Monday, April 11, 2011

WYHP? Petition to Cancel Backfires When TTAB Finds "SNAP" Merely Descriptive of Syringes

Ouch! Inviro Medical's petition for cancellation of a registration for the mark BAKSNAP & Design (shown below) for "safety syringe for medical use" snapped back and knocked out three of Inviro's pleaded registrations. Respondent DuoProSS counterclaimed for cancellation of five registrations for marks comprising or containing the word SNAP for syringes: three for the word SNAP in standard character form, one for SNAP! & Design (shown to the right), and one for the slogan SNAP SIMPLY SAFER. Inviro withdrew its petition for cancellation, but the Board proceeded to rule on DuoProSS's counterclaims. All of which leads to this question: Would You Have Petitioned for cancellation in the first place? Inviro Medical Devices Ltd. v. DuoProSS Meditech Corporation, Cancellation No. 92046702 (April 5, 2011) [not precedential]. [Reconsideration denied here].

SNAP: One registration for SNAP was an erroneously-issued duplicate of another, so the Board cancelled it for that reason. As to the remaining two SNAP registrations, the Board found the word "snap" to be merely descriptive of "a significant feature" of the goods, "namely that to disable them, one must snap off the plunger." Petitioner Inviro maintained that "snap" has a second meaning: that the syringes are easy to use: i.e., a "snap to use." The Board rejected this double entendre argument because both meanings are not "readily apparent from the mark itself."

If the alleged second meaning of the mark is apparent to purchasers only after they view the mark in the context of advertising materials or other matter separate from the mark itself, then the mark is not a double entendre. See In re the Place, Inc., 6 USPQ2d 1467, 1470 (TTAB 2005).

Here there was no evidence that purchasers would, "upon seeing the mark itself, understand this meaning."

Petitioner further contended that its mark SNAP has acquired distinctiveness, but it provided no evidence of advertising expenditures, or surveys or affidavits from third parties. Although its sales were in the millions of units annually, that figure was not put in context, such as by market share. So it failed to prove acquired distinctiveness as of the registration date, and these two registrations for SNAP were cancelled under Section 2(e)(1).

SNAP! & Design As to this mark, the Board rejected Respondent DuoProSS's assertion that the mark, as a whole, is descriptive. The design element "is not a visual representation" of Petitioner's product, or a significant characteristic thereof; it "only suggests the breaking of something." Moreover, the Board refused to require a disclaimer of the word "snap," finding this word-and-design mark to be unitary.

SNAP SIMPLY SAFER: Finally, the Board found that Respondent DuoProSS failed to show that this slogan is, as a whole, merely descriptive of the goods. SNAP is descriptive, SAFER may be suggestive, and SIMPLY does not merely describe an attribute of Petitioner's goods. The phrase "does not merely impart information about a significant characteristic of the goods." Moreover, SIMPLY SAFER is mere puffery." However, the Board did require a disclaimer of the word SAFE, since it is "not lost in the term as a whole," and it provisionally sustained the petition for cancellation due to lack of the disclaimer. [Got all that? ed.]

In sum, the Board sustained four counterclaims, but as to the slogan mark, the Board allowed Petitioner thirty days to submit a disclaimer of SNAP, in which event the decision as to this registration will be set aside.

TTABlog comment: I don't quite understand why SNAP must be disclaimed in one mark (the slogan) but not the other (the word-and-design). Does it make any practical difference anyway?

Text Copyright John L. Welch.


At 1:07 PM, Anonymous Anonymous said...

The disclaimer with the design would be improper because the word and design are physcially fused (unitary mark). Now, I also think the disclaimer is improper in the slogan:

TMEP 1213.05(b) Slogans

A registrable slogan is considered unitary and should not be broken up for purposes of requiring a disclaimer.

I think the alliteration effects a certain, e.g., lilting cadence yielding a unitary whole....

At 5:31 PM, Blogger John L. Welch said...

I disagree that the word and design are physically fused. The word SNAP is uninterrupted.

At 7:34 PM, Anonymous Martin said...

I think I can see why the Board found the SNAP and design mark unitary, in that it looks like "SNAP!" But as to why the slogan could be broken up, I think the Board made a mistake there. If they believed the mark to be a slogan, then (as Anonymous stated) the mark would create a unitary impression of a slogan and does not consist of separable elements. Therefore, no disclaimer should be required. And while the descriptive nature of "SAFER" is not lost in the slogan, that doesn't mean it should be disclaimed. Slogans often combine descriptive and arbitray matter, but as a whole they are more than the sum of their parts.

At 8:47 PM, Anonymous Mark Borghese said...

This may be a stretch, but while the word SNAP is uninterrupted, the entire word mark portion of the mark is SNAP! Maybe that was the logic behind the "physically fused" determination.

At 10:07 PM, Anonymous Anonymous said...

Anonymous says: The Board stated "we find that the
visual presentation of the literal and design elements
combine to form a unitary whole. We find so because they are on the same plane, are in the same font and are located next to one another without any spacing." I think the way the SNAP&Design mark is presented in the opinion and the phrasing "without any spacing" suggests the Board thinks the drawing of record has the word fused with the design element. When I look in TDR, I agree with you it looks like there is a space, but the way the Board presents the mark, it looks physically fused.


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