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It’s a SNAP! Results In Mark Being Descriptive Based On Ads For Snap Plunger

The Federal Circuit Appeals Court reversed a TTAB decision and cancelled the SNAP! registration based upon the registrant’s instructions to “snap off the plunger” for medical syringes.  DuoProSS Meditech Corporation v. Inviro Medical Devices, Ltd., 103 U.S.P.Q. 2d 1753, Case No. 2012-1050 (Fed. Cir. 2012) (available here).  The Trademark Trial and Appeal Board (“TTAB”) dismissed DuoProSS’ counterclaims seeking cancellation of two trademark registrations owned by Inviro, namely SNAP SIMPLY SAFER and SNAP! with a uniquely designed “!”.  On appeal, the Federal Circuit reversed finding that the TTAB (1) failed to consider the marks as a whole; and (2) failed to support its conclusion that DuoProSS did not prove descriptiveness.  The Federal Circuit also held that puffery language renders a mark as “merely descriptive” and thus not registrable.  After reversing the TTAB, the Federal Circuit cancelled the registrations.

The parties are competitors who sell medical syringes and needles designed to avoid accidental needle sticks.  Inviro owns two trademark registrations, the SNAP! design mark, and SNAP SIMPLY SAFER.  Inviro’s instructions for the SNAP! syringe describe a “snap off plunger.”  Inviro petitioned to cancel DuoProSS’s registration for the design mark BAKSNAP, but later dropped the claim.  DuoProSS filed counterclaims for cancellation of Inviro’s registrations.  The TTAB refused to cancel Inviro’s marks.  Although the TTAB concluded that the SNAP term was “merely descriptive,” it found that the additional element, the “!” in SNAP! and the words “Simply Safer,”, rendered the marks more than merely suggestive and not descriptive.  The Federal Circuit disagreed.

A mark cannot be registered if it is “merely descriptive” of the goods used in connection with the mark.  A mark is “merely descriptive” if it consists of words or terms describing a feature, function, or characteristic of the goods related to the mark.  However, if the mark is “merely suggestive,” it can be registered.  “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 suggestive 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 immediate idea of the ingredients, qualities or characteristics of the goods.”  DuoProSS, Slip Op. P. 7.

The Federal Circuit found that the TTAB erred on two points.  First, the TTAB focused on only one portion of the mark in considering its commercial impression.  The TTAB separated “SNAP” from “!” but was required to consider the mark as a whole for the commercial impression analysis.  The TTAB had held that SNAP by itself is merely descriptive, but determined that “!” was enough to take the entire SNAP! mark out of the “merely descriptive” territory.  In other words, the TTAB believed that the exclamation point would require consumers to employ “imagination, thought, and perception” to determine the function of Inviro’s goods.  However, the TTAB did not point to anything showing that it considered SNAP! 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.”  DuoProSS, Slip Op. P. 9.

Second, the TTAB failed to make any findings to support its conclusion that DuoProSS did not prove the mark was merely descriptive.  The TTAB found that the broken exclamation point in SNAP! suggested the breaking of something, not a breaking of a syringe plunger.  The TTAB was required to view the commercial impression of the mark through the eyes of a consumer but failed to discuss any evidence of how a consumer would perceive SNAP!  Instead, the TTAB imposed its own view of the commercial impression of SNAP!  “The question is not whether someone presented with only the mark could guess what the goods or services are. Rather, the question is whether someone who knows what the goods and services are will understand the mark to convey information about them.” In re Tower Tech. Inc., 64 U.S.P.Q. 2d 1314, 1316-17 (TTAB 2002).

The Federal Circuit identified the following evidence.  First, Inviro’s instructions include the SNAP! mark, which highlighted the phrase “Snap off plunger!”  Second, Inviro’s website prominently displayed pictures of a broken syringe plunger and the word “Snap.”  The Federal Circuit concluded that TTAB’s opinion was not supported by substantial evidence because the TTAB found that the SNAP! mark was “merely descriptive.”

The Federal Circuit also held that the TTAB erred in finding that the mark SNAP SIMPLY SAFER was suggestive (and registrable) because the words “SIMPLY SAFER” was puffery, which rendered the mark as “merely descriptive.”  The TTAB found that the word “simply” modified “safer,” making SIMPLY SAFER a general claim of superiority regarding the safety of Inviro’s syringes.  The Federal Circuit stated “adding SIMPLY SAFER to SNAP does nothing more than laud the safety of Inviro’s products, which [ ] is a merely descriptive use.” DuoProSS, Slip Op. P. 16.  The Federal Circuit cancelled both trademark registrations.

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