United States Court of Appeals for the Federal Circuit
2006-1279
(Serial No. 78/212,751)
IN RE BAYER AKTIENGESELLSCHAFT
Michael L. Lovitz, Connolly Bove Lodge & Hutz LLP, of Wilmington, Delaware,
argued for appellant. With him on the brief were Stanley C. Macel, III, and Jennifer
Fraser.
Nancy C. Slutter, Associate Solicitor, United States Patent and Trademark Office,
of Arlington, Virginia, argued for the Director of the United States Patent and Trademark
Office. With her on the brief were John M. Whealan, Solicitor, and Robert J. McManus,
Associate Solicitor.
Appealed from: United States Patent and Trademark Office, Trademark Trial
and Appeal Board
United States Court of Appeals for the Federal Circuit
2006-1279
(Serial No. 78/212,751)
IN RE BAYER AKTIENGESELLSCHAFT
____________________________
DECIDED: May 24, 2007
____________________________
Before NEWMAN, SCHALL, and MOORE, Circuit Judges.
Opinion for the court filed by Circuit Judge MOORE. Dissenting opinion filed by Circuit
Judge NEWMAN.
MOORE, Circuit Judge.
Bayer Aktiengesellschaft (Bayer) appeals the Trademark Trial and Appeal Board
(Board) ruling that the proposed mark ASPIRINA is merely descriptive for analgesic
goods. In re Bayer Aktiengesellschaft, Serial No. 78/212,751 (TTAB Mar. 17, 2006)
(Final Decision). Because the Board’s ruling is supported by substantial evidence, we
affirm.
BACKGROUND
On February 10, 2003, Bayer filed an intent-to-use application under 15 U.S.C.
§ 1051(b)(1) to register the mark ASPIRINA in connection with analgesic goods. The
examining attorney initially refused registration on the grounds that the mark is merely
descriptive, or alternatively, deceptively misdescriptive, of Bayer’s goods. In support of
this refusal to register the mark, the examining attorney found that ASPIRINA is the
Spanish word for aspirin and provided an online dictionary definition that equates
ASPIRINA with aspirin. The examining attorney also considered online evidence
obtained from GOOGLE search engine results showing the descriptive nature of the
term including a translation of Bayer’s aspirina.com Spanish-language website. Bayer
responded by asserting that ASPIRINA was a coined term with no known meaning in
English or any other language. Bayer also asserted that the translation tool used by the
examining attorney improperly translated ASPIRINA as aspirin without noting that Bayer
was the origin of the goods and that Bayer was working with GOOGLE to resolve this
translation “error.” Bayer provided extensive evidence of foreign registration of
ASPIRINA to the examining attorney to demonstrate that consumers, including Spanish-
speaking consumers, understand ASPIRINA to indicate that Bayer is the source of
particular analgesic products.
The examining attorney issued a final refusal to register ASPIRINA on the ground
that the term is merely descriptive of analgesic products to the relevant consumers.
The examining attorney cited numerous story excerpts from a NEXIS database search
in which aspirin appeared as the definition of ASPIRINA and two online dictionaries
which both equated the term ASPIRINA with aspirin in support of this rejection. The
examining attorney also noted that “[t]he foreign equivalent of a merely descriptive
English word is not registrable. It too is merely descriptive.” Bayer then submitted an
unsuccessful request for reconsideration with its own dictionary evidence and appealed
to the Board.
After briefing and oral argument, the Board rendered a decision on December 1,
2005, affirming the examining attorney’s refusal to register ASPIRINA for use in
connection with analgesics. The Board considered the evidence of record in light of the
history relating to the term aspirin, which has long since become a generic term in this
2006-1279 2
country for the class of analgesic goods that consist of a white crystalline compound of
acetyl salicylic acid. 1 Final Decision, slip. op. at 7-8 (citing Bayer Co. v. United Drug
Co., 272 F. 505 (S.D.N.Y. 1921)). 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. Id. at 8-9.
The Board also found that ASPIRINA immediately conveys the impression that Bayer’s
analgesics are aspirin-based products. Id. at 9. The examining attorney asserted
before the Board that the Spanish word ASPIRINA translates to aspirin in English. The
Board declined to engage in a foreign equivalents analysis given its finding that the
record demonstrates that ASPIRINA is a merely descriptive variation of aspirin. Id. at 8.
Bayer timely appealed this decision. This court has jurisdiction under 28 U.S.C.
§ 1295(a)(4)(B).
