Bayer Aktien-gesellschaft

Trademark Trial and Appeal Board

Dec 1, 2005

No. 78212751 (T.T.A.B. Dec. 1, 2005)

Hearing:
September 14, 2005 Mailed: 12/1/2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Bayer Aktiengesellschaft
________

Serial No. 78212751
_______

Michael L. Lovitz and Stanley C. Macel of Connolly Bove
Lodge & Hutz for applicant.

Anne Madden, Trademark Examining Attorney, Law Office 103
(Michael Hamilton, Managing Attorney).
_______

Before Quinn, Walters and Bucher, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

An application was filed by Bayer Aktiengesellschaft
to register the mark ASPIRINA for “analgesics.”1
The trademark examining attorney refused registration
under Section 2(e)(1) of the Trademark Act on the ground
that applicant’s mark, if used in connection with
applicant’s goods, would be merely descriptive thereof.

1 Application Serial No. 78212751, filed February 10, 2003, based
on an allegation of a bona fide intention to use the mark in
commerce.
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 78212751
2
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs. An oral
hearing was held at which applicant’s counsel and the
examining attorney appeared.2
The examining attorney contends that the term
“aspirina” is the Spanish word for “aspirin” and that,
therefore, the term is, at the very least, merely
descriptive for analgesics. In support of the refusal, the
examining attorney submitted definitions from four online
dictionaries retrieved from the Internet; a search report
showing the first ten hits for “aspirina” obtained by the
GOOGLE search engine; a copy of a page from the English
translation of applicant’s Spanish web site; a copy of
applicant’s previously filed and now-abandoned application
to register the same mark for the same goods; and articles
retrieved from the NEXIS database. In connection with
applicant’s earlier application, the examining attorney
points to applicant’s acknowledgement, in response to the
Office’s inquiry, that the Spanish term “aspirina” is

2 Applicant’s counsel raised for the first time at the oral
hearing his client’s desire to seek remand for consideration of a
prospective amendment to the Supplemental Register (in
conjunction with an amendment to allege use). The Board
explained that, given the late stage of the appeal process, an
amendment to the Supplemental Register would not be entertained.
Thus, the issue herein is not genericness, but rather mere
descriptiveness; that is, whether applicant’s mark is inherently
distinctive as to allow registration on the Principal Register.
Ser No. 78212751
3
translated in English as “aspirin,” and the subsequent
express abandonment of the application. In sum, the
examining attorney asserts that “the term comprising the
applicant’s mark is the foreign equivalent of ordinary
English wording, which is in common usage in the
pharmaceutical industry as evidenced by the dictionary
definitions/translations of record, LEXIS/NEXIS evidence of
record, and website evidence of record.” (Appeal Brief,
unnumbered p. 5).
Applicant states that it owns registrations (copies
and/or renewals have been submitted) in several Spanish-
speaking countries, including Bolivia, Chile, Columbine,
Dominican Republic, Ecuador, Guatemala, Honduras, Mexico,
Nicaragua, Peru, El Salvador, Spain and Uruguay. Applicant
also owns International Registrations, giving it protection
in no less than twenty countries. Applicant contends that
“ASPIRINA” is a coined term having no specific definition
or meaning in Spanish or in any other language. Rather,
applicant maintains, its only use is as a trademark
identifying applicant as the source of its analgesics.
Although applicant acknowledges that U.S. consumers “not
familiar with the international fame” of applicant’s mark
may believe that the mark is suggestive of the term
“aspirin” when applied to applicant’s analgesics, applicant
Ser No. 78212751
4
argues that consumers will recognize that applicant’s mark
differs from the English word “aspirin” in spelling,
pronunciation and meaning, and, thus, they would not view
the mark as merely descriptive. With respect to its
earlier application, applicant claims that the translation
of “aspirina” to “aspirin” was submitted in error.
Applicant also contends that the majority of NEXIS excerpts
relied upon by the examining attorney refer to applicant’s
mark as a source indicator for applicant’s analgesics. In
support of its position, applicant submitted the Spanish
version of a portion of its web site, copies of listings
from Spanish/English dictionaries, and copies of its
foreign registrations. Applicant also submitted a letter
from its counsel to the legal department of Google, Inc.
pointing out what applicant alleges is Google, Inc.’s
improper translation of “aspirina” to “aspirin.” Google
Inc.’s letter in response is also of record wherein
applicant is informed that the translation is “produced
automatically,” and that “we will remove the ‘Translate
this page’ link that appears next to the www.aspirina.com
site in our search results.”
A term is deemed to be merely descriptive of goods or
services, within the meaning of Trademark Act Section
2(e)(1), if it forthwith conveys an immediate idea of an
Ser No. 78212751
5
ingredient, quality, characteristic, feature, function,
purpose or use of the goods or services. See, e.g., In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); and
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215,
217-18 (CCPA 1978). A term need not immediately convey an
idea of each and every specific feature of the applicant’s
goods or services in order to be considered merely
descriptive; it is enough that the term describes one
significant attribute, function or property of the goods or
services. See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB
1982); and In re MBAssociates, 180 USPQ 338 (TTAB 1973).
Whether a term is merely descriptive is determined not
in the abstract, but in relation to the goods or services
for which registration is sought, the context in which it
is being used or is intended to be used on or in connection
with those goods or services, and the possible significance
that the term would have to the average purchaser of the
goods or services because of the manner of its use or
intended use. That a term may have other meanings in
different contexts is not controlling. In re Bright-Crest,
Ltd., 204 USPQ 591, 593 (TTAB 1979). It is settled that:
....the question of whether a mark is
merely descriptive must be determined
not in the abstract, that is, not by
asking whether one can guess, from the
mark itself, considered in a vacuum,
Ser No. 78212751
6
what the goods or services are, but
rather in relation to the goods or
services for which registration is
sought, that is, by asking whether,
when the mark is seen on the goods or
services, it immediately conveys
information about their nature.

