MEMORANDUM OPINION

T.S. ELLIS, III, District Judge.

At issue on cross motions for summary judgment in this action seeking review of a decision from the Patent and Trademark Office's ("PTO") Trial and Appeal Board ("TTAB") is whether the TTAB erred in denying registration for the term "PROBIOTIC" on the grounds that the term is generic in connection with fertilizer, and alternatively, that the term at best is descriptive and has not acquired secondary meaning. For the reasons that follow, the TTAB did not err in denying registration to plaintiff. Accordingly, plaintiffs motion for summary judgment must be denied, and defendant's motion for summary judgment must be granted.

I.

Plaintiff Milo Shammas, the sole owner of Dr. Earth, Inc., filed a federal trademark application on June 12, 2009 for the term PROBIOTIC in connection with fertilizer. In an Office Action on September 14, 2009. the Trademark Examining Attorney of the PTO refused to register PROBIOTIC on two grounds, stating (1) that the term PROBIOTIC is generic in connection with fertilizer and (2) that, at most, PROBIOTIC is merely descriptive for fertilizer and has not acquired secondary meaning. Plaintiff filed a response on August 30, 2010, arguing that PROBIOTIC has acquired distinctiveness over the past 10 years. The PTO's Examining Attorney disagreed, and on February 24, 2011, issued a Final Office Action denying registration. Plaintiff then appealed this ruling to the TTAB, arguing that the PTO erred in finding the term generic, and alternatively, lacking in secondary meaning. Thereafter, on October 12, 2012, TTAB affirmed the Examining Attorney's refusal to register the term PROBIOTIC as a trademark. In re Milo Shammas, No. 77758863 at 13, 2012 WL 5493559 (T.T.A.B. Oct. 25, 2012).

In affirming the Examining Attorney's denial, the TTAB found that the term was merely generic, stating that "competitors' use of the term `Probiotics' as the technology behind their products is persuasive evidence that the relevant consumers perceive the term as generic ... and that competitors need to use the term." In re Milo Shammas, No. 77758863 at 13. In support of this finding, the TTAB noted that "articles about soil treatment identify probiotics as ... the technology or method of using friendly bacteria on the soil as an ingredient of fertilizer." Id. Thus, the TTAB concluded that "the relevant consumers are going to understand PROBIOTIC as the genus of goods, namely a fertilizer utilizing probiotic technology." Id. at 16.

Alternatively, the TTAB also found that the term PROBIOTIC, even if descriptive, has not acquired secondary meaning. In reaching this result, the TTAB noted that plaintiff "did not submit any sales figures, either in dollar or units, market share information, or advertising expenditures" to support any finding of distinctiveness. Id. at 18. The TTAB also noted that "the record is lacking in any media recognition regarding applicant's product and how the term PROBIOTIC points uniquely and exclusively to applicant." Id.

Thereafter, on December 19, 2012, Plaintiff filed this action seeking review of the TTAB's decision pursuant to 15 U.S.C. § 1071(b)(1), arguing that the TTAB erred in finding that the term PROBIOTIC is generic, and alternatively, that the term, even if descriptive, has not acquired secondary meaning. Plaintiff seeks (1) reversal of the TTAB's decision, (2) a declaration that the term PROBIOTIC is suggestive or, alternatively, that it merits registration as a distinctive trademark that has acquired secondary meaning, and (3) any other relief deemed proper.

The parties have filed cross motions for summary judgment that essentially present the following two questions: (1) whether the TTAB erred in finding that the term PROBIOTIC is generic for fertilizer, and (2) whether the TTAB erred in finding, alternatively, that the term PROBIOTIC, even if descriptive, has not acquired secondary meaning.

II.

The summary judgment standard is too well-settled to merit extended discussion, nor do the parties dispute this standard. Summary judgment should not be granted when the non-moving party has "set forth specific facts showing that there is a genuine issue for trial" through "affidavits or as otherwise provided." Fed. Rules Civ. P. 56. A genuine factual dispute exists "if the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).

III.

