Duopross Meditech Corp. v. Inviro Medical Devices, Ltd. , 695 F.3d 1247 ( 2012 )

United States Court of Appeals
for the Federal Circuit
__________________________
(Cancellation No. 92046702)
DUOPROSS MEDITECH CORPORATION,
Appellant,
v.
INVIRO MEDICAL DEVICES, LTD.,
Appellee.
__________________________
2012-1050
__________________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board.
____________________________
Decided: August 14, 2012
____________________________
THOMAS J. MOORE, Bacon & Thomas, PLLC, of Alex-
andria, 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
DUOPROSS MEDITECH v. INVIRO MEDICAL 2
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 medi-
cal syringes and needles. Their products are designed to
prevent accidental needle sticks. Inviro’s products ac-
complish 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 In-
viro’s products demonstrate how the products work:
3 DUOPROSS MEDITECH v. INVIRO MEDICAL
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”):
The SNAP! design mark is registered for use with “medi-
cal 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,
DUOPROSS MEDITECH v. INVIRO MEDICAL 4
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 counter-
claims for cancellation of a number of Inviro’s registra-
tions, 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 coun-
terclaims against Inviro. In addition to the SNAP! design
mark and the SNAP SIMPLY SAFER mark, Dupross
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; medi-
cal, 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, hypo-
dermic, 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, hypo-
dermic, 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
5 DUOPROSS MEDITECH v. INVIRO MEDICAL
registration, and that Inviro agreed to voluntarily surren-
der 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 con-
sidered 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 enten-
dre 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 insuf-
ficient 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 distinct-
iveness 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. 1 Id. at 28.
The Board, however, declined to cancel the SNAP! de-
sign 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.
1 Inviro has not appealed these determinations.
DUOPROSS MEDITECH v. INVIRO MEDICAL 6
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 find-
ing that DuoProSS failed to meet its burden to prove that
the SNAP! design mark is merely descriptive. The evi-
dence in the record supports no conclusion other than that
the mark is merely descriptive.
A mark may not be registered on the principal regis-
ter 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 descrip-
tive 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 (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 secondary meaning, and one
that is suggestive and may be registered, is that a sugges-
tive 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 immedi-
ate 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 de-
scriptive is a question of fact. In re Dial-A-Mattress
Operating Corp., 240 F.3d 1341, 1344 (Fed. Cir. 2001)
7 DUOPROSS MEDITECH v. INVIRO MEDICAL
(“Placement of a term on the fanciful-suggestive-
descriptive-generic continuum is a question of fact.”) As
the party challenging the registrations’ validity, Duo-
ProSS 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 con-
cluded 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 Duo-
ProSS 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
DUOPROSS MEDITECH v. INVIRO MEDICAL 8
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 bro-
ken 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. at 545-46). See also Oppedahl & Larson, 373 F.3d at
1174-75. That is what the Board did in this case, how-
ever.
The Board began by noting that the mark includes the
“literal element SNAP,” an element that the Board had
already determined was merely descriptive. Board op. at
28. The Board then put the SNAP element aside and
analyzed the exclamation point in isolation. Id. at 29.
The Board found that the exclamation point was not
merely descriptive, characterizing it as “fanciful.” Id.
While the Board acknowledged that the exclamation point
depicts breaking, it observed that the design “only sug-
gests the breaking of something,” not necessarily the
breaking of a syringe. Id. The Board, in other words,
believed that the exclamation point requires a consumer
to employ “imagination, thought and perception” to de-
termine that the function of the recited goods included the
breaking of a syringe plunger. Abcor, 588 F.2d at 814.
At this point, the Board should have considered
whether the entire mark, composed of the exclamation
point and the descriptive word SNAP, conveys a commer-
cial impression that is merely descriptive to a consumer.
Dial-A-Mattress, 240 F.3d at 1345-46; Oppedahl & Lar-
9 DUOPROSS MEDITECH v. INVIRO MEDICAL
son, 373 F.3d at 1174. The Board failed to do so. Rather,
after considering the exclamation point in isolation, the
Board summarily concluded that “the mark, as a whole, is
not a merely descriptive illustration of an important
feature or characteristic of applicant’s cannulae, syringes
and needles.” Board op. at 29. 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.
When DuoProSS moved for reconsideration on this is-
sue, the Board, appearing to recognize that it had errone-
ously dissected the mark, attempted to compensate for its
error by noting that, “[a]lthough the word ‘SNAP’ is
descriptive, it is physically connected to the non-
descriptive design.” Inviro Med. Devices Ltd. v. DuoProSS
Meditech Corp., No. 92046702, Dkt. 55 at 4 (TTAB July
22, 2011). That additional analysis, however, was insuffi-
cient to cure the Board’s error. In fact, it was circular,
allowing the Board to remove the exclamation point from
the context in which it was used so as to justify a descrip-
tion of it as fanciful, and then use that conclusion to
bootstrap the clearly descriptive word SNAP back into the
mark. The Board, to be sure, may ascertain the meaning
and weight of each of the components that makes up the
mark. Oppedahl & Larson, 373 F.3d at 1174. The Board,
however, ultimately must consider the mark as a whole
and do so in the context of the goods or services at issue.