DISCUSSION
Section 2(e)(1) of the Lanham Act precludes registration of a mark that, “when
applied to the goods of the applicant, is merely descriptive of them.” 15 U.S.C. §
1052(e)(1) (2006). A term is merely descriptive if it immediately conveys knowledge of
a quality, feature, function, or characteristic of the goods or services with which it is
used. In re Gyulay, 820 F.2d 1216, 1217 (Fed. Cir. 1987). Descriptiveness of a mark is
not considered in the abstract. Rather, it is considered in relation to the particular goods
for which registration is sought, the context in which it is being used, and the possible
significance that the term would have to the average purchaser of the goods because of
the manner of its use or intended use. See In re Abcor Dev. Corp., 588 F.2d 811, 813-
1
The issue of whether ASPIRINA is a generic term was not before the
Board, Final Decision, slip op. at 2 n.2, and likewise is not before this court.
2006-1279 3
14 (CCPA 1978); see also In re MBNA Am. Bank N.A., 340 F.3d 1328, 1332 (Fed. Cir.
2003). The examining attorney has the burden to establish that a mark is merely
descriptive.
The determination that a mark is merely descriptive is a factual finding, and this
court reviews the Board’s fact finding for substantial evidence. In re MBNA, 340 F.3d at
1332; see In re Oppendahl & Larson LLP, 373 F.3d 1171, 1173 (Fed. Cir. 2004) (stating
that determining a mark’s placement on the fanciful-suggestive-descriptive-generic
continuum is a question of fact). Substantial evidence “means such relevant evidence
as a reasonable mind might accept as adequate to support a conclusion.” Consol.
Edison Co. v. N.L.R.B., 305 U.S. 197, 229 (1938). The issue before us is whether,
upon review of the record as a whole, substantial evidence supports the Board’s finding
that ASPIRINA is merely descriptive as applied to Bayer’s analgesic products.
I.
Evidence that a term is merely descriptive to the relevant purchasing public “may
be obtained from any competent source, such as dictionaries, newspapers, or surveys.”
In re Bed & Breakfast Registry, 791 F.2d 157, 160 (Fed. Cir. 1986); see In re Dial-A-
Mattress Operating Corp., 240 F.3d 1341, 1344-45 (Fed. Cir. 2001) (stating that
competent sources to show the relevant purchasing public’s understanding of a term or
phrase include dictionary definitions, trade journals, newspapers, and other
publications). In this case, the record contains a variety of evidence including:
• Four dictionary definitions of ASPIRINA or aspirin and four
Spanish/English translations of ASPIRINA and aspirin;
• GOOGLE search results showing the top ten “hits” for ASPIRINA;
2006-1279 4
• Bayer’s webpage aspirina.com in both Spanish and English (translation
from Spanish to English performed using GOOGLE’s free translation
software);
• Numerous story excerpts identified in a search of the NEXIS database;
and
• Copies of the registrations of ASPIRINA in numerous Spanish-speaking
countries and an International Registration of ASPIRINA in an additional
twenty countries. 2
We consider each of these categories of evidence in turn after a comparison of the
terms ASPIRINA and aspirin with respect to their appearance, sound, and meaning.
A. Appearance, Sound, and Meaning
Aspirin is generic for analgesics and has been generic for this class of
pharmaceuticals over eighty years. See Bayer, 272 F. at 505. In determining whether
ASPIRINA is sufficiently similar to aspirin to render it merely descriptive of analgesic
goods, the relevant features of the mark are considered including appearance, sound,
and meaning. The Board found that ASPIRINA and aspirin are sufficiently close in
appearance, sound, and meaning that “[t]he mere addition of the letter ‘A’ at the end of
the generic term ‘aspirin’ is simply insufficient to transform ASPIRINA into an inherently
distinctive mark for analgesics.” Final Decision, slip. op. at 8, 11. Substantial evidence
supports this finding. The appearance and meaning of ASPIRINA and aspirin are
similar. Adding an “a” to aspirin results in virtually no distinction with respect to the
visual impressions of the terms. Importantly, both terms will be used in association with
2
A copy of Bayer’s previously filed and now-abandoned application to
register the same mark in connection with the same goods was considered by the
examining attorney, but the Board did not assign any probative value to this abandoned
application in its decision to affirm. Final Decision, slip. op. at 10.
