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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE EASTERN DISTRICT OF VIRGINIA
`Alexandria Division
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`Case No. 1:13-cv-1462
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`MILO SHAMMAS,
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`Plaintiff,
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`V.
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`THERESA STANEK REA,
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`Acting Under Secretary Of Commerce For
`Intellectual Property And Actiug Director
`Of The United States Patent Am!
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`Tmdemark Ofiice,
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`Defendant.
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`\t._.K\.,,.r\_.d\_./\_H\u_.r\u_l\n..f\-./'\u.d\-.pV‘I—/\-&\—-/
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`MEMORANDUM OPINION
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`At issue on cross motions for summary judgment in this action seeking review ofa
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`decision from the Patent and Trademark Ol'fice’s (“l"l'O”) Trial and Appeal Board (“‘TTAB”) is
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`whether the TTAI3 erred in denying registration for the term "PROBlO’l‘lC” on the grounds that
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`the term is generic in connection with fertilizer, and alternatively, that the term at best is
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`descriptive and has not acquired secondary meaning. For the reasons that follow. the TTAB did
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`not err in denying registration to plaintiff. Accordingly, plainti1‘l"’s motion for summary
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`judgment must be denied, and defendant’s motion for summary judgment must be granted.
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`I.
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`Plaintiff Milo Shammas, the sole owner of Dr. liarth. lnc., tiled a federal trademark
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`application on June 12. 2009 for the term 1‘-'ROBIO'l‘lC in connection with fertilizer.
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`In an Olilice
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`Action on September I4, 2009. the Trademark Examining Attorney of the PTO refused to
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`register PROIEIOTIC on two grounds. stating (I) that the term PROBIOTIC is generic in
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`connection with fertilizer and (2) that, at most, PROBIOTIC is merely descriptive for fertilizer
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`and has not acquired secondary meaning. Plaintiff filed a response on August 30, 2010, arguing
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`that PROBIOTIC has acquired distinctiveness over the past 10 years. The PTO’s Examining
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`Attorney disagreed, and on February 24, 2011, issued a Final Office Action denying registration.
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`Plaintiff then appealed this ruling to the TTAB, arguing that the PTO erred in finding the term
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`generic, and alternatively, lacking in secondary meaning. Thereafter, on October 12, 2012,
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`TTAB affirmed the Examining Attomey’s refusal to register the term PROBIOTIC as a
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`trademark. In re Milo Shammas, No. 77758863 at 13 (T.T.A.B. Oct. 25, 2012).
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`In affirrning the Examining Attorney’s denial, the TTAB found that the term was merely
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`generic, stating that “competitors’ use of the term ‘Probiotics’ as the technology behind their
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`products is persuasive evidence that the relevant consumers perceive the term as generic. . .and
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`that competitors need to use the term.” In re Milo Shammas, No. 77758863 at 13. In support of
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`this finding, the TTAB noted that “articles about soil treatment identify probiotics as. . .the
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`technology or method of using friendly bacteria on the soil as an ingredient of fertilizer.” Id.
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`Thus, the TTAB concluded that “the relevant consumers are going to understand PROBIOTIC as
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`the genus of goods, namely a fertilizer utilizing probiotic technology.” Id. at 16.
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`Alternatively, the TTAB also found that the term PROBIOTIC, even if descriptive, has
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`not acquired secondary meaning. In reaching this result, the TTAB noted that plaintiff “did not
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`submit any sales figures, either in dollar or units, market share information, or advertising
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`expenditures” to support any finding of distinctiveness. Id. at 18. The TTAB also noted that
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`“the record is lacking in any media recognition regarding applicant’s product and how the term
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`PROBIOTIC points uniquely and exclusively to applicant.” Id.
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`

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`Thereafter, on December 19, 2012, Plaintiff filed this action seeking review of the
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`TTAB’s decision pursuant to 15 U.S.C. § 107l(b)(l), arguing that the TTAB erred in finding
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`that the term PROBIOTIC is generic, and alternatively, that the term, even if descriptive, has not
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`acquired secondary meaning. Plaintiff seeks (1) reversal of the TTAB’s decision, (2) a
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`declaration that the tenn PROBIOTIC is suggestive or, alternatively, that it merits registration as
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`a distinctive trademark that has acquired secondary meaning, and (3) any other relief deemed
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`proper.