Abcor, 588 F.2d at 813-14. The Board failed to do so here.
DUOPROSS MEDITECH v. INVIRO MEDICAL 10
B
In addition to dissecting the mark, the Board failed to
cite any evidence supporting its conclusion that a mark
incorporating the exclamation point required a consumer
to employ “imagination, thought and perception” to de-
termine the nature of the goods with which the mark is
used. Abcor, 588 F.2d at 814. The findings that the
Board did make, in fact, contradict that view. The record,
therefore, is insufficient to support the Board’s conclusion,
even under the substantial evidence standard of review.
The Board found it significant that the exclamation
point “only suggests the breaking of something,” rather
than a syringe plunger specifically. Board op. at 29. The
Board, however, cited no evidence in the record support-
ing the conclusion that a consumer would have to employ
imagination, thought, and perception to determine that
the mark was referring to the snapping of a syringe
plunger. The commercial impression that a mark conveys
must be viewed through the eyes of a consumer. Dial-A-
Mattress, 240 F.3d at 1345 (noting that competent evi-
dence is necessary to demonstrate “the relevant purchas-
ing public’s understanding of a contested term”). The
Board, however, failed to cite any evidence indicating how
a consumer would perceive a mark incorporating the
exclamation point. In the absence of any such evidence in
the record, the Board effectively imposed its own view
about the commercial impression of the mark rather than
that of the relevant consumer.
The express findings that the Board did make, more-
over, strongly support the conclusion that a consumer
would perceive the SNAP! design mark as depicting the
snapping of a syringe plunger, as opposed to merely the
snapping of “something,” as the Board believed. As noted
above, in determining whether a mark is merely descrip-
11 DUOPROSS MEDITECH v. INVIRO MEDICAL
tive, the Board must consider the mark in relation to the
goods for which it is registered. “The question is not
whether someone presented with only the mark could
guess what the goods or services are. Rather, the ques-
tion is whether someone who knows what the goods and
services are will understand the mark to convey informa-
tion about them.” In re Tower Tech. Inc., 64 U.S.P.Q.2d
1314, 1316-17 (TTAB 2002). The Board’s own findings
indicate that the SNAP! design mark, viewed in the
context of Inviro’s products, does nothing other than
depict the snapping of a syringe plunger: the prominent
functional feature of Inviro’s goods.
First, the Board found that Inviro’s syringes are
packaged with instructions on how to disable the needles.
The third step in those instructions is “Snap off plunger!”
Board op. at 22; Inviro Med. Devices Ltd. v. DuoProSS
Meditech Corp., Cancellation No. 92046702, Dkt. 44 at 59-
61, Ex. C & D (“Sharp test.”). Notably, the disabling
instructions, an image of which the Board included in its
opinion, prominently depict the mark incorporating the
broken exclamation point, thereby placing the mark and
the concept of snapping the syringe plunger in the same
context:
DUOPROSS MEDITECH v. INVIRO MEDICAL 12
Board op. at 13; Sharp test. Ex. C.
In addition to the disabling instructions, the Board
found that Inviro’s website “prominently pictures a bro-
ken plunger and the word ‘Snap.’” Board op. at 22. And,
the Board noted that Inviro’s founder, Dr. F. Ross Sharp,
testified that “the disabling of the syringe involved a
number of steps, one of them is breaking the plunger.”
Board op. at 23; Sharp test. at 61. The Board further
noted that one dictionary definition of “snap” is “[t]o break
suddenly: break in two.” Board op. at 23 (citation and
internal quotation marks omitted).
The Board’s findings support no reasonable inference
other than that a consumer viewing the SNAP! design
mark in the context of Inviro’s products would perceive it
13 DUOPROSS MEDITECH v. INVIRO MEDICAL
as depicting the snapping of a syringe plunger. We can-
not endorse the Board’s opinion as supported by substan-
tial evidence when the Board failed to make any findings
supporting its conclusion that the SNAP! design mark
was not merely descriptive, and when findings that it did
make support the opposite conclusion. For these reasons,
substantial evidence fails to support the Board’s finding
that DuoProSS failed to prove that the SNAP! design
mark is merely descriptive.
III
With respect to the SNAP SIMPLY SAFER mark, the
Board erred in finding that DuoProSS failed to prove that
mark is merely descriptive based on a combination of
legal and factual errors. To determine whether a compos-
ite mark such as the SNAP SIMPLY SAFER mark is
merely descriptive, the Board was required to examine
the meaning of each component individually, and then
determine whether the mark as a whole is merely descrip-
tive. See In re St. Paul Hydraulic Hoist Co., 177 F.2d 214,
215 (CCPA 1949). Like its conclusion on the SNAP!
design mark, the Board’s conclusion on the SNAP
SIMPLY SAFER word mark is not supported by substan-
tial evidence. The Board, moreover, legally erred when it
concluded that puffery could render the mark more than
descriptive.