2006-1279 5
the same analgesic goods in this country. 3 There are, however, some differences in
sound. ASPIRINA contains four syllables and aspirin contains two or three syllables
(depending on how it is pronounced). ASPIRINA also contains different syllables and
the emphasis is on the third syllable for ASPIRINA, whereas the emphasis is on the first
syllable for aspirin. When the mark ASPIRINA is considered as a whole, the significant
similarities in appearance and meaning of ASPIRINA and aspirin demonstrate that the
Board’s finding that ASPIRINA is merely descriptive of analgesic goods is supported by
substantial evidence.
Not only did the Board consider the similarities of ASPIRINA and aspirin with
respect to appearance, sound, and meaning, it also considered competent sources in
the record to determine the relevant purchasing public’s understanding of ASPIRINA.
We consider these sources below to determine whether the record as a whole provides
substantial evidence to support the Board’s finding that ASPIRINA is merely descriptive.
B. Dictionary Definitions and Translations
1. Evidence of Record
The evidence of record includes translation results from four online
Spanish/English translation websites that demonstrate that ASPIRINA is the Spanish-
language equivalent of aspirin. Translations were obtained from wordreference.com,
yourdictionary.com, ultralingua.net, and altavista.com:
• Wordreference.com (Spanish to English): aspirina substantive fermenio
aspirin
• Yourdictionary.com (Spanish to English): aspirina [s.f.] aspirin [n.]
3
Dictionary evidence that supports the finding that aspirin and ASPIRINA
have the same meaning to the relevant consumer is discussed infra in Section I(B).
Moreover, it is not disputed that aspirin and ASPIRINA are to be used with respect to
the same analgesic goods.
2006-1279 6
• Ultralingua.net (English to Spanish): aspirin n. <’asp&rin>: 1. aspirina s.f.;
(Spanish to English): aspirina s.f.: 1. aspirin n.
• Altavista.com Babel Fish Translation (English to Spanish): aspirin-
aspirina
The record also contains a printout submitted by Bayer from the diccionarios.com
website and two paper dictionary entries for ASPIRINA. The website diccionarios.com
indicates that ASPIRINA means aspirin and that it is a commercially registered name for
a pharmaceutical composition of acetyl salicylic acid. The Vox Everyday Spanish and
English Dictionary 4 (2d ed. 2003) translates ASPIRINA to aspirin and indicates that both
terms are registered marks. The Diccionario de la Lengua Española (2d ed. 2001) entry
for ASPIRINA translates as:
Aspirina. (From the German Aspirin, Registered Trademark). f. Med.
White, crystalline solid, constructed by acetyl salicylic acid, which is used
as an analgesic and antipyretic. || 2. Caplet manufactured with this
substance.
These three dictionary definitions submitted by Bayer both support registration and
evidence the descriptive nature of ASPIRINA. All three dictionary definitions submitted
by Bayer indicate that ASPIRINA is recognized as a registered mark somewhere in the
world, supporting Bayer’s assertion that the relevant purchasing public would perceive
ASPIRINA as a trademark. However, these three definitions also demonstrate that
ASPIRINA means aspirin. Additionally, the Diccionario de la Lengua Española
definition for ASPIRINA is strikingly similar to the Webster’s Third New International
Dictionary (unabridged ed. 1993) definition for aspirin:
aspirin. A white crystalline compound . . . of salicyclic [sic] acid used
esp. in tablet form as an antipyretic and analgesic.
4
The Vox Everyday Spanish and English Dictionary is a print version of the
dictionary by the same publisher that owns and operates the website diccionarios.com.
2006-1279 7
Final Decision, slip. op. at 8. The Diccionario de la Lengua Española and Webster’s
Third New International Dictionary definitions show that ASPIRINA and aspirin describe
the same crystalline product used as an analgesic, i.e., that they have the same
meaning to the relevant purchasing public. Where the evidence of record is conflicting
and supports both registration and refusal of registration, the substantial evidence
standard of review dictates that we affirm the Board. Hoover Co. v. Royal Appliance
Mfg. Co., 238 F.3d 1357, 1361 (Fed. Cir. 2001).
2. Reliability of Online Definitions and Translations
Bayer asserts that the four online definitions and translation results submitted by
the examining attorney are unreliable and entitled to little weight because they are
inaccurate translations from free automated language translation websites. Bayer also
asserts that the inaccurate internet translations and uses of Bayer’s mark “are not
authorized by Applicant” and are therefore not relevant. Internet evidence is generally
admissible and may be considered for purposes of evaluating a trademark. See Retail
Serv., Inc. v. Freebies Publ’g, 364 F.3d 535, 544-45 (4th Cir. 2004) (considering online
dictionaries and websites as evidence of consumer perception of mark); Savin Corp. v.
