"Aspirina" Merely Descriptive For Analgesic Goods

In In re Bayer Aktiengesellschaft (No. 2006-1279; May 24, 2007), a Federal Circuit panel offers a split decision affirming the Trademark Trial and Appeal Board’s ruling that the proposed mark ASPIRINA is merely descriptive for analgesic goods. Bayer submitted , among other evidence, extensive evidence of foreign registration of the mark ASPIRINA.

According to the dissent, the appropriate criterion which determines trademark status, is whether the specific mark at issue serves to associate the goods with their source. The dissent argues that the question is not how many letters in a word are changed, but whether trademark significance is possessed. Therefore, the dissent concludes that ASPIRINA is a coined word, which has no other origin and was created for trademark purposes and 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. In so concluding, the dissent argues that 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.

The majority counters by stating that the appearance, sound and meaning of the mark ASPIRINA when considered as a whole against that of the term aspirin demonstrates that the mark ASPIRINA is sufficiently similar to aspirin and accordingly, is merely descriptive of analgesic goods. The mere addition of the letter “a” at the end of the generic term aspirin is deemed insufficient to transform ASPIRINA into an inherently distinctive mark for analgesics. The majority further concludes that evidence of registration in other countries is not legally or factually relevant to potential consumer perception in the United States. Accordingly, the fact that ASPIRINA is registered in numerous Spanish-speaking countries is not considered probative of the relevant consumer’s perception of the mark in the United States.