Duopross Meditech Corp. v. Inviro Medical Devices, Ltd.
695 F.3d 1247
| Fed. Cir. | 2012Background
- The TTAB dismissed DuoProSS’s counterclaims to cancel Inviro’s registrations, and the district court reversed to the extent it related to those marks.
- Inviro owns the SNAP! design mark and the SNAP SIMPLY SAFER standard-character mark, both in class 10 for medical devices.
- DuoProSS sought cancellation of Inviro’s SNAP marks and additional SNAP-based registrations; Inviro withdrew one cancellation but DuoProSS pursued others.
- The Board held SNAP (typed) marks ’604 and ’944 were merely descriptive, canceled them, but declined to cancel the SNAP! design mark and SNAP SIMPLY SAFER mark.
- The court reversed, finding the Board erred by dissecting the SNAP! design mark, failing to support its descriptiveness conclusion, and misapplying puffery to SNAP SIMPLY SAFER; case remanded with judgment for cancellation of Registrations 2,944,686 and 3,073,371.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Is SNAP! design mark merely descriptive? | DuoProSS argues the mark is not descriptive as a whole. | Inviro contends the mark communicates snapping of the plunger and related function. | SNAP! design mark is merely descriptive. |
| Did the Board properly treat the mark as a whole or improperly dissect it? | DuoProSS contends the commercial impression must be assessed as a whole. | Inviro argues the mark’s components can be evaluated separately. | Board erred by dissecting the mark; must consider as whole. |
| Is SNAP SIMPLY SAFER merely descriptive, and can puffery alter descriptiveness? | DuoProSS contends the combination is descriptive and puffery does not matter. | Inviro argues alliteration/puffery may create a non-descriptive impression. | SNAP SIMPLY SAFER is merely descriptive; puffery does not render it non-descriptive. |
Key Cases Cited
- In re Oppedahl & Larson LLP, 373 F.3d 1171 (Fed. Cir. 2004) (mark must be considered as a whole; dissection not allowed)
- Abcor Development Corp. v. United States, 588 F.2d 811 (CCPA 1978) (descriptive vs. suggestive test; wholes must be considered)
- Dial-A-Mattress Operating Corp. v. Dormia, Inc., 240 F.3d 1341 (Fed. Cir. 2001) (placement on continuum is a question of fact)
- In re Pacer Tech., 338 F.3d 1348 (Fed. Cir. 2003) (substantial evidence standard; defer to Board findings)
- In re Boston Beer Co., 198 F.3d 1370 (Fed. Cir. 1999) (puffery generally descriptive for purposes of descriptiveness)