Plaintiff has filed this action under 15 U.S.C. § 1071, which allows trademark applicants dissatisfied with the TTAB's decision either to appeal to the Court of Appeals for the Federal Circuit or to file an action in district court. Where, as here, the plaintiff files an action in the district court, the district court "`sits in a dual capacity,' serving on one hand as the finder of fact with respect to new evidence presented by the parties, and on the other as an appellate reviewer of facts found by the TTAB." Glendale Intern. Corp. v. U.S. Patent & Trademark Office, 374 F.Supp.2d 479, 485 (E.D.Va.2005).

When acting as an appellate reviewer in an action under § 1071(b), a district court reviews the TTAB's findings of fact deferentially and must uphold those findings of fact if they are supported by "substantial evidence" under the Administrative Procedure Act ("APA").1 The TTAB's findings that a term is generic2 or lacks secondary meaning3 are both findings of fact to be reviewed for such substantial evidence.

"Substantial evidence," as stated by the Supreme Court, is "more than a mere scintilla of evidence" and requires "such relevant evidence as a reasonable mind would accept as adequate to support a conclusion." In re Pacer Technology, 338 F.3d 1348, 1349 (Fed.Cir.2003) (quoting Consol. Edison v. N.L.R.B., 305 U.S. 197, 229, 59 S.Ct. 206, 83 L.Ed. 126 (1938)). As the Federal Circuit has noted, "a review for substantial evidence `involves examination of the record as a whole, taking into account evidence that both justifies and detracts from an agency's decisions.'" On-Line Careline, 229 F.3d at 1086 (quoting Universal Camera Corp. v. N.L.R.B., 340 U.S. 474, 487-88, 71 S.Ct. 456, 95 L.Ed. 456 (1951)). A finding of fact by the TTAB will not be "upset unless it is not supported by substantial evidence." McCarthy on Trademark, § 21:21. Moreover, "the possibility of drawing two inconsistent conclusions from the evidence does not prevent an administrative agency's finding from being supported by substantial evidence." Id. (quoting Consolo v. Federal Maritime Comm'n, 383 U.S. 607, 620, 86 S.Ct. 1018, 16 L.Ed.2d 131 (1966)). As stated by the Federal Circuit, the TTAB's decision "may not be reversed ... even if [the reviewing court] would have viewed the facts differently if sitting as the tribunal of original jurisdiction," so long as substantial evidence supports the TTAB's ruling. If the evidence before the TTAB supports two conclusions, "the Board's decision to favor one over the other ... must be sustained ... as supported by substantial evidence." DuoProSS Meditech Corp. 695 F.3d at 1252.

By contrast, when a district court in a § 1071 action acts as a finder of fact with regard to new evidence submitted by the parties, the district court must examine the evidence de novo and make its own findings of fact as to the generic nature of the term and its lack of secondary meaning.4 Of course, in reviewing newly-submitted evidence, a district court must bear in mind that plaintiff has the "laboring oar to establish error by the [TTAB]" by a preponderance of the evidence, because plaintiff "does not start over to prosecute his application before the district court unfettered by what happened in the PTO." Fregeau v. Mossinghoff, 776 F.2d 1034, 1036-38 (Fed. Cir.1985). Thus, plaintiffs evidence must be sufficient to establish by a preponderance of the evidence, based on the record as a whole, that the proffered mark is protectable.

Accordingly, the analysis in this case proceeds as follows: first, the TTAB's findings of fact — the TTAB's conclusion that the term PROBIOTIC is generic, and alternatively, lacks secondary meaning — must be reviewed deferentially pursuant to the substantial evidence standard. Next, the new evidence submitted by the parties must be reviewed de novo to determine what findings of fact are warranted by this new evidence. Finally, in the event that the new evidence warrants findings that contradict, or are inconsistent with, the TTAB's factual findings supported by substantial evidence, the district court must then consider whether the record as a whole establishes that plaintiff has borne his burden of proving by a preponderance of the evidence that the term PROBIOTIC is a protectable mark.

IV.

The essential facts found by the TTAB are as follows:

A review of the record before the TTAB reveals that each of these findings of fact is amply supported by substantial evidence.