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`The parties have filed cross motions for summary judgment that essentially present the
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`following two questions: (1) whether the TTAB erred in finding that the term PROBIOTIC is
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`generic for fertilizer, and (2) whether the TTAB erred in finding, alternatively, that the term
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`PROBIOTIC, even if descriptive, has not acquired secondary meaning.
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`1!.
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`The summary judgment standard is too well-settled to merit extended discussion, nor do
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`the parties dispute this standard. Summary judgment should not be granted when the non-
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`moving party has “set forth specific facts showing that there is a genuine issue for trial” through
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`“affidavits or as otherwise provided.” Fed. Rules Civ. P. 56. A genuine factual dispute exists “if
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`the evidence is such that a reasonable jury could return a verdict for the nonmoving party.”
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`Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).
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`III.
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`Plaintiff has filed this action under 15 U.S.C. § 1071, which allows trademark applicants
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`dissatisfied with the TTAB’s decision either to appeal to the Court of Appeals for the Federal
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`Circuit or to file an action in district court. Where, as here, the plaintiff files an action in the
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`district court, the district court ‘“sits in a dual capacity,’ serving on one hand as the finder of fact
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`with respect to new evidence presented by the parties, and on the other as an appellate reviewer
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`of facts found by the TTAB.” Glendale Intern. Corp. v. US. Patent & Trademark Office, 374
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`F.Supp.2d 479, 435 (13.1). Va. 2005).
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`When acting as an appellate reviewer in an action under § 1071(b), a district court
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`reviews the TTAB’s findings of fact deferentially and must uphold those findings of fact if they
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`are supported by “substantial evidence” under the Administrative Procedure Act (“APA”).' The
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`TTAB’s findings that a tenn is generic2 or lacks secondary meanings are both findings of fact to
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`be reviewed for such substantial evidence.
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`“Substantial evidence,” as stated by the Supreme Court, is “more than a mere scintilla of
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`evidence” and requires “such relevant evidence as a reasonable mind would accept as adequate
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`to support a conclusion.” In re Pacer Technology, 338 F.3d 1348, 1349 (Fed. Cir. 2003)
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`(quoting Consol. Edison v. N.L.R.B., 305 U.S. 197, 229 (1938)). As the Federal Circuit has
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`noted, “a review for substantial evidence ‘involves examination of the record as a whole, taking
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`into account evidence that both justifies and detracts from an agency’s decisions. On-Line
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`Careline, 229 F.3d at 1086 (quoting Universal Camera Corp. v. N.L. R. B., 340 U.S. 474, 487-88
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`(1951)). A finding of fact by the TTAB will not be “upset unless it is not supported by
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`substantial evidence.” McCarthy on Trademark, § 21 :21. Moreover, “the possibility of drawing
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`' See Dickinson v. Zurko, 527 U.S. 150, 165 (1999) (holding that the proper standard ofjudicial
`review of findings of fact made by the PTO is the “substantial evidence” standard of the APA);
`On-Line Careline v. America Online, Inc., 229 F.3d 1080, 1085 (Fed. Cir. 2000) (applying Zurko
`to findings of fact made by the TTAB); Skippy, Inc. v. Lipton 1nv., Inc., 345 F.Supp.2d 585, 587
`(E.D. Va. 2002) (stating that “the district court must. . .afford deference to the fact-findings of the
`TTAB”).
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`2 In re 1800Mattress.com IP, LLC, 586 F.3d 1359, 1361 (Fed. Cir. 2009) (“Whether an asserted
`mark is generic is a factual determination made by the Board.”).
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`3 DuoProSS Meditech Corp. v. Inviro Medical Devices, Ltd, 695 F.3d 1247, 1252 (Fed. Cir.
`2012); see also McCarthy on Trademark, § 32:1 19 (“Secondary meaning is an issue of fact.”).
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`4
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`two inconsistent conclusions from the evidence does not prevent an administrative agency’s
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`finding from being supported by substantial evidence.” Id.
