSDR pp. 21-27 discussing the
“Top 3 Algae Wafers.”
• Pet Mountain, February 21, 2015 Office Action Outgoing, TSDR pp. 28 showing products
going by the name of “Marineland Algae Wafers with Zucchini” “API Algae Eater Premium
Algae Wafers,” and “Tetra Pond TetraVeggie Algae Wafers Extreme,” “Tetra Pond
TetraVeggie Algae Wafers.”
• Aquadine, October 4, 2016 Office Action Outgoing, TSDR pp. 2-4 describing a fish nutritional
system that states “Aquadine® manufactures 12 varieties of premium flake and pellet fish
food products as well as a high-quality sinking algae wafer, Duradisk®, for both the
individual aquarium owner as well as specialty retail stores.”
• Elive LLC, October 4, 2016 Office Action Outgoing, TSDR pp. 8-9 showing the goods Elive
Algae Wafers.”
• Freshwater Aquariums for Dummies, October 4, 2016 Office Action Outgoing, TSDR pp. 10
is a book on fish care which states that “Specific types of vegetable foods such as algae
wafers are manufactured to meet the needs of these types of fish.”
• American Aquarium Products, October 4, 2016 Office Action Outgoing, TSDR pp. 11-14
showing Algae Grazers with the description “Algae wafers with Spirulina as the number 1
ingredient, unlike the other popular brands of sinking wafers for algae eaters and other fish
(such as Mollies) that like vegetable based sinking wafers to feed on.”
• Live Fish Direct, October 4, 2016 Office Action Outgoing, TSDR pp. 20-21 informing
customers to feed fish “spirulina flake and algae wafers.”
• PetSolutions, October 4, 2016 Office Action Outgoing, TSDR pp. 22-23 showing the goods
“PetSolutions Algae Wafers Sinking Discs Fish Food.” The website describes the goods as
“PetSolutions Algae Wafers Sinking Discs Fish Food is a nutritious aquarium fish diet with a
high concentration of algae. These sinking algae discs are easy to digest as they soften easily
while holding shape. This fish food is perfect for algae eaters, Plecostomus, and most
herbivorous cichlids….”
• Petco, October 4, 2016 Office Action Outgoing, TSDR pp.24-27 informing fish owners to feed
fish “Algae and sinking algae wafers” for a well-balanced algae eater diet.
• Tropical Fish Species Guide, October 4, 2016 Office Action Outgoing, TSDR pp. 28 which
states “As well as feeding him with pellets and tank algae. It should also be fed algae wafers,
zucchini/courgette, cucumber, lettuce, peas, and melon, and any fruit or vegetable will do,
as well. They also can eat shrimp, pellets, and flake fish food.”
• API Algae Eater sold by PetSmart, May 5, 2017 Final Office Action, TDSR pp. 4-9 which uses
the wording “API® Algae Eater Premium Algae Wafers Fish Food” on the website and the
packaging of the goods uses the wording “API® Algae Eater Premium Algae Wafers for Algae
eating Fish.”
• Houston Chronicle, May 5, 2017 Final Office Action, TDSR pp. 10-14 showing an article about
a fish that uses the mark in a generic fashion such as “The algae wafers I dropped in at night
would be gone in the morning, so I knew he was in there” and “…I walked in on Scrubber
and saw him stretched out, full-length, sucking on an algae wafer.”
• Journal Sentinel, May 5, 2017 Final Office Action, TDSR pp. 15-16 showing an article that
contains the sentence “Or he's hoping we'll toss in another algae wafer, his favorite meal.”
• KETV, May 5, 2017 Final Office Action, TDSR pp. 17-21 which is a news article discussing a
pet store that was robbed. It states, “[a] dechlorinator, two bottles of water conditioner,
two bags of algae wafers, 20 serpae tetra fish, two aquarium heaters and $10 case were
stolen.”
• Lake Victoria Basin Cichlids. May 5, 2017 Final Office Action, TDSR pp. 22-25 discussing that
some fish should have a diet consisting of “foods high in vegetable content, such as spirulina
flakes and pellets as well as algae wafers.”
• Sucker Fish Food, May 5, 2017 Final Office Action, TDSR pp. 26-29 that shows an article
about a fish where the writer discusses fish food, “Sucker fish food can be supplemented
with algae wafers.”
Please also see the below evidence showing that WAFERS is a generic term in the field of fish food:
• Angels Plus, May 5, 2017 Office Action Outgoing, TSDR pp. 2-9 which discusses “Seafood
Wafer Fish Food” and states that “Seafood Wafers are geared towards the average fish that
doesn't need large amounts of plant material, yet are designed to be eaten slowly, like our
algae disks and vegetable discs.”
• Your Fish Stuff, May 5, 2017 Final Office Action, TDSR pp. 30-32 that shows fish food titled
“veggie wafers.”

