Summary
The Federal Circuit reviewed a Trademark Trial and Appeal Board decision concerning whether the SNAP! design mark and SNAP SIMPLY SAFER mark were merely descriptive of medical syringes and related devices. The court held that the Board improperly dissected the SNAP! mark, failed to support its findings with substantial evidence, and erroneously treated puffery as making the composite mark more than descriptive. The court reversed and remanded with instructions to cancel the two registrations.
Topics
Practice areas
Questions Presented
- Whether the SNAP! design mark is merely descriptive of Inviro's medical syringes and related goods.
- Whether the SNAP SIMPLY SAFER mark is merely descriptive of Inviro's medical syringes, needles, and cannulae.
- Whether the Board properly evaluated the marks as a whole and supported its descriptiveness findings with substantial evidence.
- Whether puffery or laudatory language can render an otherwise descriptive trademark more than descriptive for purposes of trademark registerability.
Holdings
- The SNAP! design mark is merely descriptive of Inviro's recited goods because, viewed as a whole and in the context of those goods, it conveys the snapping of a syringe plunger. The Board's contrary finding was unsupported by substantial evidence.
- The SNAP SIMPLY SAFER mark is merely descriptive of Inviro's recited goods, and the Board's contrary finding was not supported by substantial evidence.
- Puffery or laudatory language does not render a mark more than descriptive for purposes of trademark registerability; self-laudatory language may itself describe the character or quality of the goods.
Key quotations
“When determining whether a mark is merely descriptive, the Board must consider the commercial impression of a mark as a whole.” (at 8)
“The question is not whether someone presented with only the mark could guess what the goods or services are. Rather, the question is whether someone who knows what the goods and services are will understand the mark to convey information about them.” (at 11)
“Marks that are merely laudatory and descriptive of the alleged merit of a product are . . . regarded as being descriptive. . . . Self-laudatory or puffing marks are regarded as a condensed form of describing the character or quality of the goods.” (at 15-16)
Factual background
DuoProSS and Inviro compete in selling medical syringes and needles designed to prevent accidental needle sticks. Inviro's products capture a used needle inside the syringe barrel by rotating and retracting the plunger and then snapping off the plunger to seal the needle inside. Inviro owned registrations for the SNAP! design mark and the SNAP SIMPLY SAFER mark covering medical devices, and DuoProSS sought cancellation on the ground that the marks were merely descriptive.
Procedural history
Inviro initially petitioned to cancel DuoProSS's BAKSNAP design-mark registration, and DuoProSS asserted counterclaims seeking cancellation of several Inviro registrations. Inviro withdrew its cancellation petition, while DuoProSS maintained its counterclaims. The Board canceled three SNAP registrations in typed format but declined to cancel the SNAP! design mark and SNAP SIMPLY SAFER mark. DuoProSS appealed to the Federal Circuit, which reversed and remanded.
Remand instructions
Reverse the Board's decision and enter judgment in favor of DuoProSS ordering cancellation of U.S. Registration Nos. 2,944,686 and 3,073,371.