Internet Evidence in the Evaluation of a Proposed Trade-mark

In a 2-1 split decision, the United States Court of Appeals for the Federal Circuit (Court of Appeal) upheld a decision of the Trademark Appeal Board (Board), ruling that the proposed mark ASPIRINA is merely descriptive for analgesic goods [In Re Bayer Aktiengesellschaft, 2006-1279 (Fed Cir 2007)]. The Board concluded that consumers would view ASPIRINA as a mere variation or misspelling of aspirin, a generic term for a class of analgesic goods composed of acetyl salicylic acid. The Board relied heavily on Internet evidence when reaching its decision. It considered evidence from online English and Spanish dictionaries, translations of the proposed mark obtained using free online translation web sites, GOOGLE search results, the applicant's web site, translations of the applicant's web site performed using GOOGLE's free translation software, and article excerpts obtained from an online search of the NEXIS database. While the Applicant opposed much of this evidence on the ground that it was unreliable, the Court of Appeal held that Internet evidence is generally admissible for the purposes of evaluating a trade-mark. It commented that definitions from readily available online resources are useful in determining consumer perception and that foreign web sites that are accessible to the US public may be relevant for determining US consumer impression of a proposed mark. This case underlines the heightened use of the Internet in the evaluation of a proposed trade-mark and presumably this will continue as new Internet resources, such as online translation software, are developed and accepted. For the full reasons of the judgment, see: http://www.fedcir.gov/opinions/06-1279.pdf Summary by: Michael Migus