Judges: Newman (dissenting), Schall, Moore (author)

[Appealed from the TTAB]

In In re Bayer Aktiengesellschaft, No. 06-1279 (Fed. Cir. May 24, 2007), the Federal Circuit affirmed the TTAB’s ruling that the proposed mark ASPIRINA was merely descriptive for analgesic goods and affirmed the denial of Bayer Aktiengesellschaft’s (“Bayer”) intent-to-use application to register the mark. On February 10, 2003, Bayer filed an intent-to-use application for the mark ASPIRINA in connection with analgesic goods. The application was initially refused by the examining attorney on the ground that the mark was merely descriptive. Bayer provided evidence to the contrary, yet the examiner was not persuaded and issued a final refusal. Bayer appealed the decision to the TTAB to no avail.

The TTAB affirmed the examining attorney’s refusal to register the ASPIRINA mark, concluding that consumers will view ASPIRINA as merely a variation or misspelling of the generic term “aspirin” and also that the terms are close in sound, appearance, and meaning. Bayer appealed.

The issues on appeal were whether the differences in ASPIRINA and “aspirin” are sufficient to transform ASPIRINA into an inherently distinctive mark capable of registration and whether the evidence on record supports the finding that the relevant purchasing public views ASPIRINA as a trademark or a merely descriptive term.

The Federal Circuit first examined the TTAB’s finding that the ASPIRINA mark and “aspirin” are sufficiently close in sound, meaning, and appearance to render ASPIRINA merely descriptive of analgesics. Noting the similarities in spelling and meaning, the Court explained that adding an “a” to “aspirin” results in almost no distinction with respect to the visual and commercial impressions of the terms. The Court noted that the marks will be used in the same channel of trade and in association with the same analgesic goods. Unmoved by the fact that the words contain different syllables and emphasis, the Court held that when viewed as a whole, the significant similarities in appearance and meaning support the finding that ASPIRINA is merely descriptive of analgesics.

Next, the Federal Circuit reviewed the evidence of record regarding the relevant purchasing public’s understanding of ASPIRINA and whether it shows that it is viewed as a trademark or that it means “aspirin.” Such evidence may include dictionary definitions, trade journals, newspapers, surveys, and other publications. The evidence in this particular case included dictionary definitions and translations, Google search results, NEXIS story excerpts, and foreign registrations. Although the Court considered the weight, reliability, and admissibility of each type of evidence, the Court’s underlying conclusion was that there is conflicting evidence showing that consumers have been exposed to ASPIRINA as a registered trademark and a generic or descriptive term. In view of the deferential substantial evidence standard of review, the Court held that there was “sufficient evidence as a reasonable mind might accept as adequate to support the [TTAB]’s finding that ASPIRINA is merely descriptive.” Slip op. at 15.

In view of the determination that ASPIRINA is merely descriptive and the conclusion that there was substantial evidence to support the determination that ASPIRINA and “aspirin” are similar in sound, appearance, and meaning, the Federal Circuit affirmed the TTAB’s decision to deny Bayer’s intent-to-use application for ASPIRINA.

Judge Newman dissented, stating that the proper criterion for determining trademark status is whether the mark identifies the source and the quality of the goods, rather than the majority’s focus on the similarity to a generic word. Judge Newman explained that the majority erred in depriving Bayer of the opportunity to obtain trademark protection for a well-known foreign mark when the legal requirements of registration in the United States had been met.