In two recent precedential decisions of the Trademark Trial and Appeal Board (the “Board”), it was determined that the proposed trademark CLEAR for footwear, lingerie, and other related clothing items and for purses and other types of handbags was deceptively misdescriptive of the goods. See In re Dolce Vita Footwear, Inc., 2021 USPQ2d 478 (TTAB 2021) [precedential] and In re Dolce Vita Footwear, Inc., 2021 USPQ2d 479 (TTAB 2021) [precedential]. See our webpage entitled, Trademark Application Refusal Based On Descriptiveness and Deceptiveness, for more details on deceptively misdescriptive refusals. It should be noted that the Examining Attorney first refused the application based on the grounds of the mark being merely descriptive of the goods. Once the Applicant raised the issue that its goods did not have features that could be described as clear or transparent, the Examining Attorney then refused the application on the alternative ground that the proposed mark is deceptively descriptive of the goods. In the final office action, both 2(e)1 refusals were maintained, and the id was amended to exclude “transparent goods”. The Applicant filed an appeal.
It is important to keep in mind that the Examining Attorney’s primary objective is to protect the public from confusion or deception. Based on use of Dolce Vita Footwear Inc.’s (Applicant’s) proposed trademark CLEAR for apparel, bags, and footwear the Examining Attorney argued that the public will believe that the branded goods are transparent or clear. The determination that the mark is misdescriptive is based on evidence showing it is common in the fashion industry to have clear footwear, clothing, and bags even though Applicant amended the id to exclude transparent goods.
The Examining Attorney submitted definitions for the term “Clear”, screenshots from the Applicant’s website showing descriptive use of the word “Clear”, and webpages from competitors’ websites in the fashion industry. These screenshots demonstrated use of the term “Clear” in conjunction with features such as transparent straps or heels on footwear or features of lingerie, skirts, dresses or bags. For the second prong of the test, the “reasonably prudent consumer” test is applied.