In re Patent & Trademark Services Inc., 49 USPQ2d 1537,
1539 (TTAB 1998).
There are several dictionary listings of record, and
the definitions relied upon by applicant and the examining
attorney are conflicting. The examining attorney’s
evidence shows online Spanish/English translations of the
term “aspirina” as “aspirin.” (www.yourdictionary.com;
www.ultralingua.net; and www.altavista.com). To counter
this evidence, applicant submitted a dictionary listing
from Diccionario de la Lengua Española (2d ed. 2001) that
is maintained, according to applicant, by the Real Academia
Española; applicant describes this publication as “the
official Spanish language resource (in the same manner as
the Oxford English Dictionary is the official English
language resource).” (Appeal Brief, p. 5). The listing is
as follows:
Aspirina. (From the German Aspirin,
Registered Trademark). F.Med. White,
crystalline solid, constructed by
acetyl salicyclic acid, which is used
as an analgesic and antipyretic. 2.
Caplet manufactured with this
substance.
Ser No. 78212751
7

The NEXIS excerpts relied upon by the examining
attorney likewise are conflicting. The examining attorney
submitted articles retrieved from the NEXIS database
showing uses of “aspirina” as the Spanish equivalent of the
English term “aspirin.” Some of these uses are reproduced
below:
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, December 11, 2003)

“Quiero aspirinas--I want aspirin.”
(Los Angeles Times, July 1, 1994)

There’s a Mexican ad for a product
called Aspirina (Spanish for aspirin).
(Campaign, July 5, 2002)

Do you sell aspirin and how much does
it cost? Venden Vds. Aspirina? Cuanto
cuesta?
(Daily Star, June 21, 2001)

As pointed out by applicant, however, other excerpts
submitted by the examining attorney refer to “aspirina” or
“Aspirina” as a product of applicant’s (e.g., “Bayer’s
Aspirina” or “a product called Aspirina”).3
We have considered the evidence of record against the

3 A common mistake of examining attorneys is submission of NEXIS
excerpts originating in foreign countries. The present record
includes such evidence, and these excerpts are not probative on
the issue before us.
Ser No. 78212751
8
backdrop of the genericness of the term “aspirin.” Judge
Learned Hand long ago determined that “aspirin” is generic
for an analgesic. Bayer Co. v. United Drug Co., 272 F. 505
(S.D.N.Y. 1921). In this connection, we take judicial
notice of the dictionary definition of “aspirin”: “a white
crystalline compound....of salicyclic acid used esp. in
tablet form as an antipyretic and analgesic.” Webster’s
Third New International Dictionary (unabridged ed. 1993).
Thus, starting from the premise that “aspirin” is generic
for analgesics in this country, the question is whether a
slight variation, ASPRINA, is merely descriptive for
analgesics.
We find that the mark ASPIRINA is not inherently
distinctive, but, rather, is merely descriptive and, thus,
is not registrable on the Principal Register. In view of
the closeness in sound, appearance and meaning between the
generic term “aspirin” and applicant’s applied-for mark
ASPIRINA, we see no reason to engage in the type of foreign
equivalent analysis urged by the examining attorney.
Irrespective of any Spanish/English translation,4 or the
purported renown of the mark in foreign countries,