First, the TTAB found that the genus of goods at issue is fertilizer. As the TTAB pointed out, the parties do not dispute this fact. In re Milo Shammas, No. 77758863 at 4.

Second, the TTAB found that the relevant public, when it considers PROBIOTIC in connection with fertilizer, readily understands the term to identify a type of fertilizer, and therefore, that "the relevant consumers perceive the term as generic." Id. at 13. In reaching this conclusion, the TTAB relied on several sources. For example, the TTAB cited to the fact that at least eight of Dr. Earth's competitors use the term "probiotic" to describe an aspect or feature of their fertilizer and soil products.5 Additionally, the TTAB cited to several articles on third-party websites discussing techniques for improving soil through the use of probiotics in fertilizer.6 Based on this evidence, the TTAB concluded that "competitors' use of the term ... as the technology behind their products is persuasive evidence" of genericness, and that "the articles about soil treatment identify probiotics as soil based organisms that are beneficial bacteria that live in the soil... [demonstrate] that those writing about fertilizers perceive the term ... as the technology or method of using friendly bacteria on the soil as an ingredient of fertilizer."7 Id. Next, the TTAB cited to the dictionary definition of "probiotic" from MSN's Encarta online dictionary,8 which states that probiotic means "a substance containing beneficial microorganisms: a substance containing live microorganisms in the digestive tract." Further, the TTAB also pointed to Wikipedia's page on probiotics, which states that probiotics are "live microorganisms thought to be beneficial to the host organism."9 Id. Finally, the TTAB noted that even the plaintiff, at one point, seemingly conceded the generic nature of PROBIOTIC when he stated in his August 30, 2010 response to an Office Action that "some probiotic elements are present in the fertilizer [although] the word probiotic is not specific to any ingredient." Id. at 5. In sum, the evidence supporting the TTAB's finding of genericness is at least substantial, if not indeed compelling.

But the TTAB did not end its analysis at this point, as it might have10 instead, the TTAB went on to find that, even assuming, arguendo, that the term PROBIOTIC is descriptive, it has not acquired distinctiveness given "the nature of the subject matter ... and the widespread third-party use of that term."11 In re Milo Shammas, No. 77758863 at 17. In this regard, the TTAB noted that the plaintiff "did not submit any sales figures... market share information, or advertising expenditures,"12 nor did plaintiff supplement the record with "media recognition regarding applicant's product13 and how the term PROBIOTIC points uniquely and exclusively to applicant." Id. at 18. Thus, the TTAB concluded that plaintiff failed to produce sufficient evidence to show that the term PROBIOTIC had acquired distinctiveness. Id. Given the third-party evidence the TTAB cited and the lack of evidence presented by plaintiff, it is clear that substantial evidence firmly supports the TTAB's conclusion that PROBIOTIC has not acquired secondary meaning.

V.

This does not end the analysis. Because the plaintiff has chosen to sue in district court, rather than appeal to the Federal Circuit, the parties have the opportunity to introduce new evidence here not considered by the TTAB.14 Both parties have done so, and it is now necessary to determine whether this new evidence is contrary to the findings of the TTAB on both the generic nature of the term as well as on its lack of secondary meaning, and if so, whether the record as a whole reflects that plaintiff has established, by a preponderance of the evidence, that the term is entitled to trademark protection. The following principles provide the lens through which the parties' new evidence must be viewed and evaluated.

VI.

With regard to the generic nature of a proposed mark, the Fourth Circuit has stated that a generic name "merely employs the common name of a product or service or refers to the genus of which the particular product is a species." Retail Services, Inc. v. Freebies Publishing, 364 F.3d 535, 538 (4th Cir.2004) (citing Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992). A generic name "is the name of a product or service itself — what it is." McCarthy on Trademark, § 12:1. In essence, this means that if the term PROBIOTIC answers the question "what are you," it is a generic term because it tells the buyer what the product is, not the source of the product. Id. Conversely, if the term PROBIOTIC answers the question "who are you" or "where do you come from," it is not a generic term because it tells the buyer the source of the product, not the nature of the product. Id. Accordingly, a generic term, which merely identifies the nature of the product, is the antithesis of a distinctive term and cannot be protected as a trademark or registered as one. See Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455, 464 (4th Cir.1996); Park `N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 194, 105 S.Ct. 658, 83 L.Ed.2d 582 (1985)).

