Duopross Meditech Corp. v. Inviro Med. Devices, Ltd.

• Decision Date: 14 August 2012
• Docket Number: No. 2012–1050.,(Cancellation No. 92046702).,2012–1050.
• Citation: 695 F.3d 1247
• Parties: DUOPROSS MEDITECH CORPORATION, Appellant, v. INVIRO MEDICAL DEVICES, LTD., Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

695 F.3d 1247

DUOPROSS MEDITECH CORPORATION, Appellant,

v.INVIRO MEDICAL DEVICES, LTD., Appellee.

No. 2012–1050.

(Cancellation No. 92046702).

United States Court of Appeals, Federal Circuit.

Aug. 14, 2012.

Thomas J. Moore, Bacon & Thomas, PLLC, of Alexandria, Virginia, argued for appellant. With him on the brief was Thomas Lee.

Before PROST, MOORE, and O'MALLEY, Circuit Judges.

O'MALLEY, Circuit Judge.

The Trademark Trial and Appeal Board dismissed DuoProSS Meditech Corporation's counterclaims for cancellation of two trademark registrations owned by Inviro Medical Devices, Ltd., after the Board concluded that DuoProSS failed to prove that the marks are merely descriptive when used with the goods recited in Inviro's registrations. Inviro Med. Devices Ltd. v. DuoProSS Meditech Corp., No. 92046702, Dkt. 52 (TTAB Apr. 5, 2011) (“Board op.”). We reverse the Board's decision because the Board failed to consider one of the marks as a whole, unduly focusing on only one portion of it; the Board failed to make adequate findings to support its conclusion that DuoProSS failed to prove descriptiveness; and the Board erroneously concluded that puffing could render the marks more than descriptive.

I

DuoProSS and Inviro are competitors who sell medical syringes and needles. Their products are designed to prevent accidental needle sticks. Inviro's products accomplish that objective by capturing a syringe's needle in the syringe barrel after use and sealing off the barrel with the needle inside. To accomplish that result, a person using an Inviro syringe (1) rotates the syringe plunger clockwise; (2) pulls the syringe plunger back, thereby drawing the needle into the syringe barrel; and (3) snaps off the plunger, thereby sealing the needle inside the barrel and making the syringe safe for handling and disposal. The following instructions included with Inviro's products demonstrate how the products work:

Image 1 (4.91" X 3.63") Available for Offline Print Inviro owns the two trademark registrations at issue in this appeal. The first, U.S. Registration No. 2,944,686, covers the design shown below (the “SNAP! design mark”):

Image 2 (1.51" X .49") Available for Offline Print

The SNAP! design mark is registered for use with “medical devices, namely, medical, hypodermic, aspiration and injection syringes” in class 10. The second registration at issue is U.S. Registration No. 3,073,371, for SNAP SIMPLY SAFER in standard characters (the “SNAP SIMPLY SAFER mark”), for use with “medical devices, namely, cannulae; medical, hypodermic, aspiration and injection needles; medical, hypodermic, aspiration and injection syringes” in class 10.

This case commenced when Inviro petitioned to cancel a trademark registration owned by DuoProSS for the design mark BAKSNAP, for use with a “safety syringe for medical use” in class 10. DuoProSS asserted counterclaims for cancellation of a number of Inviro's registrations, including the SNAP! design mark and SNAP SIMPLY SAFER mark at issue in this appeal. Inviro withdrew its petition to cancel DuoProSS's BAKSNAP design mark. DuoProSS, however, maintained its counterclaims against Inviro. In addition to the SNAP! design mark and the SNAP SIMPLY SAFER mark, DuoProSS petitioned to cancel the following of Inviro's registrations:

U.S. Registration No. 2,970,944, for the mark SNAP in typed format, for use with “medical devices, namely, cannulae; medical, hypodermic, aspiration and injection needles” in class 10;

U.S. Registration No. 2,778,604, for the mark SNAP in typed format, for use with “medical devices, namely, medical, hypodermic, aspiration and injection syringes” in class 10; and U.S. Registration No. 2,967,982, for the mark SNAP in typed format, for use with “medical devices, namely, medical, hypodermic, aspiration and injection syringes” in class 10.

The Board sustained DuoProSS's counterclaims as to the three SNAP marks in typed format. First, the Board noted that the '982 registration is a duplicate of the '604 registration, and that Inviro agreed to voluntarily surrender the ' 982 registration. The Board ordered cancellation of the '982 registration on that ground.