The above evidence shows ALGAE WAFERS being used on product packaging, in product
descriptions, and in books and articles to refer generically to a type of fish food. The evidence also
shows that that “wafers” are a generic type of fish food and that “algae wafers” is a generic phrase for
the form the food comes in and its major ingredient.
Applicant has stated that the examining attorney’s evidence was insufficient because some
companies have ceased using the wording ALGAE WAFERS. However, applicant continues to over
represent how many companies ceased using the wording. As shown above, the term, ALGAE WAFERS
was still used as generic wording on many websites into 2017. In particular, applicant’s exhibits, such as
those attached to its Response to Office Action of August 23, 2016, only show that some brands using
the term “algae wafers” are temporarily sold out or listed out of stock on individual websites- they do
not definitively prove that these goods are no longer available. Although applicant argues the contrary,
the trademark examining attorney has established by “clear evidence” that the applied-for mark is
generic; thus the USPTO’s evidentiary burden has been met. See In re Hotels.com LP, 573 F.3d 1300,
1302, 91 USPQ2d 1532, 1533-34 (Fed. Cir. 2009); In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828
F.2d 1567, 1571, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987); TMEP §1209.01(c)(i).
Applicant also argues that the evidence presented is de minimis, and use on other websites and
articles is “ambiguous” because it could refer to applicant’s goods. Applicant’s Appeal Brief pg. 2-3, 7,
and 9-10. The examining attorney disagrees. The evidence the examining attorney presented is not de
minimis as it shows use on other products by third parties, use on websites, use in books, and use in
news articles. Such use, especially in books and news articles is not ambiguous as authors know that
proper nouns, such as those referring to particular brand names of products, are capitalized, and each of
the instances presented shows the mark in lower case. Please see the evidence referenced above.
Furthermore, many of the articles and books are offered by professional organizations or publishing
companies, which are well versed in various citation styles and would be careful of proper capitalization
of brand names.
With regards to the examining attorney’s evidence, the applicant also argues that the cited
evidence did not reflect the perception of the mark to the “relevant public” in view of their “more
reliable” evidence. Please see Applicant’s Appeal Brief pg. 7. Contrary to applicant’s assertion, the
articles, books, and fish food websites provided by the examining attorney are nearly all in a context
specifically focusing on fish, fish care, and fish feeding, by the relevant public, namely, fish owners and
people who put themselves forward as knowledgeable in the field.
Applicant also argues that the declarations and survey evidence prove that the relevant public
associates the mark with the applicant and thus the mark is not generic. The examining attorney
disagrees. The survey should reveal that the consuming public associates the proposed mark with a
single source, and not that the applicant is the first among many parties associated with the designation.
See J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §15.42 (4th ed. 2013) (citing
Am. Flange & Mfg. Co. v. Rieke Corp., 80 USPQ2d 1397, 1415 (TTAB 2006) , withdrawn on other grounds,
90 USPQ2d 1127 (TTAB 2009)); see also British Seagull Ltd. v. Brunswick Corp., 28 USPQ2d 1197, 1202
(TTAB 1993) , aff’d, 35 F.3d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994) (finding survey does not provide
convincing proof that respondents believe all black engines come from the same source). Applicant
argues that more than 50% of responders to its survey recognize the wording as being associated with
applicant and that case law holds this to be significant. While this may be, case law also states that
secondary meaning is established by considering the totality of the evidence. See, In re Owens-Corning
Fiberglas Corp., 774 F.2d at 1127–28, 227 USPQ at 424–25 (finding 50% probative in establishing
secondary meaning given the totality of the evidence). TMEP 1212.06(d). In this case, the totality of the