As the Federal Circuit has stated,15 the "critical issue in genericness cases is whether members of the relevant public primarily use or understand the term sought to be protected to refer to the genus of goods or services in question." H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 989-90 (Fed.Cir.1986). Furthermore, as the Fourth Circuit has noted, a term may be generic if the relevant public uses the term to identify the genus of goods or services at issue, or if it names a "distinctive characteristic" of that genus of goods or services. Sara Lee Corp., 81 F.3d at 464 n. 10. Thus, the term PROBIOTIC may be generic in connection with fertilizers if the relevant public uses the term to refer to fertilizers generally, or if the term does nothing more than identify a distinctive characteristic of fertilizers.

According to the Federal Circuit, a finding of genericness involves a two-step inquiry. First, a court must identify the "genus of goods or services at issue." H. Marvin Ginn Corp. at 990. Second, a court must determine whether "the term sought to be registered ... [is] understood by the relevant public primarily to refer to that genus of goods or services." Id. Here, the TTAB established, and the parties do not dispute, that the "genus of goods at issue in this case is adequately defined by the description of goods — fertilizer." In re Milo Shammas, No. 77758863 at 4. Thus, the only disputed issue on the genericness issue is whether purchasers of fertilizers understand the term PROBIOTIC as referring on one hand to fertilizer or a distinctive characteristic of fertilizers, or on the other hand to plaintiffs product specifically.

Here, both plaintiff and defendant have offered new evidence on the issue of the relevant public's understanding of the term PROBIOTIC. Evidence relevant to such an inquiry includes competitors' use of the term, plaintiffs' own use of the term, dictionary definitions, media usage, testimony of persons in the trade, and surveys of the relevant consumers to show the state of mind of such consumers when they consider the term. See McCarthy on Trademark, § 12:13. To prove that the term PROBIOTIC is not generic, plaintiff has mistakenly relied on evidence of his product's alleged popularity, including market share, sales figures, and advertising expenditures. Evidence of this nature is not relevant to the genericness inquiry, but is instead potentially relevant to the secondary meaning inquiry. To be sure, evidence of extensive advertising expenditures and product popularity may be probative of secondary meaning as it is evidence that the term may have gained recognition in the minds of the relevant consumer as to the source of a product. But such evidence is not probative of a lack of genericness because it does not show, by itself, that the putative mark does anything other than describe the genus of the product or a distinctive characteristic of the product. In any event, "generic marks cannot be protected even upon a showing of secondary meaning." Thompson Medical Co., Inc. v. Pfizer Inc., 753 F.2d 208, fn. 8 (2d Cir.1985). In other words, a term that is generic as to a product or service is simply not eligible for trademark protection. Even if plaintiff could show "acquired distinctiveness in a generic term through promotion and advertising, the generic term is still not entitled to protection because to allow protection would deprive competing manufacturers... of the right to call an article by its name." Continental Air lines, Inc. v. United Air Lines, Inc., 53 U.S.P.Q.2d 1385 (T.T.A.B.1999) (citing America Online, Inc. v. AT & T Corp., 64 F.Supp.2d 549, 561, 51 U.S.P.Q.2d 1865, 1873 (E.D.Va.1999)).

Thus, the plaintiffs evidence pertinent to genericness, in the end, consists only of the testimony of three of Dr. Earth's retailers stating that they are unaware of any other producers of organic fertilizers who also use the term "probiotic" to describe their fertilizer and soil products.16 Although testimony of persons in the trade, such as the testimony of retailers, can be persuasive evidence showing genericness or a lack thereof, it is not persuasive here because "affidavits from friendly employees and dealers are of little weight, as having the appearance of bias." McCarthy on Trademark, § 12:13. Moreover, these affidavits are effectively refuted by evidence of at least thirty-three producers using the term "probiotic" to describe their fertilizer and soil products — evidence of eight competitors to which the TTAB cited in its decision, and evidence of twenty-five more producers submitted by the defendant in this action. Evidence of over thirty competitors using the term "probiotic" to describe their fertilizer and soil products supports of a finding of genericness, and that finding is hardly challenged by retailers of fertilizer products saying they are "unaware" of these producers. In other words, the TTAB relied on a fact, whereas the affidavits proffered by plaintiff simply note that certain retailers are unaware of that fact. Evidence of existence of a fact trumps evidence of unawareness of the fact.

