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: Cogito Ergo Teneo; an intellectual property blawg

Trademark Law: Bayer 052407

By Sean Fowler

In Re Bayer Aktiengesellschaft, Federal U.S. Circuit Court of Appeals, No. 2006-1279 (May 24, 2007):

Issue:
Bayer, a maker of aspirin-based pain relievers, wanted to register the word, "Aspirina," as a trademark. The examining attorney refused the trademark on the grounds that the term would either be applied descriptively or deceptively misdescriptively. Aspirina, said the examining attorney, is the Spanish word for aspirin according to an online dictionary and was the equivalent of aspirin in the great majority of search results on Google -- when Aspirina is used as the search term. Bayer shot back that Aspirina was a made up word with no meaning, the online dictionary was incorrect in not attributing the word to Bayer, and that Bayer was currently trying to work with Google to fix the search results to eliminate the false association. Further, Bayer provided evidence that Spanish-speaking individuals throughout the world understand Aspirina to be Bayer. In a final ruling, the examining attorney answered back that a search through Nexis for Aspirina also led to the conclusion that Aspirina was Spanish for aspirin, and two additional online dictionaries again confirmed this. Further, Bayer's aspirina.com site was a Spanish-language site for Bayer's aspirin product. Bayer submitted its own dictionary evidence to no avail, and so appealed to the TTAB.

The examining attorney argued to the Board that Aspirina was Spanish for aspiring, but the Board declined to look into the foreign equivalents argument. The Board said that it was clear to them that consumers would find Aspirina to be a misspelling or variation on the spelling for aspirin, or -- alternatively -- would assume that the word indicated that the products associated with the word were aspirin-based. Merely descriptive, said the Board, and Bayer appealed the TTAB.

Pertinent issues of trademark law:
1) Does an additional letter added to a generic word associated with an applying company's product make the resulting word trademarkable?
2) What is the reliability of online dictionaries and sources?

Conclusion:
The court found that the balance of dictionary evidence used in the initial determinations were generally in agreement that Aspirina meant aspirina, and the court found this to be a valuable factor in its analysis. Web searches, the aspirina.com site, and Nexis results showed mixed results as to whether Aspirina was a trademark of Bayer or just a foreign language equivalent of aspirin. However, the balance of the web search and Nexis search results weighed in favor of the descriptiveness ruling. Bayer's most recent argument that Bayer owned foreign trademarks for the word were not dispositive to the court, since -- in some countries -- Aspirin was still a valid trademark. Since the court could only review under the very deferential "substantial evidence standard," it could only come to the conclusion that -- where there was enough evidence to warrant more than one conclusion -- the TTAB's decision to favor one must be upheld.

Full post as published by Cogito Ergo Teneo; an intellectual property blawg on November 11, 2007 (boomark / email).