evidence shows that there were deficiencies in the questions asked and the information provided during
the survey and survey results confirm that the mark is not associated with a single source.
With regards to the survey evidence, applicant’s survey also does not account for, nor inquire as
to, the understanding of those taking the survey of what a trademark or brand name is, vs. what a
common name or generic wording is. Please see applicant’s survey questions located in the May 5, 2017
Office Action Outgoing, TSDR pp.2-9. Flawed survey questions are of little probative value. See, In re
Hotels.com, L.P., 87 USPQ2d 1100, 1109–10 (TTAB 2008), aff’d, 573 F.3d 1300, 91 USPQ2d 1532 (Fed.
Cir. 2009) (finding applicant’s survey entitled to no probative weight as to the public’s perception of
HOTELS.COM due to flaws including the order of the questions and an assumption that consumers
understand the difference between a brand name and domain name); In re E.I. Kane, Inc., 221 USPQ
1203, 1206 (TTAB 1984) ("[T]he survey asked the wrong question. The issue is not whether the term
‘Office Movers’ identifies a specific company. Rather, it is whether the term ‘OFFICE MOVERS, INC.’
identifies services which emanate from a single source."). The fact that consumers may associate
particular wording with a particular brand name is not indicative of that wording’s distinctiveness. It
may merely indicate that those consumers have exposure to only certain brands of fish food for
whatever reason. Applicant’s survey made no effort to find out how many different brands of fish food
those taking the survey were generally familiar with. Thus, further confirming that it is not clear that
consumers understood what a brand name is, what a source indicator is, or what a common name is.
Therefore, in the present case, applicant’s survey is unpersuasive due to the format and/or the
method in which it was conducted, and thus has little or no probative value on the issue of acquired
distinctiveness of the applied-for mark. See Stuart Spector Designs Ltd. v. Fender Musical Instruments
Corp., 94 USPQ2d at 1569-71; TMEP §1212.06(d); J. Thomas McCarthy, McCarthy on Trademarks &
Unfair Competition §§32:158, 32:170 (rev. 4th ed. Supp. 2016).
Additionally, the expert who assessed the survey’s meaning appears to be a linguistic expert, not a
trademark expert or even a lawyer. The fact that a person is sophisticated or knowledgeable in
linguistics does not necessarily mean that they are sophisticated or knowledgeable in the field of
trademarks. Dr. Timothy Habick states that “[a]ccording to my own linguistic research, it is by no means
certain that Hikari’s “Algae Wafers” mark is merely descriptive, let alone highly descriptive or generic.”
April 4, 2017 Response to Office Action, TSDR pg. 35. Dr. Habick is not qualified to make a legal
determination that the mark in question is a “suggestive term.” Therefore, the interpretation of
applicant’s survey, is not probative on the issue of applicant’s claim of acquired distinctiveness.
Furthermore, Applicant provided an affidavit from the President of Hikari Sales USA, Inc. to
support applicant’s claim that the applied-for mark acquired distinctiveness under Trademark Act
Section 2(f). See 15 U.S.C. §1052(f). Although affidavits and declarations that assert recognition of a
mark as an indicator of source are relevant in establishing acquired distinctiveness, affidavits and
declarations of an applicant’s employees, officers, and attorneys are usually self-serving and entitled to
little weight. See In re David Crystal, Inc., 296 F.2d 771, 773, 132 USPQ 1, 2 (C.C.P.A. 1961); In re Gray
Inc., 3 USPQ2d 1558, 1560 (TTAB 1987); In re Cent. Counties Bank, 209 USPQ 884, 888 (TTAB 1981);
TMEP §1212.06(c).
The Trademark Examining Attorney maintains that the term ALGAE WAFERS is generic when
used to refer to wafers made of algae, which are the exact goods that the applicant offers. Finally, the
test for genericness is whether the relevant public would understand the designation ALGAE WAFERS
primarily to refer to the genus of goods, in this case, fish food. The evidence of record demonstrates
numerous third parties using the wording ALGAE WAFERS on their products, in product descriptions,
and in books and articles, all indicating the type of fish food being offered, and thus showing the
proposed mark is generic for applicant’s identified goods.

