A divided panel of the U.S. Court of Appeals for the Federal Circuit upheld the Trademark Trial and Appeal Board’s (TTAB’s) mere descriptiveness refusal of the mark "ASPIRINA" for analgesics. In re Bayer Aktiengesellschaft, Case No. 06-1279 (Fed. Cir., May 24, 2007)(Moore, J.; Newman, J. dissenting).
Relying on online dictionaries, NEXIS articles, a Google search report and an English translation of Bayer’s Spanish website, the TTAB argued that it properly refused to register on the ground that the mark is merely descriptive of analgesics.
In response, Bayer asserted that the ASPIRINA mark is entitled to U.S. registration because Bayer owns trademark registrations for ASPIRINA in 34 countries, that ASPIRINA is a coined term having no specific meaning in any language, that the term is used only as a trademark for its goods and that ASPIRINA has no other source of origin. Bayer also argued that because of the differences in spelling, pronunciation and meaning, consumers will not view ASPIRINA as merely descriptive.
Applying the substantial evidence standard of review, a panel majority found that despite recognized conflicts in the evidentiary record, the Court deferred to the TTAB’s conclusions that foreign trademark registrations alone are not relevant to U.S. consumer perceptions and that the term ASPIRINA is sufficiently similar to the Spanish word for "aspirin." The Court therefore affirmed the TTAB’s Section 2(e)(1) refusal to register on the ground that the mark is merely descriptive of analgesics.
In dissent, Judge Newman asserted that the issue is not one of extra-territoriality of unregistered marks, but one of the appropriateness of registration of a well-known foreign mark when the legal requirements for U.S. registration have been met. Judge Newman asserted that "the evidence and the great weight of usage show ASPIRINA as a trademark." Further, commercial policy and international treaty obligations do not favor depriving trademark owners of valuable commercial rights.
Practice Note: Bayer may try to seek registration under Section 2(f) of 15 U.S.C. 1052, which permits registration of marks that, despite not qualifying for registration in light of Section 2(e), have nevertheless "become distinctive of the applicant’s goods in commerce." Thus, Section 2(f) is not a provision on which registration can be refused, but is a provision under which an applicant has a chance to prove that he is entitled to a federal trademark registration.
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