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`(quoting Consolo v. Federal
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`Maritime Comm ‘n, 383 U.S. 607, 620 (1966)). As stated by the Federal Circuit, the TTAB’s
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`decision “may not be reversed. . .even if [the reviewing court] would have viewed the facts
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`differently if sitting as the tribunal of original jurisdiction,” so long as substantial evidence
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`supports the TTAB’s ruling. If the evidence before the TTAB supports two conclusions, “the
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`Board’s decision to favor one over the other. . .must be sustained. ..as supported by substantial
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`evidence.” DuoProSS Meditech Corp. 695 F.3d at 1252.
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`By contrast, when a district court in a § 1071 action acts as a finder of fact with regard to
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`new evidence submitted by the parties, the district court must examine the evidence de novo and
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`make its own findings of fact as to the generic nature of the term and its lack of secondary
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`meaning.“ Of course, in reviewing newly-submitted evidence, a district court must bear in mind
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`that plaintiff has the “laboring oar to establish error by the [TTAB]” by a preponderance of the
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`evidence, because plaintiff “does not start over to prosecute his application before the district
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`court unfettered by what happened in the PTO.” Fregeau v. Mossinghofl, 776 F.2d 1034, 1036-
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`38 (Fed. Cir. 1985). Thus, plaintiff’ s evidence must be sufficient to establish by a preponderance
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`of the evidence, based on the record as a whole, that the proffered mark is protectable.
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`Accordingly, the analysis in this case proceeds as follows: first, the TTAB’s findings of
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`fact—the TTAB’s conclusion that the term PROBIOTIC is generic, and alternatively, lacks
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`secondary meaning—must be reviewed deferentially pursuant to the substantial evidence
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`standard. Next, the new evidence submitted by the parties must be reviewed de novo to
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`4 See Skippy, 345 F.Supp.2d at 586 (“Review of new evidence is de novo.”); Glendale Intern.
`Corp., 374 F.Supp.2d at 485 (stating that “decisions of the TTAB are reviewed de novo with
`respect to conclusions of law”).
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`determine what findings of fact are warranted by this new evidence. Finally, in the event that the
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`new evidence warrants findings that contradict, or are inconsistent with, the TTAB’s factual
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`findings supported by substantial evidence, the district court must then consider whether the
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`record as a whole establishes that plaintiff has borne his burden of proving by a preponderance of
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`the evidence that the term PROBIOTIC is a protectable mark.
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`IV.
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`The essential facts found by the TTAB are as follows:
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`1. The genus of the goods at issue in this case is fertilizer.
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`2. The relevant public, when it considers PROBIOTIC in connection to fertilizer, perceives
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`the term to be generic for fertilizer.
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`3. PROBIOTIC has not acquired distinctiveness.
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`A review of the record before the TTAB reveals that each of these findings of fact is amply
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`supported by substantial evidence.
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`First, the TTAB found that the genus of goods at issue is fertilizer. As the TTAB pointed
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`out, the parties do not dispute this fact. In re Milo Shammas, No. 77758863 at 4.
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`Second, the TTAB found that the relevant public, when it considers PROBIOTIC in
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`connection with fertilizer, readily understands the term to identify a type of fertilizer, and
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`therefore, that “the relevant consumers perceive the term as generic.” Id. at 13. In reaching this
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`conclusion, the TTAB relied on several sources. For example, the TTAB cited to the fact that at
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`least eight of Dr. Earth’s competitors use the term “probiotic” to describe an aspect or feature of
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`their fertilizer and soil products.5 Additionally, the TTAB cited to several articles on third-party
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`5 The third party competitors to which the TTAB cites are:
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`websites discussing techniques for improving soil through the use of probiotics in fertilizer."
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`Based on this evidence, the TTAB concluded that “competitors’ use of the term. . .as the
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`technology behind their products is persuasive evidence” of genericness, and that “the articles
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`about soil treatment identify probiotics as soil based organisms that are beneficial bacteria that
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`“Probiotic Fertilizer Supplements” on EarthBalance.com.
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`SURYA natural probiotic fertilizer products on GardenCenterMagazine.com.
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`0 GWhiz lawn treatment using “organic and probiotic fertilizer programs designed to
`reduce the build up of salts in the soil” on Marshall Pet Products’ website.
`0 Biota Max Soil Probiotic, “an all-natural soil probiotic,” on BiotaMax.com.
`0 A “patented fertilizer called PROBIOTIC lF/ l G” on AnConBio-Services.com.
