DuoProSS Meditech Corp. v. Inviro Medical Devices, Ltd., No 2012-1050, 2012 WL 3292920 (Fed. Cir. Aug. 14, 2012)

In DuoProSS Meditech Corp. v. Inviro Medical Devices, Ltd., No 2012-1050, 2012 WL 3292920 (Fed. Cir. Aug. 14, 2012), the U.S. Court of Appeals for the Federal Circuit ruled that the Trademark Trial and Appeal Board erred in failing to cancel two trademark registrations for medical syringes designed to be broken so they could not be reused. DuoProSS Meditech Corporation (“DuoProSS”) sought to cancel Inviro Medical Devices’ (“Inviro”) registration of various “Snap” marks for use in connection with medical devices, specifically syringes. Both DuoProSS and Inviro produce syringes designed to prevent accidental needle sticks. Inviro owns several registrations, including SNAP SIMPLY SAFER in standard characters, several SNAP word marks, and a SNAP! design mark.

DuoProSS argued that the marks were merely descriptive of the goods recited in the registrations. A merely descriptive mark may not be registered without a showing of secondary meaning. A mark is “merely descriptive” if it “consists merely of words descriptive of the qualities, ingredients or characteristics of the goods or services related to the mark.” With respect to the SNAP word marks, the Trademark Trial and Appeal Board agreed with DuoProSS, finding that the term “snap” merely describes a significant feature or function of Inviro’s syringes, “namely that to safely disable them, one must snap off the plunger.” The Board ordered cancellation of those registrations. The Board, however, declined to cancel the SNAP! design mark and the SNAP SIMPLY SAFER word mark, finding that the broken exclamation point in the SNAP! design mark and the phrase SIMPLY SAFER in the SNAP SIMPLY SAFER word mark rendered those marks more than merely descriptive.

The court found that the Board erred and the two marks should be cancelled. With respect to the SNAP! design mark, the court found the Board improperly separated the SNAP! design mark into two elements – the SNAP word and the broken exclamation point. This “dissection” of the mark into isolated elements was improper, and the Board should have considered the commercial impression of the mark as a whole to determine if the mark is merely descriptive. Moreover, the court found that the Board did not consider the goods for which the mark was registered. In connection with the goods themselves, a consumer would perceive the design mark as describing the snapping of a syringe. As such, the SNAP! mark was merely descriptive of a feature of the goods.

Similarly, the court found the SNAP SIMPLY SAFER mark was also merely descriptive. Beginning with the Board’s own finding that “snap” alone was descriptive, the court found that adding “simply safer” to the mark did not make the mark more than descriptive. That phrase “describe[d] the most important advantage of Inviro’s products: their safety.” Further, the court found that the Board erred in concluding that “because SIMPLY SAFER is a laudatory phrase or puffery, the phrase renders the mark more than descriptive.” In fact, the fact that the phrase was puffery is more likely to render the mark merely descriptive, not less so. Therefore, the court reversed the TTAB’s decision and remanded with instructions to enter judgment in favor of DuoProSS and to order cancellation.