Are There Differences Between Deceptive Trademarks And Deceptively Misdescriptive Marks?

Yes there are differences between a refusal issued on deceptive grounds and one issued because the mark is deceptively misdescriptive. Under the Trademark Act, Section 2(a) a mark cannot register on either the Principal or the Supplemental Register if it is held to be deceptive. An example would be a mark that falsely describes the material content of a product. The following marks were held to be deceptive TEXHYDE AND SOFTHIDE for synthetic fabrics and imitation leather material. See Intex Plastics Corporation, 215 U.S.P.Q. 1045 1982 WL 52076 (TTAB 1982). Compare this finding with A.F. Gallun & Sons Corp., where it was held that the trademark COPY CALF was not deceptive for billfolds and wallets even though it was not made of leather because it was found to be a play on words. The rationale was that consumers would understand COPY CALF to be a pun related to the phrase copy cat insinuating the goods were made of imitation material.

The Federal Circuit has enunciated a test utilized to determine if matter is deceptive and thus not registrable at the United States Patent & Trademark Office:

(1) Is the term misdescriptive of the character, quality, function, composition or use of the goods?

(2) If it is misdescriptive, then would a potential consumer likely believe that the misdescription actually describes the goods?

To prove this prong of the test an Examining Attorney could produce evidence that consumers regularly encounter goods or services containing the characteristic alleged in the mark. For example, in a case where the mark was LOVEE LAMB for seat covers and the seat covers were not made of lambskin, the Examiner provided evidence that seat covers can be and sometimes are made of lambskin. In that case, the Examiner concluded that the mark LOVEE LAMB was deceptive for seat covers.

If an Examiner would say yes to these two questions then the mark may be considered deceptively misdescriptive and refused under Section 2(e) of the Trademark Act. The difference with this refusal compared to a refusal based on deceptive grounds is discussed below in more detail, but essentially it is not an absolute bar to registration. Even if the true nature of the goods or services is evident from labels, advertisements, or other material this may not preclude a finding that a mark is deceptively misdescriptive.

If the Examiner concludes that the mark is deceptively misdescriptive, he still will go on to consider prong three below.

(3) Is the misdescription likely to affect a significant portion of the consumers’ decisions to purchase the goods.

If an Examining Attorney answers yes to the third prong, then the application will be refused on grounds of deceptiveness and the mark will not be allowed to register on either register at the United States Patent & Trademark Office. See our web page entitled, Trademark Applications Refusals Based On Descriptiveness And Deceptiveness, for more information on possible refusals by an Examiner.

In regard to this prong, traditionally consumers will be inclined to purchase products if they believe the product provides a (1) health benefit; (2) an enhanced performance function; (3) a superior quality; (4) a price differential; or (5) relates to a religious practice or a social policy.

If the Examiner is not confident that the mark is misdescriptive then the Examiner must attempt to contact the applicant and inquire if the goods contain the relevant feature. If the goods do not contain the feature, the Examiner will most likely issue a refusal based on the grounds of deceptively misdescriptive, assuming a consumer would believe the misdescription actually describes the goods. If an Office action is issued, it will include an information request under 37 C.F.R. §2.61(b).

In some cases, an applicant can produce evidence that the relevant prospective purchasers would not expect the goods sold under the mark to contain the feature named in the mark. See In re Robert Simmons, Inc., 192 U.S.P.Q. 331 1976 WL 21133 (TTAB 1976) where it was held that WHITE SABLE was not deceptive of an artist’s paint brush.

If a mark is held to be deceptively misdescriptive, it is possible to register the mark based on Section 2(f) of the Trademark Act, upon a demonstration of acquired distinctiveness or it may register on the Supplemental Register as well. If you have questions relating to your proposed trademark, please feel free to contact us for a courtesy consultation.