Nor is this a complete summary of the evidence on the genericness issue, as defendant has offered new, additional evidence on the issue as follows:

The five additional sources submitted by defendant are strong evidence the term PROBIOTIC, in the minds of purchasers of fertilizer, describes fertilizers or a distinctive characteristic of fertilizers.

In summary, the record as a whole — the parties' newly-submitted evidence and the record before the TTAB — points convincingly to the conclusion that the term PROBIOTIC is generic. Put another way, a review of the entire record discloses that plaintiff has failed to adduce evidence that would permit a finder of fact to conclude, by a preponderance of the evidence, that the term PROBIOTIC is something other than a generic term ineligible for trademark protection.

VII.

A finding that a term is generic necessarily precludes a finding that the term is descriptive with secondary meaning. As noted, if a term is generic, it cannot have the type of consumer recognition necessary for a finding of acquired secondary meaning. See McCarthy on Trademark, § 12:46. Because secondary meaning denotes evidence of trademark usage by some majority of relevant customers, "if the consuming public does perceive the symbol as designating the producer rather than the product, then the generic label has been incorrectly applied." Id. (quoting Miller Brewing Co. v. Falstaff Brewing Corp., 503 F.Supp. 896, 907-908 (D.R.I.1980)). Thus, assuming, arguendo, that the TTAB erred in finding PROBIOTIC generic in connection with fertilizer, plaintiff has also submitted new evidence to support his assertion that PROBIOTIC is descriptive with secondary meaning in connection with fertilizer and should thus be given trademark protection.

Secondary meaning is "a new and additional meaning that attaches to a non-inherently distinctive word," such as a descriptive word.17 McCarthy on Trademark, § 15:1. This new meaning serves to identify the source of a product or service. Thus, a term with secondary meaning is used by the relevant public "to identify and distinguish a single commercial source." Id. Therefore, descriptive marks "are accorded protection only if ... in the minds of the public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself." Sara Lee Corp., 81 F.3d at 464 (internal citations omitted).18 In essence, secondary meaning describes "the psychological effect of trade symbols upon a buyer's mind" created by "a mental association ... between the alleged mark and a single source of the product." McCarthy on Trademark, § 15:3. If a term has not acquired secondary meaning, "the purchaser will not make an association with a particular producer and thus will not be misled by an identical or similar mark." Perini Corp. v. Perini Const., Inc., 915 F.2d 121, 125 (4th Cir. 1990).

Importantly, proof of secondary meaning "entails vigorous evidentiary requirements." Id. Evidence for such a claim may include direct evidence, such as customer surveys, or circumstantial evidence, such as input of the seller, evidence of sales volume, length of time used, and quantity and quality of the advertising and promotion. McCarthy on Trademarks, § 15:1. The most direct, and likely most expensive, means of showing secondary meaning is a rigorously conducted customer survey that is fully consistent with statistical sampling methodology.19 To assist district courts in evaluating whether secondary meaning exists, the Fourth Circuit has identified a non-exhaustive list of matters relevant to proof of secondary meaning: (1) advertising expenditures, (2) consumer studies linking the mark to a source, (3) sales success, (4) unsolicited media coverage of the product, (5) attempts to plagiarize the mark, and (6) the length and exclusivity of the mark's use. Id. And, of course, the burden of proof to show secondary meaning is on the party seeking legal protection for the mark. Application of Hollywood Brands, Inc., 41 C.C.P.A. 1001, 214 F.2d 139 (4th Cir.1954).