II. EVEN IF APPLICANT’S MARK IS NOT GENERIC, THE MARK IS MERELY DESCRIPTIVE OF THE
IDENTIFIED GOODS UNDER TRADEMARK ACT SECTION 2(e)(1), 15 U.S.C. §1052(e)(1), AND
APPLICANT HAS NOT PROVIDED SUFFICIENT EVIDENCE OF ACQUIRED DISTINCTIVENESS TO
OVERCOME THE DESCRIPTIVENESS REFUSAL

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function,
feature, purpose, or use of an applicant’s goods and/or services. TMEP §1209.01(b); see, e.g., In re
TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl &
Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415
F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of
Patents, 252 U.S. 538, 543 (1920)).
Determining the descriptiveness of a mark is done in relation to an applicant’s goods and/or
services, the context in which the mark is being used, and the possible significance the mark would have
to the average purchaser because of the manner of its use or intended use. See In re The Chamber of
Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (citing In re Bayer
Aktiengesellschaft, 488 F.3d 960, 963-64, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); TMEP §1209.01(b).
Descriptiveness of a mark is not considered in the abstract. In re Bayer Aktiengesellschaft, 488 F.3d at
963-64, 82 USPQ2d at 1831.
In this case, the wording ALGAE WAFERS is merely descriptive of Applicant’s goods because it
describes a characteristic and ingredient of the goods. Specifically, as shown by not only dictionary
evidence but also applicant’s specimen, applicant offers algae- based fish food in the form of a “sinking
vegetable rich wafer” for “algae eaters.”
Applicant has disputed the refusal by attacking the evidence attached to the Office Actions.
Applicant has repeatedly stated that many of the initial websites cited by the examining attorney are not
in use anymore. However, this is not accurate. All of the evidence submitted was valid at the time of
submission, and the vast majority of the evidence remains in use, and shows that the wording is not only
descriptive, it is generic, and applicant does not have sole or exclusive use of the wording. For that
matter, even if applicant was the first to use the wording, the fact that an applicant may be the first or
only user of a generic designation is not dispositive on the issue of genericness where, as here, the
evidence shows that the word or term is generic. See In re Empire Tech. Dev. LLC, 123 USPQ2d 1544,
1549 (TTAB 2017) (quoting In re Greenliant Sys. Ltd., 97 USPQ2d 1078, 1083 (TTAB 2010)); TMEP
§1209.03(c). Furthermore, applicant has not argued against or stated in its brief that the wording
ALGAE WAFERS is not descriptive of their goods which is fish food made out of algae in the form of a
wafer. In fact, applicant has confirmed in multiple instances that the wording is descriptive by first,
stating in its brief that it disclaimed1 WAFERS in its initial filing and second, submitting specimens of
record that show the goods are made in whole or in part of algae as they are “ideal for algae eaters.”
Applicant’s Appeal Brief pg. 1.
A mark is suggestive if some imagination, thought, or perception is needed to understand the
nature of the goods and/or services described in the mark; whereas a descriptive term immediately and
directly conveys some information about the goods and/or services. See Stoncor Grp., Inc. v. Specialty

1 Although applicant maintains in their Appeal Brief that a disclaimer of WAFERS was submitted in the initial filing,
an actual disclaimer was not actually submitted.
Coatings, Inc., 759 F.3d 1327, 1332, 111 USPQ2d 1649, 1652 (Fed. Cir. 2014) (citing DuoProSS Meditech
Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251-52, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012));
TMEP §1209.01(a). “Whether consumers could guess what the product [or service] is from consideration
of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985). The
question is not whether someone presented only with the mark could guess what the goods and/or
services are, but “whether someone who knows what the goods and[/or] services are will understand
the mark to convey information about them.” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695
F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (quoting In re Tower Tech, Inc., 64 USPQ2d
1314, 1316-17 (TTAB 2002)); In re Franklin Cnty. Historical Soc’y, 104 USPQ2d 1085, 1087 (TTAB 2012).
In this case, the term ALGAE WAFERS immediately and directly conveys that applicant’s goods are
wafers made of algae.
The Trademark Examining Attorney maintains that the term ALGAE WAFERS is descriptive when
used to refer to wafers made of algae- which are the exact goods that the applicant offers- and the
evidence supports this finding.
Applicant sought to overcome the refusal under Trademark Act Section 2(e)(1), 15 U.S.C.
§1052(e)(1), by asserting that the mark has acquired distinctiveness as a source indicator for Applicant’s
goods.

