In re Bayer Aktiengesellschaft

1. Feb 2003Bayer applies for ASPIRINA

   Bayer Aktiengesellschaft files an intent-to-use application (Serial 78/212,751) to register ASPIRINA for analgesics in International Class 5 on Feb. 10, 2003.

2. The refusal§2(e)(1) refusal (descriptive / deceptively misdescriptive)

   The examining attorney refuses under §2(e)(1) on the ground that ASPIRINA is merely descriptive, or in the alternative deceptively misdescriptive, of analgesics — relying on Spanish and English dictionaries plus online and search-engine evidence that 'aspirina'/'aspirin' names the same analgesic compound.

3. Dec 2005 / Mar 2006TTAB affirms the refusal

   The Board decides Dec. 1, 2005 and reissues the decision as a precedent on Mar. 17, 2006 (the conventionally citable Board date the Federal Circuit reviewed). It finds ASPIRINA and 'aspirin' close enough in appearance, sound, and meaning that adding a final 'A' does not make the term inherently distinctive for analgesics, and affirms the §2(e)(1) refusal on the mere-descriptiveness branch.

4. May 2007Federal Circuit affirms

   The court (opinion by Moore, J.; Newman, J., dissenting) holds the Board's descriptiveness finding was supported by substantial evidence and sets out its observations for weighing internet and search-engine evidence.

5. Sep 2007Application abandoned

   After the affirmance, the ASPIRINA application (Serial 78/212,751) goes abandoned on Sept. 27, 2007 — recorded as 'abandoned after ex parte appeal'; it never registered.

These are two distinct teaching points, not a numbered two-prong test that Bayer announces. (1) Substantial evidence is a deferential standard: as the court put it, 'the possibility of drawing two inconsistent conclusions from the evidence does not prevent the [Board's] finding from being supported by substantial evidence' — so where the record could support either result, the Board is affirmed. (2) The internet-evidence weighting is the court's own articulation and grades web proof by how much usage context it carries. Importantly, the Board declined to decide the case under the doctrine of foreign equivalents: although the examiner cited the Spanish meaning, the Board and the Federal Circuit rested the §2(e)(1) refusal on ASPIRINA being a descriptive variation — a near-misspelling — of the English generic term 'aspirin,' similar in sound, appearance, and meaning. Treat the Spanish-source evidence as corroborating, not as the holding. And note the refusal carried an alternative deceptive-misdescriptiveness ground under §2(e)(1); the Board affirmed on mere descriptiveness. The case is cited for its evidentiary framework and its application of substantial-evidence deference, not for restating the descriptiveness standard.

“Search engine results — which provide little context to discern how a term is actually used on the webpage that can be accessed through the search result link — may be insufficient to determine the nature of the use of a term or the relevance of the search results to registration considerations.”

Bayer cuts both ways — use the side that fits your record. To attack an examiner's web evidence, fault bare snippets that lack page context. But know the flip side: if your own contrary evidence is just as thin, the deferential substantial-evidence standard will favor the Board. And note that TMEP §710.01(b) cites Bayer as authority FOR admitting internet evidence and for the proposition that examiners may rely on webpages — so expect the examiner to meet a snippet objection by pointing to Bayer and the full page behind the link. Your leverage is only against context-free snippets, not web evidence generally. The durable move is to put full webpages (not snippets) into the record, on whichever side you sit.

• •It is an examiner-friendly affirmance, not an applicant win. Bayer lost; the case mostly teaches when web evidence is good enough, which often helps the Office more than the applicant.
• •The snippet critique has limits. Bayer does not say search results are worthless — it says bare summaries lack context, and the affirmance ultimately rode on dictionaries, NEXIS articles, and Bayer's own translated website, not the Google results. An examiner who supplies the full webpage behind the result has met the court's standard.
• •Substantial evidence is deferential. Once the Board has credible record support, showing the evidence could also point your way will not reverse it — 'two inconsistent conclusions' still leaves the finding intact.
• •Foreign-language and foreign-origin evidence can hurt you. Bayer confirms that sources reaching the U.S. public — including non-English ones — bear on U.S. consumer perception, so 'that's a foreign website' is not a categorical objection. But note the Board rested on English-language similarity to generic 'aspirin' and expressly declined a foreign-equivalents analysis.
• •It does not change the descriptiveness test itself. Bayer is about the weight of internet proof, not a new standard for what 'merely descriptive' means — for that, cite the immediacy line of cases.
• •It will not save a near-generic term. If the mark is essentially a one-letter variant of the goods' generic name, fixing the web-evidence objection still leaves the dictionaries.

If this analysis reports a registration rate for applications citing Bayer, read it as selection bias rather than a verdict on the cite. Bayer is reached for in §2(e)(1) fights where the descriptiveness evidence is largely web-based — often the harder refusals to dislodge — so a below-baseline rate would reflect the kind of case in which the citation appears, not the persuasiveness of the case itself. The citation does not move an examiner; the quality of the webpage evidence you put in the record does.

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