An analysis of the record evidence on secondary meaning properly begins by recalling that the TTAB, in concluding that the term PROBIOTIC has not acquired distinctiveness, noted that "applicant did not submit any sales figures ... market share information, or advertising expenditures," nor did applicant submit "any media recognition regarding applicant's product and how the term PROBIOTIC points uniquely and exclusively to applicant." In re Milo Shammas, No. 77758863 at 18. Now, plaintiff has attempted to remedy that lack of evidence before the TTAB by relying on the following newly submitted material:

To be sure, evidence of sales volume, market share, and advertising expenditures may, if reliably and contextually established, have some probative value to show, circumstantially, the existence of secondary meaning. Yet, plaintiffs submissions on these topics fall far short of doing so; they fail to meet the "vigorous evidentiary requirements" necessary to show that there is a link in the minds of relevant consumers between the term PROBIOTIC and a single source of organic fertilizer containing microbes and mycorrhizae. Perini Corp., 915 F.2d at 125. This is especially apparent when the administrative record and the parties' submissions are taken into account.

To begin with, plaintiffs 74 million dollars in total sales of fertilizer products over the past twelve years — roughly six million dollars per year — has little, if any, probative value on the issue of secondary meaning, as there is no clear information concerning whether these sales constitute a significant share of the national market for organic fertilizers containing microbes and mycorrhizae. Nor is this deficiency remedied by plaintiffs claim that his sales of Dr. Earth fertilizer, along with the sales of six other sellers of organic fertilizers (who do not use the term probiotic) account for between 80 and 90 percent of the market for organic fertilizers containing microbes and mycorrhizae. There are two problems with such evidence. First, it is unclear whether plaintiffs sales are a substantial or insubstantial part of the 80 to 90 percent of the claimed market share. If plaintiffs market share is relatively small, then his evidence of sales, revenue, and market share would have little, if any, probative value on the existence of secondary meaning. The second problem is that plaintiffs statement flies in the face of record evidence of as many as thirty-two producers of organic fertilizer using the term "probiotic" to describe their product — eight producers relied on by the TTAB, and twenty-five more producers submitted by defendant in this action.

Similarly, plaintiffs advertising expenditures do little to advance the cause of establishing secondary meaning. As Professor McCarthy has noted, "mere expenditure of money [on advertising] is not, in itself, determinative of the actual result in buyers' minds."20 Plaintiff must show that the advertising "had the desired effect of creating a secondary meaning" because, although "advertising is a relevant factor in determining whether a mark has acquired a secondary meaning, it is the effect of such advertising that is important, not its extent." Worsham Sprinkler Co., Inc. v. Wes Worsham Fire Protection, LLC, 419 F.Supp.2d 861, 870 (E.D.Va.2006). In other words, the advertising "must cause the public to equate the mark with the source of the product." Id. Plaintiff has not presented evidence that his advertising has, in actuality, created a link in the buyer's mind between a single source of the product — plaintiffs fertilizers — and the term PROBIOTIC.

Finally, plaintiff has submitted affidavits from three retailers of Dr. Earth products, all of whom state that they are unaware of any other sellers in the organic fertilizer market using the term "probiotic" for their fertilizer products. As noted previously, these affidavits are unpersuasive because they merely attest to and establish the retailer's unawareness of a fact, and therefore fall short of contradicting the evidence establishing the fact. Moreover, as Professor McCarthy has noted, conclusory "opinion evidence" from friendly retailers is often biased and "does not necessarily reflect the view of the consumer class." McCarthy on Trademark, § 15:39.21

VIII.

In sum, plaintiffs submissions on product sales, market share, advertising expenditures, and seller affidavits are collectively insufficient to satisfy plaintiffs burden to show the existence of secondary meaning. Plaintiffs submissions also fail to cast doubt both (i) on the TTAB's finding — supported by substantial evidence on the administrative record — that PROBIOTIC is generic, and (ii) on the result reached here that the record as a whole shows convincingly that the term is generic. Because defendant is entitled to judgment as a matter of law with respect to the genericness issue, it is unnecessary22 and indeed inappropriate to decide whether defendant is entitled to summary judgment on the secondary meaning issue, as secondary meaning has no application to generic terms.

An appropriate Order will issue.