Have you heard of tagua? If you have not, you are in good company as most people have not encountered this unusual substance. Tagua is a nut like seed native to Ecuador which serves as an ivory substitute and is utilized by many artists around the world to create colorful and organic artwork.
One such artist is our client, a jewelry designer who markets her line under her own name. She incorporates many materials, including tagua, into her beautiful jewelry designs which she sells to boutiques all over Israel.
Although unfamiliar to most, tagua is an ordinary word in the English language, and even shows up in the Merriam Webster dictionary. As such, under principles of trademark law, tagua cannot be trademarked for its plain meaning of an ivory nut.
The purpose of a trademark is to identify a source. A word being used in accordance with its dictionary definition cannot function as source identifier and must remain in the public domain for all who use it.
One such example is the mark APPLE. Although APPLE has a definition in the English language, the technology giant Apple, Inc. is free to use and even register the mark for their particular line of goods since iPhones and MacBooks have nothing to do with the fruit apple. On the other hand, a greengrocer would not be able to successfully register the word APPLE in relation to fruit since it describes the goods sold by a greengrocer.
This is true of the mark TAGUA as well. Since TAGUA refers to an ivory nut used in jewelry, it cannot be a registered mark for jewelry. TAGUA can be registered for goods or services that have nothing to do with the ivory nut, much like APPLE for technology. TAGUA belongs in the public domain when used in association with the tagua seed.
For this reason, our client was surprised to receive a cease-and-desist letter claiming her use of the word TAGUA in her marketing material, infringed on a mark pending by another designer. The letter was issued on behalf of another jewelry designer who erroneously relied on people’s unfamiliarity with tagua and attempted to acquire TAGUA as her own trademark, preventing others from using it.
Our team responded to the cease-and-desist letter, detailing why no one designer could monopolize TAGUA for use of the material. We discovered that the other designer was in the process of applying to register TAGUA as a trademark.
The result of this claim yielded a win for both our client as well as all other artists using tagua in their designs. Not only was the cease-and-desist letter rescinded, but the Trademark Registrar refused to register TAGUA, leaving it free for public use by all who incorporate tagua into their jewelry!