An applicant bears the burden of proving that a mark has acquired distinctiveness under
Trademark Act Section 2(f). In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1335, 116 USPQ2d 1262, 1264
(Fed. Cir. 2015) (citing In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1422 (Fed. Cir.
2005)); TMEP §1212.01. “To show that a mark has acquired distinctiveness, an applicant must
demonstrate that the relevant public understands the primary significance of the mark as identifying the
source of a product or service rather than the product or service itself.” In re Steelbuilding.com, 415
F.3d at 1297, 75 USPQ2d at 1422.
Allegations of sales and advertising expenditures do not per se establish that a term has
acquired significance as a mark. See TMEP §1212.06(b). An applicant must also provide the actual
advertising material so that the examining attorney may determine how the term is used, the
commercial impression created by such use, and the significance the term would have to prospective
purchasers. TMEP §1212.06(b); see In re Boston Beer Co., 198 F.3d 1370, 1373, 53 USPQ2d 1056, 1058
(Fed. Cir. 1999); In re Packaging Specialists, Inc., 221 USPQ 917, 920 (TTAB 1984).
The ultimate test in determining acquisition of distinctiveness under Section 2(f) is not
applicant’s efforts, but applicant’s success in educating the public to associate the claimed mark with a
single source. Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1856
(TTAB 2017) (citing In re Owens-Corning Fiberglass Corp., 774 F.2d 1116, 1125, 227 USPQ 417, 422 (Fed.
Cir. 1985); In re LC Trademarks, Inc., 121 USPQ2d 1197, 1208 (TTAB 2016); In re Pennzoil Prods. Co., 20
USPQ2d 1753, 1760-61 (TTAB 1991)); TMEP §1212.06(b).
Applicant’s claim of acquired distinctiveness is based upon the following: (1) 5 years use, (2) a
declaration from Christopher Clevers, president of applicant, stating that: (a) the mark was in continuous
use since 1991, (b) applicant has advertised since 1992, and (c) applicant had spent $830, 278 in 10
years on trade shows, $187, 765 in 5 years on print advertising, and $290, 000 in 5 years on internet
advertising, and (3) a consumer survey and interpretation by Dr. Habick.
Applicant’s claim of acquired distinctiveness under Trademark Act Section 2(f) based on
applicant’s length of use of the mark in commerce was rejected as the previously attached evidence
demonstrated that this allegation is insufficient to show acquired distinctiveness because the applied-
for mark is highly descriptive of applicant’s goods. Additionally, as previously stated, the affidavit from
the President is entitled to little weight as it is self-serving. Furthermore, the applicant has provided no
information as to what typical expenditures in its industry are. Thus, with regards to the expenditures
listed it is not clear that the numbers provided show consumer recognition of ALGAE WAFERS as a
source indicator as opposed to simply showing that applicant has spent money advertising its brand or
house mark HIKARI.
Although applicant has provided some advertising materials, there is no indication that
consumers would see “ALGAE WAFERS” as a source indicator for the goods. Additionally, many of the
advertising examples submitted show the ALGAE WAFERS product in a group of many of applicant’s
goods, and the location of the particular food type is commonly shown in the same space, size, and font
that ALGAE WAFERS is, such as KRILL, JUMBO BLOOD WORMS, and TUBIFEX WORMS. August 23, 2016
Applicant’s Response to Suspension Inquiry, TSDR pp. 15. Thus, applicant’s consumers commonly see
the food type presented in a large central manner on applicant’s packaging, and know that it is not
operating as a source indicator; rather, consumers would look to the HIKARI mark in the upper corner of
the front of the packaging as the source indicator for the goods.
The previously attached and discussed evidence proves that multiple companies use the
wording descriptively as do consumers and authors. As previously stated, Dr. Habick who interpreted
the survey, is given little credence because he is not a trademark expert or a lawyer and has no authority
to determine how the mark should be treated under trademark law. Lastly, the previously attached
evidence has shown that applicant does not have substantially exclusive use of the wording ALGAE
WAFERS and as such it is not a source indicator.
The Trademark Examining Attorney maintains that ALGAE WAFERS is generic and incapable of
acting as a source indicator for applicant’s goods; alternatively, the proposed mark is merely descriptive
in relation to the goods and has not acquired distinctiveness such that it would exclusively be seen as a
source indicator for goods.

CONCLUSION

The proposed mark ALGAE WAFERS is generic for the identified goods based on Trademark Act
Sections 1, 2, and 45, 15 U.S.C. §§1051, 1052, 1127. The mark describes the genus of goods at issue and
the public understands the mark primarily to refer to that genus of goods. However, if the mark is found
not to be generic for the goods, it is asserted that the mark is very highly descriptive and that Applicant
has not provided sufficient evidence that the mark has acquired distinctiveness in order to overcome
descriptiveness refusal under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1).
Therefore, for the foregoing reasons, the Trademark Examining Attorney respectfully requests
that the Trademark Trial and Appeal Board AFFIRM the refusal to register the proposed mark under
Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051, 1052, 1127.

Respectfully submitted,

/Lyndsey Kuykendall, Esq./
Examining Attorney
Law Office 124
571-272-5995
Lyndsey.Kuykendall@uspto.gov

Lydia Belzer
Managing Attorney
Law Office 124