In re Bayer Aktiengesellschaft

• Decision Date: 24 May 2007
• Docket Number: No. 2006-1279,(Serial No. 78/212,751).,2006-1279
• Citation: 488 F.3d 960
• Parties: In re BAYER AKTIENGESELLSCHAFT.
• Court: U.S. Court of Appeals — Federal Circuit

488 F.3d 960

In re BAYER AKTIENGESELLSCHAFT.

No. 2006-1279

(Serial No. 78/212,751).

United States Court of Appeals, Federal Circuit.

May 24, 2007.

Michael L. Lovitz, Connolly Bove Lodge & Hutz LLP, of Wilmington, DE, argued for appellant. With him on the brief were Stanley C. Macel, III, and Jennifer Fraser.

Nancy C. Slutter, Associate Solicitor, United States Patent and Trademark Office, of Arlington, VA, argued for the Director of the United States Patent and Trademark Office. With her on the brief were John M. Whealan, Solicitor, and Robert J. McManus, Associate Solicitor.

Before NEWMAN, SCHALL, and MOORE, Circuit Judges.

Opinion for the court filed by Circuit Judge MOORE. Dissenting opinion filed by Circuit Judge NEWMAN.

MOORE, Circuit Judge.

Bayer Aktiengesellschaft (Bayer) appeals the Trademark Trial and Appeal Board (Board) ruling that the proposed mark ASPIRINA is merely descriptive for analgesic goods. In re Bayer Aktiengesellschaft, Serial No. 78/212,751 (TTAB Mar. 17, 2006) (Final Decision). Because the Board's ruling is supported by substantial evidence, we affirm.

BACKGROUND

On February 10, 2003, Bayer filed an intent-to-use application under 15 U.S.C. § 1051(b)(1) to register the mark ASPIRINA in connection with analgesic goods. The examining attorney initially refused registration on the grounds that the mark is merely descriptive, or alternatively, deceptively misdescriptive, of Bayer's goods. In support of this refusal to register the mark, the examining attorney found that ASPIRINA is the Spanish word for aspirin and provided an online dictionary definition that equates ASPIRINA with aspirin. The examining attorney also considered online evidence obtained from GOOGLE search engine results showing the descriptive nature of the term including a translation of Bayer's aspirina.com Spanish-language website. Bayer responded by asserting that ASPIRINA was a coined term with no known meaning in English or any other language. Bayer also asserted that the translation tool used by the examining attorney improperly translated ASPIRINA as aspirin without noting that Bayer was the origin of the goods and that Bayer was working with GOOGLE to resolve this translation "error." Bayer provided extensive evidence of foreign registration of ASPIRINA to the examining attorney to demonstrate that consumers, including Spanish-speaking consumers, understand ASPIRINA to indicate that Bayer is the source of particular analgesic products.

The examining attorney issued a final refusal to register ASPIRINA on the ground that the term is merely descriptive of analgesic products to the relevant consumers. The examining attorney cited numerous story excerpts from a NEXIS database search in which aspirin appeared as the definition of ASPIRINA and two online dictionaries which both equated the term ASPIRINA with aspirin in support of this rejection. The examining attorney also noted that "[t]he foreign equivalent of a merely descriptive English word is not registrable. It too is merely descriptive." Bayer then submitted an unsuccessful request for reconsideration with its own dictionary evidence and appealed to the Board.

After briefing and oral argument, the Board rendered a decision on December 1, 2005, affirming the examining attorney's refusal to register ASPIRINA for use in connection with analgesics. The Board considered the evidence of record in light of the history relating to the term aspirin, which has long since become a generic term in this country for the class of analgesic goods that consist of a white crystalline compound of acetyl salicylic acid.¹ Final Decision, slip. op. at 7-8 (citing Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y.1921)). The Board concluded that consumers will view ASPIRINA as merely a variation or misspelling of the generic term aspirin and determined that the terms are close in sound, appearance, and meaning. Id. at 8-9. The Board also found that ASPIRINA immediately conveys the impression that Bayer's analgesics are aspirin-based products. Id. at 9. The examining attorney asserted before the Board that the Spanish word ASPIRINA translates to aspirin in English. The Board declined to engage in a foreign equivalents analysis given its finding that the record demonstrates that ASPIRINA is a merely descriptive variation of aspirin. Id. at 8.

Bayer timely appealed this decision. This court has jurisdiction under 28 U.S.C. § 1295(a)(4)(B).

