CAFC Reverses TTAB, Finds Two "SNAP' Marks Merely Descriptive of Syringes
In this partial appeal from the TTAB's decision of April 5, 2011 [TTABlogged here], the CAFC reversed the Board's ruling that Appellant DuoProSS had failed to prove mere descriptiveness with regard to Inviro's registered marks SNAP & Design (shown immediately below) and SNAP SIMPLY SAFER for syringes. The appellate court concluded that the Board failed to consider the design mark as a whole, instead focusing only on "one portion of it," failed to make adequate findings of fact, and erroneously found that "puffing could render the marks more than descriptive." DuoProSS Meditech Corporation v. Inviro Medical Devices Ltd., 103 U.S.P.Q.2d 1753 (Fed. Cir. 2012).
In the Board proceeding, DuoProSS had counterclaimed to cancel five registrations asserted by Inviro. The Board cancelled three registrations for the word mark SNAP for needles and syringes, one on the ground that it was a duplicate registration, and the other two on the ground of mere descriptiveness: SNAP describes "a significant feature of function of [Inviro's] cannulae, syringes and needles, namely that to safely disable them, one must snap off the plunger." Inviro did not appeal from those rulings.
The Board denied the counterclaims of DuoProSS for cancellation of the two registrations here at issue. It found that the broken exclamation point in the SNAP & Design mark, and the words SIMPLY SAFER in the other mark avoided the mere descriptiveness bar to registration.
The SNAP! Design Mark: The CAFC observed that it may reverse a Board decision on mere descriptiveness, which is a question of fact, only if the decision is not supported by substantial evidence. "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." It found that the evidence here "supports no conclusion other than that the mark is merely descriptive."
The Board improperly separated the SNAP & Design mark into two elements, the word SNAP and the broken exclamation point. Looking at the design portion alone, the Board had found it to be merely suggestive of "the breaking of 'something,' not necessarily the breaking of a syringe." But it should have considered the entire mark rather than the exclamation point in isolation.
The Board's opinion lacks any indicia, however, that it actually considered the mark as a whole. The Board failed to explain why a mark composed of the admittedly descriptive word SNAP, which refers to a prominent function of the recited goods, and an exclamation point that depicts at least the breaking or snapping of "something" is not, when taken as a whole, merely descriptive of the snapping syringes.
The Board also failed to cite any evidence that the mark required "imagination, thought and perception" in order to determine the nature of the goods. The findings made by the Board contradicted that conclusion. They indicate that the mark, when viewed in the context of Inviro's products, "does nothing other than depict the snapping of the syringe plunger: the prominent functional feature of Inviro's goods." The instructions packaged with the goods (see below) include an image (incorporated in the Board decision) place the mark and the snapping of the syringe plunger "in the same context." The only reasonable inference is that a consumer would perceive the mark, in the context of the goods, as depicting the snapping of a plunger.
SNAP SIMPLY SAFER: The Board did not cite any evidence to support its conclusion that DuoProSS failed to prove the mere descriptiveness of this mark. It simply noted the "rhyming pattern" that results in a distinctive commercial impression, but there was no evidence that a consumer would focus on the alliteration. If anything, SIMPLY SAFER "describes the most important advantage of Inviro's products: their safety."
Moreover, the Board erred as a matter of law when it concluded that the phrase is more than descriptive because SIMPLY SAFER is a laudatory phrase or puffery. The court, however, ruled that "adding SIMPLY SAFER to SNAP does nothing more than laud the safety of Inviro's products, which ... is a merely descriptive use."
In sum, the Board's conclusion that DuoProSS failed to prove the mere descriptiveness of these two marks is not supported by substantial evidence, and therefore the CAFC reversed the decision and remanded the case to the Board for entry of an order cancelling the two registrations at issue.
TTABlog comment: I think the word SNAP should be disclaimed in the design mark, but I also think that the broken exclamation point is like a "double entendre," serving both as punctuation and as an stylized illustration of the product. So I think the CAFC was wrong, but also that the Board was wrong in not requiring the disclaimer.
Text Copyright John L. Welch 2012.