1203.02    Deceptive Matter

Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a),  is an absolute bar to the registration of deceptive matter on either the Principal Register or the Supplemental Register. Neither a disclaimer of the deceptive matter nor a claim that it has acquired distinctiveness under §2(f) can obviate a refusal under §2(a) on the ground that the mark consists of or comprises deceptive matter. See Am. Speech-Language-Hearing Ass’n v. Nat'l Hearing Aid Society, 224 USPQ 798, 808 (TTAB 1984) ; In re Charles S. Loeb Pipes, Inc., 190 USPQ 238, 241 (TTAB 1975).

1203.02(a)    Types of Deceptive Marks

A deceptive mark may be comprised of: (1) a single deceptive term; (2) a deceptive term embedded in a composite mark that includes additional non-deceptive wording and/or design elements ( see In re White Jasmine LLC, 106 USPQ2d 1385, 1391 (TTAB 2013) ; (3) a term or a portion of a term that alludes to a deceptive quality, characteristic, function, composition, or use ( see Am. Speech-Language-Hearing Ass’n v. Nat'l Hearing Aid Society, 224 USPQ 798, 808 (TTAB 1984) ); (4) the phonetic equivalent of a deceptive term ( see In re Organik Technologies, Inc., 41 USPQ2d 1690, 1694 (TTAB 1997) ; Tanners' Council of Am., Inc. v. Samsonite Corp., 204 USPQ 150, 154 (TTAB 1979); or (5) the foreign equivalent of any of the above ( see, e.g., Palm Bay Imps., v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005). Although there is no published Board or Federal Circuit decision regarding whether a mark consisting solely of a design can be deceptive, if there is evidence to support such a refusal, it should be issued.

Deceptive marks may include marks that falsely describe the material content of a product ( see In re Intex Plastics Corp., 215 USPQ 1045, 1048 (TTAB 1982) ) and marks that are geographically deceptive ( see Stabilisierungsfonds fur Wein v. Peter Meyer Winery GmbH, 9 USPQ2d 1073, 1076 (TTAB 1988) ; In re House of Windsor, Inc., 221 USPQ 53, 57 (TTAB 1983), recon. denied, 223 USPQ 191 (TTAB 1984)). See TMEP §§1210.05-1210.06(b) regarding geographically deceptive marks.

However, marks containing a term identifying a material, ingredient, or feature should not be refused registration under §2(a) if the mark in its entirety would not be perceived as indicating that the goods contained that material or ingredient. For example, the mark COPY CALF was found not deceptive for wallets and billfolds of synthetic and plastic material made to simulate leather, because it was an obvious play on the expression "copy cat" and suggested to purchasers that the goods were imitations of items made of calf skin. See A. F. Gallun & Sons Corp. v. Aristocrat Leather Prods., Inc., 135 USPQ 459, 460 (TTAB 1962) . Note, however, the difference with such marks as TEXHYDE and SOFTHIDE, which were held deceptive as applied to synthetic fabric and imitation leather material, respectively. See Intex Plastics, 215 USPQ at 1048; Tanners' Council of Am., 204 USPQ at 154-55.

In addition, formatives and other grammatical variations of a term may not necessarily be deceptive in relation to the relevant goods. For example, "silky" is defined, inter alia, as "resembling silk." See The American Heritage® Dictionary of the English Language: Fourth Ed. 2000. Thus, a mark containing the term SILKY would not be considered deceptive (but might be unregistrable under §2(e)(1)). Dictionary definitions of such terms should be carefully reviewed to determine the significance the term would have to prospective purchasers. For example, although the term GOLD would be considered deceptive for jewelry not made of gold, the term GOLDEN would not be deceptive.

1203.02(b)    Elements of a §2(a) Deceptiveness Refusal

The Court of Appeals for the Federal Circuit has articulated the following test for whether a mark consists of or comprises deceptive matter:

  • (1) Is the term misdescriptive of the character, quality, function, composition or use of the goods?
  • (2) If so, are prospective purchasers likely to believe that the misdescription actually describes the goods?
  • (3) If so, is the misdescription likely to affect a significant portion of the relevant consumers’ decision to purchase?

In re Spirits Int’l, N.V., 563 F.3d 1347, 90 USPQ2d 1489 (Fed. Cir. 2009); In re Budge Mfg. Co., 857 F.2d 773, 775, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988), aff’g 8 USPQ2d 1790 (TTAB 1987).

