In re Bayer (Fed. Cir. 2007)
The Trademark Office Appeal Board (TTAB) found the mark ASPIRINA merely descriptive of analgesics. On appeal to the CAFC, Judge Moore filed a majority opinion agreeing that the TTAB had reached the critical ‘substantial evidence’ threshold and thus affirmed.
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. The Board also found that ASPIRINA immediately conveys the impression that Bayer’s analgesics are aspirin-based products. . . .
Under the deferential substantial evidence standard of review, the Board’s decision must be affirmed. 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 particular, the CAFC noted that ASPIRINA looks and sounds like aspirin – the same basic product. In addition, a number of online dictionaries show that ASPIRINA is a common spanish-language translation for aspirin.
Judge Newman filed a dissent, arguing that a mark’s closeness to a generic word is not determinative of its trademark status. Rather, according to Newman, the Court should examine whether ASPIRINA serves to associate the goods with their source.
Of note — the majority gave no weight to the fact that ASPIRINA has been registered in 34 other countries. Judge Newman would have given weight to that international business information.