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Federal Circuit Rejects TTAB Descriptiveness Analysis
Practical Law Legal Update 2-520-9140 (Approx. 4 pages)
Federal Circuit Rejects TTAB Descriptiveness Analysis
by PLC Intellectual Property & Technology
| Published on 15 Aug 2012 • USA (National/Federal) |
In DuoProSS Meditech Co. v. Inviro Medical Devices, Ltd., the US Court of Appeals for the Federal Circuit reversed a Trademark Trial and Appeal Board (TTAB) ruling on descriptiveness and remanded the matter to the TTAB with instructions to enter judgment cancelling two federal registrations for the marks at issue.
Key Litigated Issue
On August 14, 2012, the US Court of Appeals for the Federal Circuit issued an opinion in DuoProSS Meditech Co. v. Inviro Medical Devices, Ltd. The key litigated issue was whether the Trademark Trial and Appeal Board (TTAB) erred in holding that DuoProSS Meditech Co. (DuoProSS), a counterclaim petitioner for cancellation, failed to meet its burden of proof in proving that the registrant's marks were merely descriptive and not entitled to continuing registration under the Lanham Act.
Background
After Inviro Medical Devices, Ltd. (Inviro) filed a petition with the Trademark Trial and Appeal Board to cancel DuoProSS's trademark registration for the mark BAKSNAP for safety syringes for medical use, DuoProSS counterclaimed to cancel various Inviro registrations for SNAP formative marks for syringes, including registrations for the marks:
- SNAP (and design).
- SNAP SIMPLY SAFER.
The SNAP (and design) mark consisted of the word SNAP in stylized form together with a broken exclamation point design ("SNAP! design"). The SNAP SIMPLY SAFER mark was a word mark.
The TTAB sustained DuoProSS's counterclaims against Inviro's SNAP word mark registrations, finding the SNAP term merely descriptive for syringes because it described a significant feature or function of the syringes, namely that to safely disable the syringe, the plunger must be snapped off. The TTAB further found that Inviro did not show that SNAP had acquired distinctiveness.
However, the TTAB found that DuoProSS did not meet its burden of proving that Inviro's SNAP! design and SNAP SIMPLY SAFER marks were merely descriptive and refused to cancel Inviro's registrations for those marks. In finding the SNAP! design and SNAP SIMPLY SAFER marks more than merely descriptive, the TTAB found that:
- The broken exclamation point in the SNAP! design mark required a consumer to employ imagination, thought and perception to determine that the function of the goods included breaking a syringe plunger.
- The combination of the words SNAP SIMPLY SAFER resulted in a rhyming pattern creating a distinctive impression separable from the word "snap" and that the mark did not merely impart information about a significant characteristic of the goods.
- Because SIMPLY SAFER is a laudatory phrase or puffery, it rendered the mark more than descriptive.
Outcome
In its August 14, 2012 decision, the Federal Circuit reversed the TTAB, finding that:
- The TTAB's descriptiveness findings were not supported by substantial evidence.
- The TTAB erred when it dissected the SNAP! design mark into the separate word and design components.
- The TTAB legally erred in concluding that puffery could render the SNAP SIMPLY SAFER mark more than descriptive.
SNAP! Design Mark
The Federal Circuit found that the TTAB erred when it:
- Improperly dissected the SNAP! design mark into the word SNAP and the broken exclamation point rather than considering the commercial impression of the mark as a whole.
- Failed to cite any evidence in the record supporting its conclusion that the mark required a consumer to employ imagination to determine the nature of the goods associated with the mark.
The court noted that the evidentiary findings the TTAB made in fact strongly supported a finding that consumers would view the mark as merely descriptive. For example, the court pointed out that product instructions and other materials showed the SNAP! design mark in the context of descriptions and imagery of a snap off plunger.
SNAP SIMPLY SAFER Mark
In considering the SNAP SIMPLY SAFER mark, the Federal Circuit held that the TTAB erred in:
- Basing its findings on its own observations that the alliteration in SNAP SIMPLY SAFER created a commercial impression that is more than merely descriptive, rather than on record evidence about the commercial impression that the mark conveyed to consumers.
- Concluding that because "SIMPLY SAFER" was a laudatory phrase or puffery, it rendered the mark more than descriptive.
The court noted that, if anything, the evidence indicated that SIMPLY SAFER described the most important feature of the products: their safety.
Practical Implications
This case is notable for the Federal Circuit’s holding that the TTAB erred as a matter of law for concluding that because "SIMPLY SAFER" was a laudatory phrase or puffery, it rendered the SNAP SIMPLY SAFER mark more than descriptive. The Federal Circuit noted that, if anything, puffery was more likely to render a mark merely descriptive.
The case also shows that it is important for trademark owners to consider the potential vulnerabilities of their own registrations before bringing trademark opposition or cancellation proceedings. If the owner's registrations are vulnerable to cancellation on descriptiveness grounds (or other grounds) the other party to the proceeding can be expected to assert counterclaims for cancellation of those registrations.