Single Element May Not be Enough to Prevent Finding of Descriptiveness
What This Means To You
- When selecting a brand, consider the overall impression for strength of the mark.
- A fanciful logo element which demonstrates functionality, does not preclude a finding of descriptiveness.
- Before commencing litigation, think carefully about the risks to your portfolio through counterclaims.
In DuoPross Meditech Corp. v. Inviro Medical Devices, Ltd., the US Court of Appeals for the Federal Circuit (Federal Circuit) found that the combination of a descriptive word mark and a separable weak design mark may result in an overall trademark found to be descriptive.
DuoProSS and Inviro are competitors who sell medical syringes designed to break to prevent accidental needle sticks. DuoProSS sought to cancel several Inviro trademark registrations including Snap, which is registered for “medical devices, namely, medical, hypodermic, aspiration and injection syringes”.
At the US Patent and Trademark Office, the Trademark Trial and Appeal Board (TTAB) found that the use of the broken exclamation point rendered the mark suggestive (and therefore stronger). The TTAB found that the nature of the broken exclamation point was a fanciful reference to the breaking of the syringe – the underlying purpose of the product – and the basis for finding SNAP to be descriptive. The TTAB then found that the imagination of the consumer would be required to bridge the gap between the logo element and the function of the product (a requirement for finding a mark suggestive).
In reversing the TTAB, the Federal Circuit found that the TTAB only focused on the logo and not the impact of the term SNAP in connection with the logo. The court found that the TTAB ruling dissected the mark rather than considering the mark as a whole. Instead, the court found that a consumer would perceive the SNAP mark as the breaking of something which, in conjunction with SNAP, created an overall descriptive mark. The court further indicated that the TTAB provided no citation or evidentiary support for its conclusion that the breaking exclamation point was anything other than descriptive of a feature or characteristic of the product.
The Federal Circuit also found that the instructions which accompany Inviro’s products depict the breaking of the syringe in conjunction with the subject mark, which the court found to demonstrate descriptiveness of the overall mark.
Critical to this case is the fact that logos, which may have a suggestive quality, may not be sufficient to preclude a finding of descriptiveness when associated with word marks. In this particular situation, Inviro would have been better pursuing the exclamation alone (for which it had use) rather than combining it with the overwhelmingly descriptive SNAP element. Selection of a logo for the purposes of strength of the mark, requires the same analysis as the word mark counterpart.