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`“Soil Probiotics” on MaterialScienceOrganics.com, marketed as scientific blends of
`microbes and minerals formulated to restore soil fertility. . .our soil probiotics are of the
`highest quality for organic growing.
`SCD Probiotics Soil Enrichment on SCDProbiotics.com.
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`0
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`0 An advertisement on SoulSoup.com for its product for treating stressed tree roots:
`“SoulSoup Probiotic is a mildly acidic solution that is used to treat stressed tree roots.”
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`6 The articles to which the TTAB cites are:
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`0 The Probiotic.com webpage entitled “Soil Probiotic” stating that “soil probiotics are
`commonly known as soil-based organisms (SBO’s). SBOs are referred to a [sic]
`probiotics because they are beneficial bacteria in the soil
`0 An article on SeaChar.org stating that “[p]robiotics for soil is a method of using friendly
`bacteria on the soil to bring back the symbiotic relationships that create ‘breathing’ for
`the entire agroforest floor” and that probiotics are “[l]ive microorganisms which when
`administered in adequate amounts confer a health benefit on the host.” The article also
`discusses how “probiotics [work] with biochar to sequester carbon, hold good bacteria
`and create a colony of microorganisms that sustainably nurture the soil and the flora.”
`0 An article on LactoPAFI.com entitled “GregoGro Probiotic Fertilizer: Restoring the
`fertility of the soil” discussing the first probiotic manufacturer in the Philippines who
`manufactures a “probiotic natural organic fertilizer.”
`0 An article on Energy Farms Network website entitled “All Natural, Probiotic Fertilizer”
`discussing a liquid “probiotic organic fertilizer” used to fertilize plants at a South
`American farm.”
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`0 An article on PRWeb.com entitled “Go Green Without Going Broke with New
`Technology — Natural, Probiotic, & Enzymatic Fertilizelt Products from the
`FertilizerStore.com” discussing how “probiotics and natural enzymes...give soil a
`probiotic jump start” and stating that “[t]he technology and use of probiotic, natural, and
`enzymatic products is particularly applicable to the agriculture industry.”
`0 The InnovativeProbiotics.com website, which states that probiotics can be used in
`agriculture for improved crop performance, improved nutritional uptake, improved seed
`germination, accelerated composting, and odor control in livestock areas.
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`7
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`live in the soil...[demonstrate] that those writing about fertilizers perceive the term...as the
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`technology or method of using friendly bacteria on the soil as an ingredient of fertilizer.”-' Id.
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`Next, the TTAB cited to the dictionary definition of “probiotic” from MSN’s Encarta online
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`dictionary} which states that probiotic means “a substance containing beneficial
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`microorganisms: a substance containing live microorganisms in the digestive tract.” Further. the
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`TTAB also pointed to Wikipedia’s page on probiotics, which states that probiotics are “live
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`microorganisms thought to be beneficial to the host organism.”° Id Finally, the TTAB noted
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`that even the plaintiff, at one point, seemingly conceded the generic nature of PROBIOTIC when
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`he stated in his August 30, 2010 response to an Office Action that “some probiotic elements are
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`present in the fertilizer [although] the word probiotic is not specific to any ingredient.” Id. at 5.
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`In sum, the evidence supporting the TTAB’s finding of genericness is at least substantial, if not
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`indeed compelling.
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`But the TTAB did not end its analysis at this point, as it might have; '0 instead, the TTAB
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`went on to find that, even assuming, arguendo, that the term PROBIOTIC is descriptive, it has
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`not acquired distinctiveness given “the nature of the subject matter. ..and the widespread third-
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`7 As the leading commentator on trademark law notes, “generic use by competitors which has not
`been contested by plaintiff’ and “generic usage in the media such as in tradejoumals and
`newspapers” are two typical sources of evidence from which the TTAB may determine that a
`term is generic. McCarthy on Trademark, § 12:13.
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`8 Encarta is a digital multimedia encyclopedia published by Microsoft Corporation.
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`9 Because dictionary definitions usually “reflect the public’s perception of a word’s meaning”
`and the way in which it is used, “dictionary definitions are relevant and sometimes persuasive”
`in determining whether a term is generic. McCarthy on Trademark, § 12:13.
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`'0 The TTAB’s finding that the term was generic could have ended the inquiry because “a
`generic name of a product can never function as a trademark.” McCarthy on Trademark, § 12:1.
