U.S. trademark law forbids the registration of a trademark or service mark on the principal register if, “when used on or in connection with the goods of the applicant, the mark is merely descriptive . . . of them.” 15 U.S.C. s. 1052(e)(1). On August 14, 2012, the U.S. Court of Appeals for the Federal Circuit issued its opinion in the above referenced case. the opinion provides a good primer on the “merely descriptive” issue of trademark law. The Appeals Court, in a strongly worded opinion departed from a deferential standard of review generally accorded decisions by the Trademark Trial and Appeal Board (TTAB) concerning the validity of registered trademarks and reversed the TTAB’s finding that the two trademarks at issue were valid. The Duopross decision is instructive because it serves as a strong reminder that “merely descriptive” marks do not qualify for trademark protection under the law. Furthermore the decision provides guidance as to the factors which need to be considered when determining whether a mark is merely descriptive.
The case commenced before the TTAB when Inviro Medical Devices, Ltd. (Inviro) petitioned the TTAB to cancel a trademark registration owned by Duopross Meditech Corp. (Duopross). As often happens in such matters, the “defendant” party (Duopross) asserted counterclaims against the “petitioning” party (Inviro) for cancellation of a several of Inviro’s own registered marks. Inviro withdrew its petition, but Duopross maintained its counterclaims against Inviro.
The Inviro marks at issue included word marks containing only the word “SNAP”; a word mark containing the words “SNAP SIMPLY SAFER”, and a design mark with the word SNAP followed by a tilting exclamation point.” The TTAB cancelled the word marks containing only the word SNAP on the basis of “merely descriptive” grounds but did not cancel the remaining two marks because, according to the TTAB, the “extra words” and the explanation point resulted in marks which overcame the merely descriptive test.
All of Inviro’s marks were for goods involving a safety syringe with a snap-off needle. Safety syringes are in wide usage to protect medical personnel and researchers from inadvertently poking themselves with a syringe needle contaminated with an infectious disease agent such as Hepatitis B. Inviro and Duopross are competitors in the syringe safety field. Inviro’s syringes are packaged with instructions for disabling the needles, and the instructions contain the words “Snap off Plunger” as well as the design mark SNAP/tilted ! The package instructions also included photographs showing the “snapping” procedure.
In concluding that the remaining two marks were also merely descriptive and therefore invalid, the Appeals Court opined that the design SNAP mark, when viewed in the context of Inviro’s products (safety syringes) could be perceived as depicting the snapping of a syringe plunger. As such, the design SNAP mark is merely descriptive when considered in relation to the goods ([safety syntinges] for which it was registered. In reaching its conclusion, the Appeals Court faulted the TTAB for failing to consider whether the entire design mark as a whole, composed of the explanation point and the descriptive word SNAP, “conveyed a commercial impression that is merely descriptive to a consumer.”
The Appeals Court further emphasized that in making such a “mere descriptivness” determination, the question is whether someone who knows what the goods and services are (in this case medical personnel and researchers) will understand the mark to convey descriptive information about those goods/services. That is, the user of the particular goods and services for the mark at issue must be considered, and in this case the SNAP design mark was merely descriptive. As the Dupross Court stated, “[o]ne articulation of the [merely descriptive] rule is that a mark is merely descriptive if it consists of the qualities, ingredients, or characteristics of the goods or services related to the mark.” Dupross quoting In re Oppedahl & Larson, LLP, 373 F.3d 1171, 1173 (Fed. Circ. 2004). The inclusion of the tilted explanation point did not transform the SNAP word into a fanciful, valid mark as the TTAB had opined.
Regarding the SNAP SIMPLY SAFER mark, the Appeals Court opined that the additional words “Simply Safer” did nothing more than describe the associated goods’ most important feature, namely their safety. Indeed, the Appeals Court strongly criticized the TTAB’s misplaced reliance on a treatise to find that the words “simply safer” were nothing more than mere puffery which removed the SNAP SIMPLY SAFER mark from the “realm of mere descriptiveness.” As the Appeals Court stated, ‘ “ [m]arks that are merely laudatory and descriptive of the alleged merit of the product are . . .regarded as being descriptive . . . . Self-laudatory or puffing marks are regarded as a condensed form of describing the character of or quality of the goods.” ’ Duopross citing In re Boston Beer Co., 198 F.3d 1370, 1373 (Fed. Cir. 1999) in turn citing an earlier edition of the same treatise relied on by the TTAB.
Based on its analysis, the Appeals Court reversed the TTAB’s findings that the two marks were valid on mere descriptiveness grounds. It should be noted that Inviron apparently did not argue that the design SNAP mark and the SNAP SIMPLY SAFER MARKS had acquired sufficient distinctiveness to overcome the “merely descriptive” problem. Any such allegation of acquired distinctiveness would of course have had to have been supported by sufficient evidence.
Attorneys who practice trademark law are generally well aware of the requirement that a proposed mark must not be “merely descriptive” to be afforded registration, or in the event of a cancellation proceeding, to be upheld. For trademark attorneys, the Duopross Court’s opinion should not be surprising.
These days, trademark filing is considered a rather easy procedure which anybody can do thanks to the availability of electronic filing. Yet, as the Duopross decision shows, trademark validity issues can have some very unpleasant surprises for the unwary who are not well-versed in trademark law.
THE FOREGOING IS FOR INFORMATIONAL PURPOSES ONLY AND IS NOT LEGAL ADVICE. ANYONE CONTEMPLATING ACTIONS WHICH MAY HAVE LEGAL CONSEQUENCES SHOULD CONSIDER CONSULTING WITH AN ATTORNEY OF HIS OR HER CHOOSING.
