“Aspirina” descriptive of analgesic goods; denial of registration affirmedMay 24, 2007

In a decision today, the Federal Circuit affirmed a decision by the TTAB that the term "ASPIRINA" is descriptive of analgesics, and therefore not subject to trademark protection in the United States absent a showing of secondary meaning. While the evidence of record was conflicting as to whether ASPIRINA was descriptive, given the deferential standard of review, the panel majority affirmed the decision to deny registration to Bayer.

Judge Newman dissented, and would have given more weight to the fact that ASPIRINA is a registered mark in 34 foreign countries, and the fact that the applicant was policing use of the term online.

More details of In re Bayer Aktiengesellschaft after the jump.

Bayer was the owner of the trademark ASPIRIN until it was held to be generic for the drug of the same name in 1921. ASPIRIN continues to be a trademark in other countries (ASA being the generic name used in those countries).

Bayer first filed for trademark registration for ASPIRINA in 2000 (serial no. 76148955). It expressly abandoned that application before the USPTO issued an office action—probably smart as the USPTO records designate that: "The English translation of the word 'ASPIRINA' in the mark is 'aspirin.'" Thus, given that aspirin is generic in the United States, it would be reasonable that ASPIRINA would have been found to be generic.

Bayer then filed the application on appeal (serial no. 78212751) in 2003. This application did not bear the statement regarding the translation of ASPIRINA. While the examiner did not reject the mark as generic, he did reject it as descriptive of the claimed goods, here analgesics. Specifically, the examiner cited several pieces of evidence supporting his conclusion of descriptiveness, 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
• Copies of the registrations of ASPIRINA in numerous Spanish-speaking countries and an International Registration of ASPIRINA in an additional twenty countries

The TTAB affirmed the examiner's finding of descriptiveness. Specifically, the TTAB noted that "the 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." Bayer's application was filed as an intent-to-use application, and accordingly Bayer could not assert secondary meaning as a basis for registration of a descriptive mark.

The Federal Circuit found substantial evidence supported this finding. While the court noted that the evidence was conflicting, in such a case where the evidence is sufficient to support either conclusion, the substantial evidence standard of review requires the court to affirm. The court noted that in some of the dictionaries referenced, ASPIRINA is specifically noted to be a trademark, while it was also defined as "aspirin." As a result, according to the court:

These three dictionary definitions submitted by Bayer both support registration and evidence the descriptive nature of ASPIRINA. All three dictionary definitions submitted by Bayer indicate that ASPIRINA is recognized as a registered trademark somewhere in the world, supporting Bayer's assertion that the relevant purchasing public would perceive ASPIRINA as a trademark. However, these three definitions also demonstrate that ASPIRINA means aspirin.

The court found the additional evidence conflicting as well in most respects. Interestingly, the court agreed with the TTAB that evidence of foreign registrations is "immaterial to the issue of inherent distinctiveness and the registerability of the same term in the United States." This is because what is relevant is the meaning of the term in the minds of the purchasing public, not whether another country has granted trademark protection to the term. The court specifically noted that this holding did not apply to applications based on foreign registrations under Section 44 of the Lanham Act or applications under applicable treaties or conventions. Indeed, Bayer appears to have already decided to pursue this route, as in February 2006, Bayer filed a third application to register ASPIRINA under Section 44(e) (serial no. 78808082). In the end, the combination of the conflicting evidence and the deferential standard of review led the majority to affirm the TTAB's finding of descriptiveness, and therefore its denial of registration.

Judge Newman dissented for the second time in a week. In her view, the TTAB and the court improperly found that just because ASPIRINA was similar to a generic word that it was descriptive, and therefore not subject to registration. In her view, in the evidence presented, there was nothing to indicate use of ASPIRINA as anything other than a trademark. She also notes that the TTAB did not rule that ASPIRINA was generic, despite the apparent translation to "aspirin," and instead only argued on appeal that it was generic, based on the addition of the letter "a" to a generic term. Judge Newman rejects this, citing several examples of registered marks that are generic terms with small modifications, such as iPHONE. She also would not have found foreign trademark registrations irrelevant, based on the logic of the Grupo Gigante case from the Ninth Circuit, as use of a mark in another country could be relevant if members of the public in this country are aware of the foreign mark. All in all, she found the evidence of descriptiveness unconvincing, and would have reversed the TTAB.

It is interesting that the TTAB's, and therefore the court's holding was limited to descriptiveness, and did not address the issue of whether ASPIRINA was generic. Perhaps that issue will come up in Bayer's new application.

To read the full decision in In re Bayer Aktiengesellschaft, click here.