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`8
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`

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`party use of that tenn.”" In re Milo Shammas, No. 77758863 at 17.
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`In this regard, the TTAB
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`noted that the plaintiff “did not submit any sales figures...market share information, or
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`advertising expenditures,”'2 nor did plaintiff supplement the record with “media recognition
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`regarding applicant's product” and how the term PROBIOTIC points uniquely and exclusively
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`to applicant.” Id. at 18. Thus, the TTAB concluded that plaintiff failed to produce sufficient
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`evidence to show that the term PROBIOTIC had acquired distinctiveness. Id. Given the third-
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`party evidence the TTAB cited and the lack of evidence presented by plaintiff, it is clear that
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`substantial evidence firmly supports the TTAB’s conclusion that PROBIOTIC has not acquired
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`secondary meaning.
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`V.
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`This does not end the analysis. Because the plaintiff has chosen to sue in district court,
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`rather than appeal to the Federal Circuit, the parties have the opportunity to introduce new
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`evidence here not considered by the TTAB.” Both parties have done so, and it is now necessary
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`to detennine whether this new evidence is contrary to the findings of the TTAB on both the
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`generic nature of the term as well as on its lack of secondary meaning, and if so, whether the
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`" Evidence that third parties use the term in question “is evidence of a lack of secondary
`meaning because where purchasers are faced with more than one independent user of a term. ..
`distinctiveness in one seller is lacking.’’ McCarthy on Trademark, § 15:27.
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`'2 A company’s sales figures and size are relevant to secondary meaning because “the larger a
`company and the greater its sales, the greater the number of people who have been exposed to
`this symbol as a trademark, and the greater the number of people who may associate [the term or
`symbol]. . .with a company or source.” McCarthy on Trademark, § l5:49. But “raw sales figures
`need to be put into context to have any meaning.” Id.
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`'3 See, e.g., Harlequin Enterprises, Ltd. v. Gulf& Western Corp., 644 F.2d 946 (2d Cir. 1981)
`(finding that “extensive unsolicited media coverage” supported a finding of secondary meaning).
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`'4 See 35 use. § 145; Dickinson v. Zurko, 527 u.s. at 164 (stating that review by a district
`court “permits the disappointed applicant to present to the court evidence that the applicant did
`not present to the PTO”); Glendale 374 F.Supp. 2d at 484 n.7.
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`9
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`

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`record as a whole reflects that plaintiff has established, by a preponderance of the evidence, that
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`the term is entitled to trademark protection. The following principles provide the lens through
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`which the parties’ new evidence must be viewed and evaluated.
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`V].
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`With regard to the generic nature of a proposed mark, the Fourth Circuit has stated that a
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`generic name “merely employs the common name of a product or service or refers to the genus
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`of which the particular product is a species.” Retail Services. Inc. v. Freebies Publishing, 364
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`F.3d 535, 538 (4th Cir. 2004) (citing Two Pesos, Inc. v. Taco Cabana. Inc., 505 U.S. 763, 768
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`(1992). A generic name “is the name of a product or service itself—what it is.” McCarthy on
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`Trademark, § 12:1. In essence, this means that if the term PROBIOTIC answers the question
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`“what are you,” it is a generic term because it tells the buyer what the product is, not the source
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`of the product. Id. Conversely, if the term PROBIOTIC answers the question “who are you” or
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`“where do you come from,” it is not a generic tenn because it tells the buyer the source of the
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`product, not the nature of the product.
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`Ia’. Accordingly, a generic term, which merely identifies
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`the nature of the product, is the antithesis of a distinctive term and cannot be protected as a
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`trademark or registered as one. See Sara Lee Crop. v. Kayser-Roth Corp., 81 F.3d 455, 464 (4th
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`Cir. 1996); Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 194 (1985)).
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`As the Federal Circuit has stated,” the “critical issue in genericness cases is whether
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`members of the relevant public primarily use or understand the term sought to be protected to
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`refer to the genus of goods or services in question.” H. Marvin Ginn Corp. v. Int '1 Ass 'n ofFire
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`'5 No circuit has exclusive appellate jurisdiction over trademark matters. See CAE, Inc. v. Clean
`Air Engineering, Inc., 267 F.3d 660, 673 (7th Cir. 2001) (explaining that “the courts of appeal,
`other than the Federal Circuit, have appellate jurisdiction to review the district court’s decision”
`in a § l07l(b) action). Accordingly, this case is governed by Fourth Circuit law. But given that
`the Fourth and Federal Circuits do not differ on issues of genericness and secondary meaning,
`decisions from both circuits are appropriately cited here.
