As trademark practitioners know, in the United States, “aspirin” is considered generic for the analgesic acetylsalicylic acid.  Although Bayer continues to own valid registrations of ASPIRIN as a trademark elsewhere in the world, “aspirin” has been generic in the United States for many years.

Nonetheless, Bayer uses the mark ASPIRINA elsewhere in the world and sought to obtain a trademark registration of ASPIRINA in the United States.  The USPTO Examining Attorney refused registration of ASPIRINA on the grounds that the mark is “merely descriptive” of aspirin.  After a motion to reconsider was denied by the Examining Attorney, Bayer appealed the decision to the Trademark Trial & Appeal Board (“TTAB”), which upheld the Examining Attorney’s refusal on the grounds that the mark was merely descriptive.

Bayer appealed the decision to the Federal Court of Appeals Second Circuit.  On May 24, 2007, the court released its opinion.

The Second Circuit upheld the Board’s decision.   However, the Second Circuit went to great lengths to make clear that it was a close call in light of the various conflicting bits of evidence.  Nonetheless, the dissent makes some interesting points.  Among them, Judge Newman writes, “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.’”

On this point, he concludes:

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 ‘1305.04 (1974, rev. 1983))).

Based on Judge Newman’s analysis, it seems that the Second Circuit has in fact decided an issue which was not before it.

Nonetheless, in concluding, the majority switches gears saying, “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.”

Without commenting on merits of registration of ASPIRINA, the rationale of the majority seems a bit tenuous as it confounds a genericness and merely descriptive.

I am wondering whether Bayer will appeal this decision to the Supreme Court or, at least, request a rehearing en banc at the Second Circuit.