Savin Group, 391 F.3d 439, 454 (2d Cir. 2004) (consulting website evidence to
determine similarity of the marks); see also Trademark Manual of Examination
Procedures (TMEP) § 710.01(b) (4th ed.) (“Articles downloaded from the Internet are
admissible as evidence of information available to the general public, and of the way in
which a term is being used by the public. However, the weight given to this evidence
must be carefully evaluated, because the source is often unknown.”). Definitions
available from an online resource that are readily available and as such capable of
being verified are useful to determine consumer perception. See In re Red Bull GmbH,
2006-1279 8
78 U.S.P.Q.2d 1375, 1377 (TTAB 2006). The online dictionaries and translations as
well as the print dictionary evidence that Bayer submitted and the print dictionary cited
by the Board provide substantial evidence that ASPIRINA means “aspirin” and that both
terms describe the same class of analgesic goods.
C. Search Engine Reports and Websites
The examiner also cited a GOOGLE search engine report showing the first ten
“hits” for ASPIRINA. The report includes a small amount of Spanish text with each of
the ten search results and shows both usage of the term descriptively with respect to
analgesic pharmaceutical products (e.g., result 4, “En el centenary de l’aspirina 1897-
1997”) and use of ASPIRINA in connection with Bayer’s products and as a Bayer
trademark (e.g., results 1-2, Bayer’s aspirina.com website; result 8, “Aspirina: El
Fármaco del Futuro – Bayer SA Chile”). Results 3 and 9 indicate that ASPIRINA is a
registered mark, but do not indicate in what geographical region it is protected by a
registration. Most of the GOOGLE search results seem to use the term ASPIRINA as
an indicator of Bayer’s aspirin product and as a trademark.
Bayer asserts that the list of GOOGLE search result summaries is of lesser
probative value than evidence that provides the context within which a term is used.
We agree. Search engine results—which provide little context to discern how a term is
actually used on the webpage that can be accessed through the search result link—may
be insufficient to determine the nature of the use of a term or the relevance of the
search results to registration considerations. See In re King Koil Licensing Co., Serial
No. 76/565,486, 2006 WL 639160, *2 (TTAB Mar. 2, 2006) (stating that list of internet
search results is “not given much weight” because “[t]hese web page excerpts do little
to show the context within which a term is used on the web page that could be
2006-1279 9
accessed by the link”); In re Remacle, Serial No. 75/932,290, 2002 WL 31563187, *2
n.2 (TTAB Sept. 24, 2002). Web-based information that includes greater context for the
use of a term, such as a complete webpage that is accessible as a link within the search
engine results, will have greater probative value in determining how a term will be
perceived. See In re King Koil, 2006 WL 639160, at *2. Because the GOOGLE search
report provides very little context of the use of ASPIRINA on the webpages linked to the
search report, it is of little value in assessing the consumer public perception of the
ASPIRINA mark.
The record includes a translation of the content of Bayer’s aspirina.com website,
which was the first result listed in the GOOGLE search report. The translation of this
page substitutes aspirin for the term ASPIRINA and uses the term aspirin in the generic
or descriptive sense for products with acetyl salicylic acid without an indication that it is
a registered trademark. Bayer asserts that its aspirina.com website was improperly
translated from Spanish to English by the GOOGLE translation software, which
replaced the registered trademark in the text of the webpage with the English word
“aspirin.” 5 Bayer also submitted the Spanish version of a portion of its website and the
Board considered this evidence.
Taken together, the GOOGLE search report and the translation of Bayer’s
aspirina.com webpage contain conflicting evidence with respect to descriptiveness and
show that consumers are exposed to ASPIRINA as both (1) a registered trademark
associated with Bayer and its analgesic goods and (2) a generic or descriptive term for
the analgesic goods.
5
Google has subsequently blocked use of its free translation software on
this webpage in response to Bayer’s request.
2006-1279 10
D. NEXIS Database Search
The record also contains NEXIS database evidence consisting of numerous story
excerpts that contain the terms ASPIRINA and/or aspirin. The NEXIS story excerpts
also provide mixed results. The references to ASPIRINA include discussions of Bayer
and Bayer products, as well as references to ASPIRINA as the foreign term for “aspirin.”