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`l0
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`

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`Chiefs‘, Inc., 782 F.2d 987, 989-90 (Fed. Cir. 1986). Furthemtore, as the Fourth Circuit has
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`noted, a term may be generic if the relevant public uses the term to identify the genus of goods or
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`services at issue, or if it names a “distinctive characteristic” of that genus of goods or services.
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`Sara Lee Corp., 81 F.3d at 464 n. 10. Thus, the term PROBIOTIC may be generic in connection
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`with fertilizers if the relevant public uses the term to refer to fertilizers generally, or if the term
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`does nothing more than identify a distinctive characteristic of fertilizers.
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`According to the Federal Circuit, a finding of genericness involves a two-step inquiry.
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`First, a court must identify the “genus of goods or services at issue.” H. Marvin Girm Corp. at
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`990. Second, a court must determine whether “the term sought to be registered...[is] understood
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`by the relevant public primarily to refer to that genus of goods or services.” Id. Here, the TTAB
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`established, and the parties do not dispute, that the “genus of goods at issue in this case is
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`adequately defined by the description of goods——fertilizer.” In re Milo Shammas, No. 77758863
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`at 4. Thus, the only disputed issue on the genericness issue is whether purchasers of fertilizers
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`understand the term PROBIOTIC as referring on one hand to fertilizer or a distinctive
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`characteristic of fertilizers, or on the other hand to plaintiff’ s product specifically.
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`Here, both plaintiff and defendant have offered new evidence on the issue of the relevant
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`public’s understanding of the term PROBIOTIC. Evidence relevant to such an inquiry includes
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`competitors’ use of the term, plaintiffs’ own use of the term, dictionary definitions, media usage,
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`testimony of persons in the trade, and surveys of the relevant consumers to show the state of
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`mind of such consumers when they consider the term. See McCarIhy on Trademark, § 12:13.
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`To prove that the term PROBIOTIC is not generic, plaintiff has mistakenly relied on evidence of
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`his product’s alleged popularity, including market share, sales figures, and advertising
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`expenditures. Evidence of this nature is not relevant to the genericness inquiry, but is instead
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`11
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`potentially relevant to the secondary meaning inquiry. To be sure, evidence of extensive
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`advertising expenditures and product popularity may be probative of secondary meaning as it is
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`evidence that the term may have gained recognition in the minds of the relevant consumer as to
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`the source of a product. But such evidence is not probative of a lack of genericness because it
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`does not show, by itself, that the putative mark does anything other than describe the genus of
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`the product or a distinctive characteristic of the product.
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`In any event, “generic marks cannot be
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`protected even upon a showing of secondary meaning.” Thompson Medical Co., Inc. v. Pfizer
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`lnc., 753 F.2d 208, fn.8 (2d Cir. 1985).
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`In other words, a term that is generic as to a product or
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`service is simply not eligible for trademark protection. Even if plaintiff could show “acquired
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`distinctiveness in a generic term through promotion and advertising, the generic term is still not
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`entitled to protection because to allow protection would deprive competing manufacturers...of
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`the right to call an article by its name.” Continental Airlines Inc. v. United Air Lines Inc., 53
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`U.S.P.Q.2d 1385 (T.T.A.B. 1999) (citing America Online Inc. v. AT&TCorp., 51 U.S.P.Q.2d
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`1865, 1873 (E.D. Va. 1999).
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`Thus, the plaintiff’ s evidence pertinent to genericness, in the end, consists only of the
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`testimony of three of Dr. Earth’s retailers stating that they are unaware of any other producers of
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`organic fertilizers who also use the term “probiotic” to describe their fertilizer and soil
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`products.“ Although testimony of persons in the trade, such as the testimony of retailers, can be
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`persuasive evidence showing genericness or a lack thereof, it is not persuasive here because
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`“affidavits from friendly employees and dealers are of little weight, as having the appearance of
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`”’ Plaintiff also relies on additional evidence identified for the first time in his memorandum in
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`support of summaryjudgment, filed more than five months after the deadline set in the March 5,
`2013 Discovery Order. Thus, this evidence is excluded as late under Fed R Civ.
