The Federal Circuit recently took a stab at the Trademark Trial and Appeal Board’s (TTAB) decision about SNAP trademarks for syringes, and told the TTAB that it had misdiagnosed the descriptiveness of the marks. Interestingly, the court didn’t just send the case back to the TTAB—it told the TTAB to cancel the marks.
DuoProSS Meditech Corp. v. Inviro Medical Devices, Ltd., No. 2012-1050 (Fed. Cir. Aug. 14, 2012) (Judges Prost, Moore, and O’Malley)
Inviro used to own 5 trademark registrations for its SNAP syringes, but now it owns none. Inviro’s syringes are designed to prevent accidental needle sticks. The user rotates the syringe plunger to pull the needle back inside and then snaps off the plunger. Inviro’s 5 registrations included 3 SNAP word marks for syringes and needles, the tagline SNAP SIMPLY SAFER, and this word-plus-design mark:
After Inviro petitioned to cancel DuoProSS’s BAKSNAP mark (also for syringes), DuoProSS counterclaimed for cancellation of all 5 of Inviro’s marks, arguing that they were merely descriptive. The TTAB concluded that SNAP was descriptive and canceled 3 word marks (one of which was an erroneously issued duplicate). But the TTAB let Inviro keep the other 2, the tagline and the word-plus-design mark. The TTAB commented that the “broken” exclamation point at the end of the design mark and the alliterative aspect of the tagline allowed those 2 marks to pass the descriptiveness threshold. The TTAB did require that Inviro disclaim the term SNAP in the SNAP SIMPLY SAFER mark (that is, Inviro couldn’t claim trademark coverage for this term outside of its use in this mark).
A Snappy Retort
The Federal Circuit shot the case back to the TTAB with orders to cancel Inviro’s last 2 marks. This is somewhat unusual, since descriptiveness is a question of fact, and the Federal Circuit reviews fact questions under a fairly high “substantial evidence” standard. That means that even if the Federal Circuit would have reached a different conclusion from that of the TTAB, the court will affirm the TTAB’s conclusion as long as the TTAB’s conclusion is supported by substantial evidence.
Here, the court said the TTAB didn’t have enough evidence to justify its decision to uphold Inviro’s 2 marks. The court said that the TTAB had improperly focused on only one portion of each mark, rather than considering the mark as a whole.
Concerning the design mark, the court rejected the TTAB’s finding that the broken exclamation point was “fanciful” and entitled to trademark protection because it signified only the breaking of “something,” not necessarily a syringe. However, the Federal Circuit said the TTAB didn’t explain why the character of the exclamation mark alone would render the entire word-plus-design mark, which prominently included the descriptive term SNAP, nondescriptive. The court called the TTAB’s reasoning on this point “circular”—the TTAB, it said, dissected the mark, determined that the broken exclamation point was fanciful, and then applied that characterization to the mark as a whole. That approach is a no-no.
Plus, the court said that the TTAB didn’t point to any evidence to support its determination that a consumer would think the punctuation mark referred only to breaking “something,” not a syringe specifically. Since the mark is shown on the instruction sheet explaining how to use the syringe, the court said the mark actually invites the syringe-snapping connection in a consumer’s mind.
Mere Puffing Means Mere Trademark Descriptiveness
As for the SNAP SIMPLY SAFER tagline, the Federal Circuit found the same flaw in the TTAB’s analysis as with the word-plus-design mark—the TTAB, it said, had incorrectly snapped the phrase into individual sections in its analysis, determined that the combination of SIMPLY and SAFER wasn’t descriptive, and then concluded that the tagline as a whole wasn’t descriptive. The TTAB focused on the phrase’s alliteration and meter to justify its conclusion. The Federal Circuit said, though, that the TTAB didn’t point to any evidence to show that a consumer would be mindful of the poetic value of the phrase.
Also, the Federal Circuit said the TTAB made a legal error when it concluded that “puffery”—the advertising tool to state that your product is better than the others—can move a mark past descriptiveness. The TTAB apparently relied on the premiere trademark treatise, McCarthy on Trademarks, to support this proposition. The problem, according to the Federal Circuit, is that McCarthy’s statements on “puffing” were connected with Lanham Act § 43(a), which is the statute section concerning unfair competition claims for unregistered marks. This case, deals with descriptiveness and registrability. In this context, the court said: “[McCarthy] and our precedent clearly indicate that puffing, if anything is more likely to render a mark merely descriptive, not less so[,]” because it’s a “condensed form” of describing qualities or characteristics of goods or services. Since SIMPLY SAFER just highlights the safety features of Inviro’s syringes, the Federal Circuit said the words didn’t give the tagline the shot in the arm it needed to move beyond the descriptiveness realm.
Personally, even if the TTAB focused too little on the SNAP portion of the marks, I think the Federal Circuit might have focused too much on it, particularly for the word-plus-design mark. Would a disclaimer of SNAP be enough to overcome descriptiveness? John Welch of the TTABlog commented that the TTAB should have required a disclaimer but the broken exclamation point is enough of a double entendre to move the mark into the suggestive category. I would agree.
What do you think? Should the Federal Circuit have let this one go?