The Financial Times Information Ltd., El Pais, published an article entitled “Bayer
to close Barcelona aspirin factory (La quimica Bayer cierra su historica planta de
aspirinas de Barcelona).” Business and Industry, OTC LatinA, published an article that
explicitly refers to ASPIRINA as a Bayer internal analgesic product and other articles
discussing Bayer’s ASPIRINA products in Brazil. One of these articles called Bayer’s
products “aspirin-based brands” in contrast to using the term aspirin in the generic or
descriptive sense. Another Business and Industry article entitled “Bayer Aspirina-better
the brand you know-Bayer Aspirina elsewhere” describes Bayer products “Cafiaspirina”
(a caffeine and aspirin combination) and Aspirina Efervescente. The story excerpt from
Campaign discusses a “Mexican ad for a product called Aspirina (Spanish for aspirin)”
and there is no indication in the story that the mark is registered and no evidence that
U.S. consumers viewing the article would understand it is referencing Bayer’s goods.
Other NEXIS excerpts in the record show use of the term ASPIRINA as the
equivalent of the generic English term aspirin. An excerpt from the Richmond Times
Dispatch, Travel section, reads: “France, Italy, and Germany, it’s Tylenol, although it’s
pronounced tee-len-ol. Aspirin is pretty close as well. In France, it’s aspirine (as-per-
ene) and in Italy it’s aspirina (as-per-een-a).” Excerpts from the Chicago Tribune, Los
Angeles Times, and the Daily Star refer to ASPIRINA as the Spanish or Portuguese
equivalent to the generic term aspirin.
2006-1279 11
Maradona had been around. . . . He knew which medications he could
take. . . . Diego had a cold? “Quiero aspirinas – I want aspirin.”
Los Angeles Times
After a few minutes of language instruction—Where is the aspirin/Onde ha
aspirina?—the pupils seemed only to care about learning the phrase,
“When is the Portuguese lesson over?”
Chicago Tribune
Do you sell aspirin and how much does it cost? Venden Vds. Aspirina?
Cuanto cuesta?
Daily Star
This evidence demonstrates that potential consumers in this country are also exposed
to ASPIRINA as the equivalent of the term aspirin.
The NEXIS stories that were considered by the examining attorney include
stories in publications originating in foreign countries, such as the Cambridge Reporter
and the British Medical Journal. The Cambridge Reporter story “Tips for the intelligent
traveler” equated the term aspirin with the foreign term ASPIRINA (Spanish and Italian)
and the British Medical Journal letter to the editor entitled “Low dose aspirin for
preventing and treating pre-eclampsia” included citations to other published studies on
low dose aspirin or aspirina using these terms in the generic or descriptive sense. El
Ritmo de la Noche ran an article entitled “La aspirina y la heroina” or “Aspirin and
Heroine,” but it is difficult to understand how the term ASPIRINA is being used in this
article from the headline alone. The News published a column entitled “Letter from
Guadalajara, when prices of medicines hurt,” in which the columnist noted:
When campesino ranch hands I work with take ill, we haul out the
aspirina. And while “Take two aspirin, some bed rest and call me in a
couple days,” has long been a parody of lazy sawbones, that inexpensive
white pill does wonders.
2006-1279 12
That’s why more than 500 billion doses of it are taken every day the world
over.
Although in the record, the Board refused to consider the NEXIS evidence that
originated in these foreign publications, stating that references originating in foreign
countries are not probative for purposes of this proceeding. Final Decision, slip. op. at 7
n.3. We do not agree with this conclusory statement. Information originating on foreign
websites or in foreign news publications that are accessible to the United States public
may be relevant to discern United States consumer impression of a proposed mark.
See, e.g., In re King Koil, 2006 WL 639160, at *2 (assigning some probative value to
information of foreign origin); In re Remacle, 2002 WL 31563187, at *2 (finding use of
foreign internet or website information acceptable as internet is a widely-available
resource and particularly useful in cases involving “sophisticated medical technology”);
In re Cell Therapeutics, Inc., Serial Nos. 75/313,795, 75/313,796, 2003 WL 21979838,
*3-4 (TTAB Aug. 7, 2003) (relying on several NEXIS items from foreign wire services to
refuse registration of mark and distinguishing earlier decisions that accorded such
evidence little probative value given the sophisticated public and the widespread use of
personal computers that increase access to such sources); In re Telechat Network, Inc.,
Serial No. 76/535,248, 2006 WL 1404223, *2-3 (TTAB May 11, 2006) (same). The
probative value, if any, of foreign information sources must be evaluated on a case-by-
case basis. Because of the association of the proposed mark ASPIRINA with a
pharmaceutical product, the growing availability and use of the internet as a resource
for news, medical research results, and general medical information, we find that the
foreign publication evidence in this record carries some probative value with respect to
prospective consumer perception in the United States.
