ASPIRINA descriptive of analgesics, court affirms

A divided panel of the US Court of Appeals for the Federal Circuit has upheld the Trademark Trial and Appeal Board's (TTAB) refusal to register the mark ASPIRINA for analgesics (In re Bayer Aktiengesellschaft, Case 06-1279, May 24 2007).

Relying on online dictionaries, NEXIS articles, a Google search report and an English translation of Bayer Aktiengesellschaft's Spanish website, the TTAB argued that it properly refused to register the mark on the grounds that ASPIRINA is merely descriptive of analgesics.

In response, Bayer asserted that:

• the ASPIRINA mark is entitled to US registration because Bayer owns trademark registrations for ASPIRINA in 34 countries;
  
  
• ASPIRINA is a coined term having no specific meaning in any language;
  
  
• the term is used only as a trademark for its goods and ASPIRINA has no other source of origin; and
  
  
• because of differences in spelling, pronunciation and meaning, consumers will not view ASPIRINA as merely descriptive.

Despite recognizing conflicts in the evidentiary record, a panel majority of the Federal Circuit deferred to the TTAB's conclusions that foreign trademark registrations alone are not relevant to US consumer perceptions and that the term 'ASPIRINA' is sufficiently similar to the Spanish word for aspirin. The court therefore affirmed the TTAB's Section 2(e)(1) refusal to register on the grounds that the mark is merely descriptive of analgesics.

In dissent, Judge Newman asserted that the issue is not one of extra-territoriality of unregistered marks, but one of the appropriateness of registration of a well-known foreign mark when the legal requirements for US registration have been met. Judge Newman asserted that "the evidence and the great weight of usage show ASPIRINA as a trademark". Further, commercial policy and international treaty obligations do not favour depriving trademark owners of valuable commercial rights.

Bayer may try to seek registration under Section 2(f) of 15 USC 1052, which permits registration of marks that, despite not qualifying for registration in light of Section 2(e), have nevertheless "become distinctive of the applicant's goods in commerce". Thus, Section 2(f) is not a provision on which registration can be refused, but is a provision under which an applicant has a chance to prove that it is entitled to a federal trademark registration.

Philip Canelli, McDermott Will & Emery LLP, New York