With respect to the remaining SNAP marks in typed format—the '604 and '944 registrations—the Board considered whether the term SNAP is merely descriptive when used with the goods recited in those registrations. The Board initially determined that the term is merely descriptive because it “describes a significant feature or function of [Inviro's] cannulae, syringes and needles, namely that to safely disable them, one must snap off the plunger.” Board op. at 23. The Board then considered Inviro's argument that the term SNAP is a double entendre and refers not only to the snapping of a syringe plunger, but also to the products' ease of use: that the products are a “snap to use.” Id. The Board found insufficient evidence to demonstrate that, “upon seeing the mark SNAP itself, [purchasers of Inviro's products would] readily understand this connotation.” Id. at 26. The Board further found Inviro's evidence of acquired distinctiveness insufficient. Id. at 26–27. For these reasons, the Board concluded that the '604 and '944 registrations for the SNAP mark in typed format were merely descriptive and ordered cancellation of those registrations.¹Id. at 28.

The Board, however, declined to cancel the SNAP! design mark and the SNAP SIMPLY SAFER word mark. Id. at 28–30. While both of those marks contained the literal element SNAP, which the Board acknowledged was merely descriptive, the Board found that the broken exclamation point in the SNAP! design mark and the words SIMPLY SAFER in the SNAP SIMPLY SAFER mark rendered those marks more than descriptive. Id. at 28–31.

DuoProSS appeals the Board's ruling with respect to the latter two marks. We address each in turn.

II

Substantial evidence fails to support the Board's finding that DuoProSS failed to meet its burden to prove that the SNAP! design mark is merely descriptive. The evidence in the record supports no conclusion other than that the mark is merely descriptive.

A mark may not be registered on the principal register if, “when used on or in connection with the goods of the applicant,” the mark is “merely descriptive ... of them.” 15 U.S.C. § 1052(e)(1). 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.” In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173 (Fed.Cir.2004) (quoting Estate of P.D. Beckwith, Inc. v. Comm'r of Patents, 252 U.S. 538, 543, 40 S.Ct. 414, 64 L.Ed. 705 (1920)). One articulation of that rule, of particular significance to the SNAP marks here, is that a mark is merely descriptive if it “conveys information regarding a function, or purpose, or use of the goods.” In re Abcor Dev. Corp., 588 F.2d 811, 813 (CCPA 1978) (citations omitted). The line between a mark that is merely descriptive and may not be registered absent secondarymeaning, and one that is suggestive and may be registered, is that a suggestive mark “requires imagination, thought and perception to reach a conclusion as to the nature of the goods,” while a merely descriptive mark “forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods.” Id. at 814 (quoting Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 11 (2d Cir.1976)).

The determination of whether a mark is merely descriptive is a question of fact. In re Dial–A–Mattress Operating Corp., 240 F.3d 1341, 1344 (Fed.Cir.2001) (“Placement of a term on the fanciful-suggestive-descriptive-generic continuum is a question of fact.”) As the party challenging the registrations' validity, DuoProSS bears the burden of proving that the mark is merely descriptive by a preponderance of the evidence. Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 1356 (Fed.Cir.2009). The Board concluded that DuoProSS failed to meet its burden.

We review the Board's factual findings supporting its conclusion for substantial evidence. In re Pacer Tech., 338 F.3d 1348, 1349 (Fed.Cir.2003) (citations omitted). The substantial evidence standard demands deference to the Board. Substantial evidence is defined simply as “more than a mere scintilla” and “such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.” Id. (citation and internal quotation marks omitted). Thus, we may not reverse the Board's decision for lack of substantial evidence—even if we would have viewed the facts differently if sitting as the tribunal of original jurisdiction—so long as competent evidence in the record supports the Board's ruling. “Where two different conclusions may be warranted based on the evidence of record, the Board's decision to favor one conclusion over the other is the type of decision that must be sustained by this court as supported by substantial evidence.” In re Bayer Aktiengesellschaft, 488 F.3d 960, 970 (Fed.Cir.2007).

Even under this deferential standard of review, we conclude that the Board erred when it found that DuoProSS failed to prove that the SNAP! design mark is merely descriptive. This is so for two reasons. First, the Board improperly focused on only one portion of the mark when it considered the mark's commercial impression. Second, the Board failed to make any findings to support its conclusion that DuoProSS failed to prove that the mark is merely descriptive. The findings that the Board did make, in fact, support the contrary conclusion.

A

The Board improperly separated the SNAP! design mark ( ) into the literal element SNAP and the broken exclamation point. When determining whether a mark is merely descriptive, the Board must consider the commercial impression of a mark as a whole. Dial–A–Mattress, 240 F.3d at 1345–46. Because a mark must be considered as a whole, the Board may not “dissect” the mark into isolated elements. Id. (citing Beckwith, 252 U.S....