A
The Board failed to cite any evidence to support its
conclusion that DuoProSS failed to prove that the SNAP
SIMPLY SAFER mark is merely descriptive. The Board
acknowledged that the word SNAP is descriptive when
used with the recited goods. Board op. at 29. Then, the
Board analyzed SIMPLY and SAFER, and concluded that
the combination of those words results in “a distinctive
impression separable from the word ‘Snap . . . .’” Id. The
DUOPROSS MEDITECH v. INVIRO MEDICAL 14
Board, however, failed to cite any evidence from the
record to support that view. Rather, the Board observed
that the combination of the terms SIMPLY and SAFER
“creates a rhyming pattern that results in a distinctive
impression separable from the word ‘Snap,’” and “also
forms a phrase that does not merely impart information
about a significant characteristic of the goods.” Id. The
record, however, contains no evidence indicating that a
consumer would focus on the alliteration formed by
SNAP, SIMPLY, and SAFER, or that such alliteration
would require a consumer to take the inferential step that
the Board described. The Board’s observation about the
alliteration constitutes its own view about the mark, not a
finding about the commercial impression that the mark
conveys to a consumer based on evidence in the record.
Again, the Board’s own findings indicate, if anything,
that SIMPLY SAFER describes the most important
advantage of Inviro’s products: their safety. As the Board
found, Dr. Sharp was concerned about the “terrible toll” of
infectious diseases affecting healthcare workers from
accidental needle sticks, prompting him to develop “a
number of different types of safety syringes.” Board op. at
22; Sharp test. at 12-13, 17 (emphasis added). The pur-
pose of capturing the needle in the syringe barrel is to
prevent a needle stick—in other words, to make the
device safer.
While Dr. Sharp did assert that he wanted to convey
to consumers how easy Inviro’s products are to use, his
testimony indicates that ease of use shaped only his
choice of the word SNAP, not SIMPLY or SAFER. Dr.
Sharp, for example, testified that the idea of using SNAP
arose when a nurse told him, “‘you know, this is so easy, I
could teach my ten-year old son to use this syringe in ten
seconds’ and she sort of snapped her fingers like that.”
Sharp test. at 20. He did not, however, assert that the
15 DUOPROSS MEDITECH v. INVIRO MEDICAL
idea of using SIMPLY SAFER arose from the same con-
versation or was otherwise shaped by his desire to convey
the products’ ease of use. Id. In any event, even if Dr.
Sharp’s decision to use the words SIMPLY and SAFER
were motivated by a desire to convey the products’ ease of
use, the Board found no evidence during its double enten-
dre analysis that consumers would recognize such a
meaning.
The Board, in sum, failed to cite any evidence, and the
record contains none, supporting its view that the allit-
eration in SNAP SIMPLY SAFER creates a commercial
impression that is more than merely descriptive.
B
The Board, moreover, erred as matter of law when it
concluded that, because SIMPLY SAFER is a laudatory
phrase or puffery, the phrase renders the mark more than
descriptive. We review that legal conclusion de novo.
Pacer Tech., 338 F.3d at 1349.
The Board observed that “the term ‘Simply’ modifies
‘Safer’ such that the phrase SIMPLY SAFER may be
perceived a general claim of superiority regarding the
safety of petitioner’s syringes and thus amounts to puff-
ery.” Board op. at 29-30. The Board appeared to believe
that this puffery removes the mark from the realm of
descriptiveness. For that proposition, the Board cited a
treatise section addressing “puffing” under the unfair
competition provisions of Section 43(a) of the Lanham Act.
Id. at 30 n.4 (citing 5 J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition § 27:38 (4th ed.
2009)). This case, however, concerns descriptiveness for
purposes of trademark registerability, not unfair competi-
tion. The same treatise on which the Board relied and
our precedent clearly indicate that puffing, if anything, is
more likely to render a mark merely descriptive, not less
DUOPROSS MEDITECH v. INVIRO MEDICAL 16
so. “Marks that are merely laudatory and descriptive of
the alleged merit of a product are . . . regarded as being
descriptive. . . . Self-laudatory or puffing marks are re-
garded as a condensed form of describing the character or
quality of the goods.” In re Boston Beer Co., 198 F.3d
1370, 1373 (Fed. Cir. 1999) (citing 2 J. Thomas McCarthy,
McCarthy on Trademarks and Unfair Competition § 11:17
(4th ed. 1996)); see also Hoover Co. v. Royal Appliance
Mfg. Co., 238 F.3d 1357, 1360 (Fed. Cir. 2001) (citing
Boston Beer and McCarthy for the same proposition).
Here, adding SIMPLY SAFER to SNAP does nothing
more than laud the safety of Inviro’s products, which, as
discussed above, is a merely descriptive use.
IV
Substantial evidence fails to support the Board’s con-
clusion that DuoProSS failed to prove that the SNAP!
design mark and SNAP SIMPLY SAFER mark are merely
descriptive. Accordingly, we reverse the Board’s decision
and remand with instructions to enter judgment in favor
of DuoProSS and to order cancellation of U.S. Registra-
tion Nos. 2,944,686 and 3,073,371.
REVERSED AND REMANDED