`P. 37(b)(2)(A)(ii). Additionally, it is worth noting that much of this evidence focuses on the
`state of mind of the general public rather than the state of mind of the relevant consumer of
`fertilizer, and hence is not probative of either genericness or secondary meaning.
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`bias.” McCarthy on Trademark, § 12:13. Moreover, these affidavits are effectively refuted by
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`evidence of at least thirty-three producers using the term “probiotic” to describe their fertilizer
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`and soil products—evidence of eight competitors to which the TTAB cited in its decision, and
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`evidence of twenty-five more producers submitted by the defendant in this action. Evidence of
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`over thirty competitors using the term “probiotic” to describe their fertilizer and soil products
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`supports of a finding of genericness, and that finding is hardly challenged by retailers of fertilizer
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`products saying they are “unaware” of these producers. In other words, the TTAB relied on a
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`fact, whereas the affidavits proffered by plaintiff simply note that certain retailers are unaware of
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`that fact. Evidence of existence of a fact trumps evidence of unawareness of the fact.
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`Nor is this a complete summary of the evidence on the genericness issue, as defendant
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`has offered new, additional evidence on the issue as follows:
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`(1) dictionary definitions of the term “probiotic” as referring to “microorganisms and
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`substances that promote the grown of microorganisms;”
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`(2) two patents using the term probiotic to refer to fertilizers and soils;
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`(3) forty-four scholarly or news articles using the tenn probiotic to describe the addition
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`of microorganisms to soil and plants;
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`(4) twenty-five third—party websites advertising probiotic soil and fertilizer products; and
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`(5) several articles referring to Dr. Earth’s products and allegedly using the tenn
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`“probiotic” in a generic or descriptive sense.
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`The five additional sources submitted by defendant are strong evidence the tenn PROBIOTIC, in
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`the minds of purchasers of fertilizer, describes fertilizers or a distinctive characteristic of
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`fertilizers.
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`In summary, the record as a whole——the parties’ newly-submitted evidence and the
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`record before the TTAB—points convincingly to the conclusion that the term PROBIOTIC is
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`generic. Put another way, a review of the entire record discloses that plaintiff has failed to
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`adduce evidence that would permit a finder of fact to conclude, by a preponderance of the
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`evidence, that the term PROBIOTIC is something other than a generic term ineligible for
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`trademark protection.
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`VI.
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`A finding that a term is generic necessarily precludes a finding that the term is descriptive
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`with secondary meaning. As noted, if a tem is generic, it cannot have the type of consumer
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`recognition necessary for a finding of acquired secondary meaning. See McCarthy on
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`Trademark, § 12:46. Because secondary meaning denotes evidence of trademark usage by some
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`majority of relevant customers, “if the consuming public does perceive the symbol as designating
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`the producer rather than the product, then the generic label has been incorrectly applied.” Id.
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`(quoting Miller Brewing Co. v. FalstaffBrewing Corp., 503 F. Supp. 896, 907-908 (D.R.I.
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`1980)). Thus, assuming, arguendo, that the TTAB erred in finding PROBIOTIC generic in
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`connection with fertilizer, plaintiff has also submitted new evidence to support his assertion that
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`PROBIOTIC is descriptive with secondary meaning in connection with fertilizer and should thus
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`be given trademark protection.
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`Secondary meaning is “a new and additional meaning that attaches to a non-inherently
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`distinctive wor ,” such as a descriptive word.” McCarthy on Trademark, § 15:]. This new
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`meaning serves to identify the source of a product or service. Thus, a tenn with secondary
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`meaning is used by the relevant public “to identify and distinguish a single commercial source.”
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`'7 Descriptive marks constitute one category of terms requiring proof of secondary meaning for
`trademark protection. McCarthy on Trademark, § 1522.
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`Id. Therefore, descriptive marks “are accorded protection only if. ..in the minds of the public,
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`the primary significance of a product feature or term is to identify the source of the product
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`rather than the product itself.” Sara Lee Corp., 81 F.3d at 464 (internal citations