2006-1279 13
The NEXIS evidence of record (including the foreign publications) shows both (1)
use of the term ASPIRINA as the equivalent of the generic English term aspirin, and (2)
use of the term ASPIRINA to identify Bayer’s aspirin-based products. On balance, the
NEXIS story excerpts provide substantial evidence to support the Board’s determination
that ASPIRINA is merely descriptive of analgesic goods to United States consumers.
E. Foreign Registration of ASPIRINA
Bayer asserts that its evidence of registration of ASPIRINA in numerous foreign
countries for a long period of time “evidenc[es] Applicant’s ownership of trademark
rights around the world, including throughout the Spanish speaking world” and provides
evidence of consumer perception among potential purchasers of Bayer’s products. The
Board indicated that these registrations were “immaterial to the issue of inherent
distinctiveness and the registerability of the same term in the United States.” Final
Decision, slip op. at 9. We agree. Evidence of registration in other countries is not
legally or factually relevant to potential consumer perception of Bayer’s analgesic goods
in the United States. 6 It is true that the relevant Spanish-speaking consumer population
may include people that travel to other countries or to the United States or consumers
that access published print and electronic information originating in other countries.
However, the fact that ASPIRINA is registered in numerous Spanish-speaking countries
alone is not probative of the relevant consumer population’s perception of the mark in
the United States.
Bayer also asserts that registrations in Spanish-speaking countries demonstrate
that the term ASPIRINA is not a defined term in Spanish and is not merely the Spanish
6
We do not address here registerability determinations based on foreign
registrations under Section 44 of the Lanham Act or registrations proceeding under any
applicable treaties or conventions.
2006-1279 14
equivalent of a descriptive term in the United States. Each country that recognizes
some form of trademark protection will have its own body of law and will evaluate a
registration request in light of evidence of consumer perception in that country. This is
why aspirin is entitled to trademark protection in many other countries though it was
found generic for analgesic goods some time ago in the United States. See Bayer, 272
F. at 505. Thus, evidence of registration of ASPIRINA in another country is of little
value to our analysis of its entitlement to protection in the United States and we cannot
say it overcomes the substantial evidence that otherwise supports the Board’s decision
in this case.
II.
As the Board noted, there is conflicting evidence in the record as to whether the
term ASPIRINA is merely descriptive of analgesic goods as a variation or misspelling of
aspirin. We are not, however, reviewing this decision de novo. 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 re Jolley, 308 F.3d
1317, 1329 (Fed. Cir. 2002); see also Hoover Co. v. Royal Appliance Mfg. Co., 238
F.3d 1357, 1361 (Fed. Cir. 2001) (“The possibility of drawing two inconsistent
conclusions from the evidence does not prevent the board’s finding from being
supported by substantial evidence.” (internal citation omitted)). We find that there is
sufficient evidence as a reasonable mind might accept as adequate to support the
Board’s finding that ASPIRINA is merely descriptive.
2006-1279 15
CONCLUSION
For the foregoing reasons, the decision of the Board is
AFFIRMED.
2006-1279 16
United States Court of Appeals for the Federal Circuit
2006-1279
(Serial No. 78/212,751)
IN RE BAYER AKTIENGESELLSCHAFT
NEWMAN, Circuit Judge, dissenting.
I respectfully dissent. The role of the trademark is to identify the source and thus the
quality of goods in trade, thereby serving the public interest as well as the private interests
of commerce. Yet the panel majority denies this role to the Bayer trademark ASPIRINA,
apparently because the mark is similar to a generic word in the United States. That is not
the criterion that determines trademark status. The correct criterion is whether, as to the
specific mark ASPIRINA, it serves to associate the goods with their source, such that Bayer
and the public are entitled to the safeguards and charged with the burdens of trademark
recognition.
It is undisputed that ASPIRINA has been used as a trademark for more than a
hundred years, and is registered to Bayer in thirty-four countries. For example, the mark
ASPIRINA was registered in Mexico in 1908. The PTO in denying registration took pains to
qualify that it is not holding that ASPIRINA is a common or generic word; instead the PTO
held that ASPIRINA is "merely descriptive." Descriptive terms are not excluded from
trademark status, although they must meet a higher burden. See 1 McCarthy on
Trademarks and Unfair Competition '4:6 (4th ed. 2007) ("descriptive terms with secondary
meaning are, indeed, deserving of the label 'trademark'").
