1203.02(c) Distinction Between Marks Comprising Deceptive Matter (§2(a)) and Deceptively Misdescriptive Marks (§2(e)(1))
If the first two inquiries set forth by the Federal Circuit in In re Budge Manufacturing Co., 857 F.2d 773, 775, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988) (i.e., whether a mark is misdescriptive of the goods or services and whether prospective purchasers are likely to believe the misdescription) are answered affirmatively, the mark is deceptively misdescriptive of the goods or services under §2(e)(1) of the Trademark Act. See TMEP §1209.04 regarding deceptively misdescriptive marks.
The third inquiry, whether the misdescription is likely to affect the decision to purchase, distinguishes marks that are deceptive under §2(a) of the Act from marks that are deceptively misdescriptive under §2(e)(1). To be deceptively misdescriptive under §2(e)(1), the misdescription must be deceptive in some way; i.e., consumers of the goods or services are likely to believe the misrepresentation. TMEP §1209.04 (citing Binney & Smith Inc. v. Magic Marker Indus., Inc., 222 USPQ 1003, 1011 (TTAB 1984)). That is, the misdescription concerns a feature that would be relevant to the decision to purchase the goods or use the services. In re Shniberg, 79 USPQ2d 1309, 1311 (TTAB 2006); see In re Hinton, 116 USPQ2d 1051, 1052, 1055 (TTAB 2015) "If the misdescription is more than simply a relevant factor that may be considered in purchasing decisions but is a material factor, the mark would also be deceptive" under §2(a). In re Shniberg, 79 USPQ2d at 1311; see In re White Jasmine LLC, 106 USPQ2d 1385, 1392 (TTAB 2013) See TMEP §1209.04 regarding the believability requirement for deceptive misdescriptiveness and §1203.02(d) regarding determining materiality.
If it is difficult to determine whether misdescriptive matter would materially affect a decision to purchase, the examining attorney should refuse registration under §2(a) and alternatively under §2(e)(1). See In re Canine Caviar Pet Foods, Inc., 126 USPQ2d 1590 (TTAB 2018); In re White Jasmine LLC, 106 USPQ2d at 1385; In re Phillips-Van Heusen Corp., 63 USPQ2d 1047 (TTAB 2002); see also R. Neumann & Co. v. Overseas Shipments, Inc., 326 F.2d 786, 140 USPQ 276 (C.C.P.A. 1964). See TMEP §1203.02(e) regarding procedures for issuing deceptiveness refusals under §2(a).
Marks that are deceptive under §2(a) are unregistrable on either the Principal Register or the Supplemental Register, whereas marks that are deceptively misdescriptive under §2(e)(1) may be registrable on the Principal Register with a showing of acquired distinctiveness under §2(f), 15 U.S.C. §1052(f), or on the Supplemental Register, if appropriate.
See TMEP §1210.05(d) regarding the distinction between marks comprising deceptive matter under §2(a) and matter that is primarily geographically deceptively misdescriptive under §2(e)(3).