DISCUSSION

Section 2(e)(1) of the Lanham Act precludes registration of a mark that, "when applied to the goods of the applicant, is merely descriptive of them." 15 U.S.C. § 1052(e)(1) (2006). A term is merely descriptive if it immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used. In re Gyulay, 820 F.2d 1216, 1217 (Fed.Cir.1987). Descriptiveness of a mark is not considered in the abstract. Rather, it is considered in relation to the particular goods for which registration is sought, the context in which it is being used, and the possible significance that the term would have to the average purchaser of the goods because of the manner of its use or intended use. See In re Abcor Dev. Corp., 588 F.2d 811, 813-14 (CCPA 1978); see also In re MBNA Am. Bank N.A., 340 F.3d 1328, 1332 (Fed. Cir.2003). The examining attorney has the burden to establish that a mark is merely descriptive.

The determination that a mark is merely descriptive is a factual finding, and this court reviews the Board's fact finding for substantial evidence. In re MBNA, 340 F.3d at 1332; see In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173 (Fed.Cir. 2004) (stating that determining a mark's placement on the fanciful-suggestive-descriptive-generic continuum is a question of fact). Substantial evidence "means such relevant evidence as a reasonable mind might accept as adequate to support a conclusion." Consol. Edison Co. v. N.L.R.B., 305 U.S. 197, 229, 59 S.Ct. 206, 83 L.Ed. 126 (1938). The issue before us is whether, upon review of the record as a whole, substantial evidence supports the Board's finding that ASPIRINA is merely descriptive as applied to Bayer's analgesic products.

I.

Evidence that a term is merely descriptive to the relevant purchasing public "may be obtained from any competent source, such as dictionaries, newspapers, or surveys." In re Bed & Breakfast Registry, 791 F.2d 157, 160 (Fed.Cir.1986); see In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1344-45 (Fed.Cir.2001) (stating that competent sources to show the relevant purchasing public's understanding of a term or phrase include dictionary definitions, trade journals, newspapers, and other publications). In this case, the record contains a variety of evidence including:

• Four dictionary definitions of ASPIRINA or aspirin and four Spanish/English translations of ASPIRINA and aspirin;

• GOOGLE search results showing the top ten "hits" for ASPIRINA;

• Bayer's webpage aspirina.com in both Spanish and English (translation from Spanish to English performed using GOOGLE's free translation software);

• Numerous story excerpts identified in a search of the NEXIS database; and

• Copies of the registrations of ASPIRINA in numerous Spanish-speaking countries and an International Registration of ASPIRINA in an additional twenty countries.²

We consider each of these categories of evidence in turn after a comparison of the terms ASPIRINA and aspirin with respect to their appearance, sound, and meaning.

A. Appearance, Sound, and Meaning

Aspirin is generic for analgesics and has been generic for this class of pharmaceuticals over eighty years. See Bayer, 272 F. at 505. In determining whether ASPIRINA is sufficiently similar to aspirin to render it merely descriptive of analgesic goods, the relevant features of the mark are considered including appearance, sound, and meaning. The Board found that ASPIRINA and aspirin are sufficiently close in appearance, sound, and meaning that "[t]he mere addition of the letter `A' at the end of the generic term `aspirin' is simply insufficient to transform ASPIRINA into an inherently distinctive mark for analgesics." Final Decision, slip. op. at 8, 11. Substantial evidence supports this finding. The appearance and meaning of ASPIRINA and aspirin are similar. Adding an "a" to aspirin results in virtually no distinction with respect to the visual impressions of the terms. Importantly, both terms will be used in association with the same analgesic goods in this country.³ There are, however, some differences in sound. ASPIRINA contains four syllables and aspirin contains two or three syllables (depending on how it is pronounced). ASPIRINA also contains different syllables and the emphasis is on the third syllable for ASPIRINA, whereas the emphasis is on the first syllable for aspirin. When the mark ASPIRINA is considered as a whole, the significant similarities in appearance and meaning of ASPIRINA and aspirin demonstrate that the Board's finding that ASPIRINA is merely descriptive of analgesic goods is supported by substantial evidence.

Not only did the Board consider the similarities of ASPIRINA and aspirin with respect to appearance, sound, and meaning, it also considered competent sources in the record to determine the relevant purchasing public's understanding of ASPIRINA. We consider these sources below to determine whether the record as a whole provides substantial evidence to support the Board's finding that ASPIRINA is merely descriptive.

B. Dictionary Definitions and Translations

1. Evidence of Record

The evidence of record includes translation results from four online Spanish/English translation websites that demonstrate that ASPIRINA is the Spanish-language equivalent of aspirin. Translations were obtained from wordreference.com, yourdictionary.com, ultralingua.net, and altavista.com:

• Wordreference.com (Spanish to English): aspirina substantive fermenio aspirin

•...