It is not disputed that ASPIRINA is a coined word that was created for trademark
purposes, and has no other origin. The record shows no usage of ASPIRINA, in any
country including the United States, other than as a trademark in association with a product
provided by Bayer. The panel majority recognizes this significant fact, acknowledging that
"[a]ll three dictionary definitions submitted by Bayer indicate that ASPIRINA is recognized
as a registered mark somewhere in the world, supporting Bayer's assertion that the
relevant purchasing public would perceive ASPIRINA as a trademark." Maj. op. at 7. The
Diccionario de la Lengua Española, Vigesimal Segundo Edition (2001), the official Spanish
language dictionary published by the Real Academia Española, contains the following
definition:
aspirina. (Del al. Aspirin, marca reg.) F. Med. Sólido blanco, cristalino,
constituido por ácido acetil salicilico, que se usa como analgésico y
antipirético. ║ 2. Comprimido fabricado con esta sustancia.
Diccionario p. 232, website at http://www.rae.es. The PTO provided the following
translation:
aspirina. (From the German Aspirin, Registered Trademark). f. Med.
White, crystalline solid, constituted by acetyl salicylic acid, which is used as
an analgesic and antipyretic ║ 2. Caplet manufactured with this substance.
PTO Br. at 7.
2006-1279 2
Spanish/English dictionaries, like the Vox Everyday Spanish and English Dictionary
("aspirina7 nf aspirin7") show the trademark status. The Internet cite "diccionarios.com"
similarly recognizes ASPIRINA's trademark status ("Aspirina, del Al. Aspirin, nombre
comercial registrado," which translates to as "Aspirina, from the German Aspirin, registered
trademark"). The Board gave dispositive weight to a few Internet sites that did not include
the trademark designation. This was incorrect, for there was no evidence of use of
ASPIRINA other than as a trademark. 1 The record contains no evidence of generic usage
in the marketplace. To the contrary, the dictionaries and the great weight of usage show
ASPIRINA as a trademark.
Commercial policy and international treaty obligations do not favor depriving
trademark owners of valuable commercial rights. See Paris Convention for the Protection
of Industrial Property of March 20, 1883, Article 10bis ("The countries of the Union are
bound to assure nationals of such countries effective protection against unfair competition
[including prohibiting] indications or allegations liable to mislead the public as to the nature,
the manufacturing process, the characteristics, the suitability for their purpose, or the
1 Bayer states that it has requested correction of the improper online uses. The
policing of well-known trademarks is well known to proprietors. See 2 McCarthy on
Trademarks and Unfair Competition '12:1 (4th ed. 2007) (discussing the importance of
policing improper trademark use by others, "[s]ometimes genericide occurs as a result of
the trademark owner's failure to police the mark, resulting in widespread usage by
competitors leading to a perception of genericness"). Such "widespread usage" is not here
suggested.
2006-1279 3
quality, of the goods.") As recognized in the Agreement on Trade-Related Aspects of
Intellectual Property Rights, Annex 1C (Apr. 15, 1994) ("use of a trademark in the course of
trade shall not be unjustifiably encumbered by special requirements"), public and private
interests are served by recognition of trademark rights, not their gratuitous eradication.
The trademark status of ASPIRINA was not shown to have been eliminated in any
country, and the record shows no challenge to its trademark status in the United States.
The PTO Board avoided ruling that ASPIRINA is generic, although on this appeal the PTO
Solicitor argued, for the first time, that ASPIRINA is generic because "aspirin" is generic.
The Solicitor argued that "[w]ere it not the case, simply adding an 'a' to words like 'vitamin,'
'penicillin,' or 'ibuprofen,' would miraculously transform each of these generic terms into
registrable trademarks." PTO Br. at 20. Such a miracle was long ago achieved at the
PTO; see, e.g., UN-ASPIRIN, U.S. Reg. No. 1311932; ASPIRIN 911, U.S. Reg. No.
2930100; VITA-MIND, U.S. Reg. No. 2944356; VITA-MAN D, U.S. Reg. 2316584; SUPER-
VITAMINS, U.S. Reg. No. 0695090; THE TEA.COM, U.S. Reg. No. 3110603; TEA LC, U.S.
