A Mark Is Merely Descriptive If It Conveys Information Regarding a Function, Purpose, or Use of the Goods
August 14, 2012
Last Month at the Federal Circuit - September 2012
Judges: Prost, Moore, O'Malley (author)
[Appealed from: TTAB]
In DuoProSS Meditech Corp. v. Inviro Medical Devices, Ltd., No. 12-1050 (Fed. Cir. Aug. 14, 2012), the Federal Circuit reversed the TTAB’s decision dismissing DuoProSS Meditech Corporation’s (“DuoProSS”) counterclaims for cancellation of two trademark registrations owned by Inviro Medical Devices, Ltd. (“Inviro”).
DuoProSS and Inviro sell medical syringes and needles designed to prevent accidental needle sticks. Inviro’s products accomplish that objective by capturing a syringe’s needle in the syringe barrel after use and sealing off the barrel with the needle inside. To do so, a person using an Inviro syringe must pull the syringe plunger back, drawing the needle into the syringe barrel, and snap (or break) off the plunger, sealing the needle inside the barrel and making the syringe safe for handling and disposal.
Inviro owns the two trademark registrations-at-issue in this appeal. The first covers the “SNAP! design mark” shown below, consisting of the literal element SNAP and a broken exclamation point.
The SNAP! design mark is registered for use with medical, hypodermic, aspiration, and injection syringes. The second consists of the phrase SNAP SIMPLY SAFER in standard characters. The SNAP SIMPLY SAFER mark is registered for use with cannulae; medical, hypodermic, aspiration, and injection needles; and medical, hypodermic, aspiration, and injection syringes.
This case commenced when Inviro petitioned to cancel a trademark registration owned by DuoProSS for the design mark BAKSNAP, registered for use with a safety syringe for medical use. In response, DuoProSS asserted counterclaims for cancellation of a number of Inviro’s registrations, including the SNAP! design mark and the SNAP SIMPLY SAFER mark. The TTAB declined to cancel both marks. Moreover, while acknowledging that both marks contained the literal element SNAP, which was merely descriptive, the TTAB found that the broken exclamation point in the SNAP! design mark and the words SIMPLY SAFER in the SNAP SIMPLY SAFER mark rendered those marks more than descriptive. DuoProSS appealed.
On appeal, the Federal Circuit reversed the TTAB, holding that both the SNAP! design mark and the SNAP SIMPLY SAFER mark were merely descriptive. The Court explained that a mark was merely descriptive if it conveyed information regarding a function, purpose, or use of the goods. The Court noted that a suggestive mark required imagination, thought, and perception to reach a conclusion as to the nature of the goods, while a merely descriptive mark conveyed an immediate idea of the ingredients, qualities, or characteristics of the goods. The Court also explained that a determination of whether a mark was merely descriptive was a question of fact, and that the Court reviewed the TTAB’s factual findings for substantial evidence, a standard which demanded deference to the TTAB’s findings.
With respect to the SNAP! design mark, the Court concluded that even under the deferential standard of review, the TTAB erred in finding that the SNAP! design mark was not merely descriptive for two reasons. First, the Court held that the TTAB improperly focused on only one portion of the mark instead of considering the mark as a whole. Second, the Court held that the TTAB failed to make any findings to support its conclusion that the SNAP! design mark was not merely descriptive.
The Court found that the TTAB erred by focusing on only a portion of the mark instead of focusing on the mark as a whole when it improperly separated the SNAP! design mark into the literal element SNAP and the broken exclamation point. Specifically, the Court held that the TTAB erred when it analyzed the exclamation point in isolation and found that the exclamation point was “fanciful” and not merely descriptive. Additionally, the Court noted that the TTAB failed to explain why a mark composed of the admittedly descriptive word SNAP, which referred to a prominent function of the recited goods, and an exclamation point that depicted at least the breaking or snapping of “something” was not, when taken as a whole, merely descriptive of the snapping of syringes.
The Court also found that the TTAB did not cite any evidence showing that the SNAP! design mark required a consumer to employ imagination, thought, and perception to determine the nature of the goods with which the mark was used. To the contrary, the Court found that the factual findings made by the TTAB supported the conclusion that a consumer would perceive the SNAP! design mark as depicting the snapping of a syringe plunger, as opposed to merely the snapping of “something.” In reaching this conclusion, the Court relied on the instructions packaged with Inviro’s products, Inviro’s website, and testimony from Inviro’s founder, Dr. F. Ross Sharp. Specifically, the Court noted that the instructions packaged with Inviro’s products required a user to “Snap off plunger!” and were accompanied by the SNAP! design mark, placing the mark and the concept of snapping the syringe plunger in the same context. The Court also noted that Inviro’s website prominently showed a broken plunger and the word SNAP. In addition, the Court noted Dr. Sharp’s testimony stating that disabling of the syringe involved a number of steps, one of which was breaking the plunger. The Court therefore concluded that the TTAB’s factual findings supported the conclusion that the SNAP! design mark was merely descriptive.
With respect to the SNAP SIMPLY SAFER mark, the Court concluded that the TTAB made a combination of legal and factual errors in finding that this mark was not merely descriptive. The Court explained that to determine whether a composite mark such as the SNAP SIMPLY SAFER mark was merely descriptive, the TTAB was required to examine the meaning of each component individually and then determine whether the mark as a whole was merely descriptive. The Court found that despite noting that the word SNAP was descriptive, the TTAB failed to cite any evidence to support its conclusion that the combination of the terms SIMPLY and SAFER were not merely descriptive. Specifically, the Court noted that the record contained no evidence indicating that a consumer would focus on the alliteration formed by SNAP, SIMPLY, and SAFER, or that such an alliteration would convey any specific commercial impression to the consumer.
The Court held that, contrary to the TTAB’s opinion, the combination of the terms SIMPLY and SAFER merely imparted information about a significant characteristic of the goods. The Court noted that the TTAB’s own findings indicated that SIMPLY SAFER described the most important advantage of Inviro’s products: their safety. In reaching this conclusion, the Court relied on the testimony of Dr. Sharp, stating that the purpose of capturing the needle in the syringe barrel was to prevent a needle stick—in other words, to make the device safer. The Court further relied on Dr. Sharp’s testimony that he chose the word SNAP to indicate ease of use. The Court noted that Dr. Sharp did not assert that the idea of using SIMPLY SAFER was shaped by his desire to convey the products’ ease of use. Based on this evidence, the Court concluded that consumers would not recognize that Inviro’s devices were easy to use from the words “SIMPLY SAFER” but instead would only infer from these words that Inviro’s products were safe to use. The Court therefore concluded that the words SIMPLY SAFER were merely descriptive.
The Court also held that the TTAB erred as a matter of law in concluding that the SNAP SIMPLY SAFER mark was more than descriptive based on the TTAB’s opinion that SIMPLY SAFER was a laudatory phrase or puffery. The Court found that the TTAB erred when it concluded that puffery removed a mark from the realm of descriptiveness. The Court explained that, contrary to the TTAB’s conclusion, marks that are merely laudatory and descriptive of the alleged merit of a product are regarded as descriptive because they are simply a condensed form of describing the character or quality of the goods. The Court therefore held that adding SIMPLY SAFER to SNAP did nothing more than laud the safety of Inviro’s products, which was a descriptive use.
Thus, the Court reversed the TTAB’s determination and remanded with instructions to enter judgment in favor of DuoProSS and to order cancellation of the SNAP! and the SNAP SIMPLY SAFER marks.
Summary authored by Abhay A. Watwe, Ph.D., Esq.