Summer 2012 Issue
Federal Circuit Cases
DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd.,
2012 WL 3292920 (Fed. Cir. Aug. 14. 2012)
DuoProSS Meditech Corp. (“DuoProSS”) and Inviro Medical Devices, Ltd. (“Inviro”) are both manufacturers of medical syringes designed to prevent accidental needle sticks, and compete in the medical-device industry. Inviro picked a fight when it petitioned to cancel a trademark registration owned by DuoProSS for BAKSNAP & Design for safety syringes for medical use. DuoProSS answered with its own retaliatory cancellation counterclaims against registrations for SNAP! & Design, SNAP SIMPLY SAFER, and three SNAP standard-character mark registrations, all for use in connection with medical syringes. While Inviro withdrew its petition to cancel DuoProSS’s BAKSNAP & Design registration, DuoProSS maintained its counterclaims against Inviro’s SNAP marks. The TTAB sustained DuoProSS’s counterclaims as to the SNAP standard-character marks, noting that the term SNAP was merely descriptive because, in order to safely disable the needles, one had to “snap” off the plunger. When the TTAB declined to cancel SNAP! & Design as well as SNAP SIMPLY SAFER, DuoProSS filed an appeal. The Federal Circuit found that substantial evidence failed to support the TTAB’s conclusion that SNAP! & Design and SNAP SIMPLY SAFER were not merely descriptive, and remanded the case with instructions to cancel both of Inviro’s remaining registrations.
Focusing first on the proper classification of the SNAP! & Design mark, the Federal Circuit concluded that the TTAB improperly dissected the mark into the literal element SNAP and the broken exclamation point instead of considering the commercial impression of the mark as a whole. By dissecting the mark SNAP from its accompanying exclamation-point design, the TTAB reached the erroneous conclusion that Inviro’s exclamation point was “fanciful” for medical syringes. In addition, the TTAB failed to consider the overall context in which consumers would encounter Inviro’s SNAP! & Design mark, such as the fact that Inviro’s syringes were each packaged with instructions to “Snap off the plunger!”, and the disabling instructions found on Inviro’s website that prominently pictured a broken plunger and the word “snap.” With respect to the SNAP SIMPLY SAFER mark, the Federal Circuit concluded that the additional terms “simply” and “safer” emphasized “the most important advantage of Inviro’s products: their safety,” and because these terms were merely laudatory or puffery, their inclusion in the overall mark could not save the mark from being merely descriptive.
This decision reminds trademark owners and practitioners to be cognizant of the commercial context in which trademarks appear, as the Federal Circuit has established a clear precedent for how product packaging and marketing may inform the issue of registrability.