Reg. No. 2978632; iPHONE, U.S. Reg. No. 2293011. In Sperry Rand Corp. v. Sunbeam
Corp., 442 F.2d 979 (CCPA 1971) the court held that the mark LEKTRONIC, although
differing by only one letter from "electronic," is not merely descriptive and is capable of
trademark status. The question is not how many letters in a word are changed; the
question is whether trademark significance is possessed. Mishawaka Rubber & Woolen
Mfg. Co. v. S.S. Kresge Co., 316 U.S. 203, 205 (1942) ("The protection of trade-marks is
the law's recognition of the psychological function of symbols. If it is true that we live by
symbols, it is no less true that we purchase by them.")
2006-1279 4
The panel majority errs in ruling that foreign trademark status is irrelevant because
foreign nations have different trademark laws. Maj. op. at 14-15. National and international
trademark systems take cognizance of trademark status in other countries, for the
international movement of goods and persons requires avoidance, not facilitation, of
commercial confusion and deception. See Paris Convention, Article 6quinquies ("Every
trademark duly registered in the country of origin shall be accepted for filing and protected
as in the other countries of the Union . . . . In determining whether a mark is eligible for
protection, all the factual circumstances must be taken into consideration, particularly the
length of time the mark has been in use"). The status in other countries of a well-known
foreign-origin mark for an established product in wide use is not irrelevant to its treatment in
the United States legal system, whether for purposes of federal registration or consumer
and source protection. Persons in the United States may know the mark ASPIRINA from
foreign markets, where goodwill has inhered for a century of sole source of the product. In
a recent decision considering issues of foreign marks, the court observed that: "Trademark
is, at its core, about protecting against consumer confusion and 'palming off.' There can be
no justification for using trademark law to fool immigrants into thinking that they are buying
from the store they liked back home." Grupo Gigante SA de CV v. Dallo & Co., 391 F.3d
1088, 1094 (9th Cir. 2004) (footnote omitted).
The issue here is not one of extra-territoriality of unregistered marks, as the panel
majority suggests, but of registration of a well-known foreign mark when the legal
requirements for United States registration have been met. See In re International Flavors
& Fragrances, Inc., 183 F.3d 1361, 1368 (Fed. Cir. 1999) ("Federal registration provides a
useful means for the public to provide enhanced legal protections to a common law
2006-1279 5
property right in exchange for protection of the public against palming off and
misrepresentation in the marketplace.") It is highly inappropriate to gratuitously deprive the
holder of a valuable property right, a mark having long international stability and repute, of
the safeguards and benefits of federal registration. To deny the statutory federal
registration, there must be clear and convincing evidence of the invalidity of that property
right and a sound public interest served by its forfeiture. See In re Trade-Mark Cases, 100
U.S. 82, 92 (1879) ("The right to adopt and use a symbol or a device to distinguish the
goods or property made or sold by the person whose mark it is, to the exclusion of use by
all other persons, has long been recognized by the common law [to be] a property
right . . . .")
The principle that law abhors a forfeiture is imbedded in our jurisprudence, and it is
noteworthy that the decision of the PTO left the door open for proceedings such as a
showing of secondary meaning in the United States. See McCarthy, supra. However, the
panel majority goes farther than the PTO and holds that the ASPIRINA mark is simply the
translation of a generic word, thereby slamming shut the PTO's open door. Although the
panel majority acknowledges that the issue of whether ASPIRINA is a generic word was not
before the Board and is not before this court, the majority holds it unregistrable because it
is similar in "appearance, sound, and meaning" to the generic English word "aspirin." Thus
the court holds that because "aspirin" is generic, so is ASPIRINA. There was no hearing on
the issue of genericness. See In re Merrill Lynch, Pierce, Fenner, and Smith, Inc., 828 F.2d
1567, 1571 (Fed. Cir. 1987) ("The burden of showing that a proposed mark is generic
remains with the Patent and Trademark Office [and requires a] 'substantial showing by the
Examining Attorney . . . .'" (quoting The Trademark Manual of Examining Procedure
2006-1279 6
'1305.04 (1974, rev. 1983))). The Court has consistently held that a hearing is necessary
before the deprivation of a property right. See, e.g., Fuentes v. Shevin, 407 U.S. 67, 80-82
(1972) ("The purpose of this [Due Process notice and hearing] requirement is not only to
ensure abstract fair play to the individual. Its purpose, more particularly, is to protect his
use and possession of property from arbitrary encroachment -- to minimize substantively
unfair or mistaken deprivations of property . . . .").
On the examination record, the Board's refusal of registration is not supported. I
must, respectfully, dissent.
2006-1279 7