4 Although applicant contends that the translations provided by
the examining attorney (either in the dictionary or in the NEXIS
articles) are in error, consumers in this country nevertheless
have been exposed to them.
Ser No. 78212751
9
prospective consumers in this country, aware of the generic
term “aspirin,” will view ASPIRINA as a slight variation
(or even a misspelling) of the generic term and, thus, the
term is merely descriptive of analgesics. The term
immediately conveys the impression that applicant’s
analgesics are aspirin-based products. See In re Coney
Island Bredzel, 199 USPQ 45 (TTAB 1978).
We are not persuaded that a different result is
mandated by applicant’s ownership of foreign registrations
for the mark sought to be registered in the United States.
The fact that a term is registered in a foreign country,
pursuant to foreign trademark laws, is immaterial to the
issue of inherent distinctiveness and the registrability of
the same term in the United States. See In re Hag
Aktiengesellschaft, 155 USPQ 598 (TTAB 1967).
Applicant, in arguing that its mark is only
suggestive, also cites to two third-party registrations of
“ASPER-” formative marks. Firstly, the registrations were
not properly made of record. Secondly, even if considered,
the registrations do not compel a different result herein.
In re Nutt Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564,
1566 (Fed. Cir. 2001) [“Even if prior registrations had
some characteristics similar to [applicant’s] application,
Ser No. 78212751
10
the PTO’s allowance of such prior registrations does not
bind the Board or this court.”].
In reaching our decision, we likewise have not
accorded any probative value to applicant’s translation
submitted in its earlier application. The examining
attorney essentially urges us to consider applicant’s
earlier translation of “aspirina” to “aspirin” as
tantamount to an admission against interest. Applicant
explains its previous statement as follows:
In responding to an Office action
during prosecution of Applicant’s prior
application, counsel for applicant
entered an English translation for
“ASPIRINA” into the file, when in fact
no such English translation exists.
Once advised of the error, and the
available options, applicant determined
it would be best to proceed with a new
application for its mark, so as to
ensure the application file was
accurate and correct. Applicant then
requested that the first application be
expressly abandoned so as to avoid any
confusion between the files, and to
allow the new application to proceed
apace. Applicant specifically denies
the Examiner’s contention that the
express abandonment “is evidence that
applicant recognized that the mark was
merely descriptive.” To the contrary,
had applicant truly had such a belief,
applicant would have known that a new
application would not be successful,
absent some change in circumstance
(such as establishing evidence of
acquired distinctiveness). That
applicant refiled its application
demonstrate’s [sic] applicant’s bona
Ser No. 78212751
11
fide believe [sic] that its mark is not
merely descriptive, as explained
herein. (Appeal Brief, p. 15)(bold in
original)

Cf. Interstate Brands Corp. v. Celestial Seasonings Inc.,
576 F.2d 926, 198 USPQ 151, 154 (CCPA 1978)[party’s prior
statement, in unrelated proceedings, of opinion on legal
issue which is contrary to position taken in present
proceeding is not an estoppel, but is relevant to the
extent that it may be “illuminative of shade and tone in
the total picture confronting the decision maker”; and
“[u]nder no circumstances, may a party’s opinion, earlier
or current, relieve the decision maker of the burden of
reaching his own ultimate conclusion on the entire
record.”]. So as to be clear, we have made our decision
based on the evidence of record.
The intent of Section 2(e)(1) is to protect the
competitive needs of others, that is, “descriptive words
must be left free for public use.” In re Colonial Stores,
Inc., 394 F.2d 549, 157 USPQ 382, 383 (CCPA 1968). The
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.
Ser No. 78212751
12
We conclude that the applied-for mark ASPIRINA, if
used in connection with analgesics, would be merely
descriptive thereof.
Decision: The refusal to register is affirmed.