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 Mfg. Co., 857 F.2d 773, 775, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988) (i.e., whether a mark is misdescriptive of the goods/services and whether prospective purchasers are likely to believe the misdescription) are answered affirmatively, the mark is deceptively misdescriptive of the goods/services under §2(e)(1). 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) from marks that are deceptively misdescriptive under §2(e)(1). To be deceptively misdescriptive under §2(e)(1), the misdescription must concern a feature that would be relevant to the decision to purchase the goods or use the services. See In re Hinton, 116 USPQ2d 1051, 1055 (TTAB 2015) ; In re Shniberg, 79 USPQ2d 1309, 1311 (TTAB 2006) ("[T]he misdescription must concern a feature that would be relevant to a purchasing decision.").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 be deceptive under §2(a) of the Trademark Act,15 U.S.C.  §1052(a). See In re White Jasmine LLC, 106 USPQ2d 1385 (TTAB 2013) ; In re Shniberg, 79 USPQ2d at 1313-14. See TMEP §1209.04 regarding establishing deceptive misdescriptiveness and TMEP §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 both §§2(a) and 2(e)(1). See, e.g., Gold Seal Co. v. Weeks, 129 F. Supp. 928, 105 USPQ 407 (D.D.C. 1955) , aff’d sub nom. S. C. Johnson & Son, Inc. v. Gold Seal Co., 230 F.2d 832, 108 USPQ 400 (D.C. Cir. 1956) (per curiam), cert. denied, 352 U.S. 829, 111 USPQ 467 (1956), superseded by statute on other grounds as stated in Aktieselskabet AF 21. November 2001 v. Fame Jeans Inc., 525 F.3d 8, 86 USPQ2d 1527, 1532 (D.C. Cir. 2008). See also R. Neumann & Co. v. Overseas Shipments, Inc., 326 F.2d 786, 140 USPQ 276 (C.C.P.A. 1964) , and Stabilisierungsfonds fur Wein v. Peter Meyer Winery GmbH, 9 USPQ2d 1073 (TTAB 1988) , in which third parties filed oppositions based on both statutory sections. 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).

1203.02(d)    Determining Materiality

To establish a prima facie case of deceptiveness, the examining attorney must provide sufficient evidence that the misdescriptive quality or characteristic would be a material factor in the purchasing decision of a significant portion of the relevant consumers. To do so, the examining attorney must provide evidence that the misdescriptive quality or characteristic would make the product or service more appealing or desirable to prospective purchasers. In re White Jasmine LLC, 106 USPQ2d 1385, 1392 (TTAB 2013) (citing In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694, 1698-99 (TTAB 1992) ). A product or service is usually more desirable because of objective standards or criteria that provide an objective inducement to purchase the goods and/or services beyond that of mere personal preference.

1203.02(d)(i)    Objective Criteria

In assessing whether a misdescription would affect the decision to purchase, the following are examples (not a comprehensive list) of the type of objective criteria that should be used to analyze whether a term is a material factor. The evidence may often point to more than one characteristic, thereby strengthening the examining attorney’s prima facie case. For example, the evidence may show that goods deemed "organic" because they are produced in compliance with objective criteria can also be more costly, provide health benefits, and satisfy a social policy of reducing the impact on the environment by utilizing chemical-free growing practices. The evidence also must suffice to indicate that the misdescriptive quality or characteristic would affect the purchasing decision of a significant portion of the relevant consumers. In re Spirits Int’l, N.V., 563 F.3d 1347, 1353, 90 USPQ2d 1489, 1493 (Fed. Cir. 2009). Generally, evidence of the objective inducement to purchase supports a presumption that a significant portion of the relevant consumers would likely be deceived.

Superior Quality - The evidence must support a finding that goods or services that contain or feature the misdescriptive term are superior in quality to similar goods and/or services that do not. For example, silk can be shown to be a more luxurious and expensive material because of the difficulty in making silk, its unique feel, and its breathability. Similarly, cedar wood can be shown to have superior durability and resistance to decay.

Enhanced Performance or Function - The evidence must support a finding that goods possessing the characteristic or feature at issue are superior to those that do not. For example, certain wood species are naturally resistant to termite attack or may be more durable than others. There might also be evidence of an increasing interest in reducing the potential leaching of chemicals from treated wood into the environment.

Difference in Price - Evidence of a price differential between items that do and those that do not possess the feature or characteristic described by the misdescriptive term may be enough to support a §2(a) refusal, depending upon the nature of the goods or services. It is also important to remember that because a difference in price is relative to the goods and/or services in a particular industry, a particular term may be deceptive for goods and services that are not typically thought of as luxury items.

Health Benefit - The evidence must establish a belief that the feature or characteristic provides a health benefit.

Religious Practice or Social Policy - The evidence must show that the religious practice or social policy has definable recognized criteria for compliance in order to support a finding of deceptiveness when the criteria are not adhered to by the applicant. For example, a body of Jewish law deals with what foods can and cannot be eaten and how those foods must be prepared and eaten. The term "kosher" refers to food prepared in accordance with these standards as well as to the selling or serving of such food. See The American Heritage® Dictionary of the English Language: Fourth Ed. 2000. Another example is the term "vegan," which is defined as someone who eats plant products only and who uses no products derived from animals, such as fur or leather. Id.

The evidence necessary to establish deceptiveness can come from the same sources used to show that the term is misdescriptive. Internet searches that combine the deceptive term with terms such as "desirable," "superior," "premium," "better quality," "sought after," "more expensive," or "established standards" may be useful in seeking evidence to support the second and third prongs of the test.

Applicant’s own advertising - in the form of specimens, brochures, web pages, press releases, or product and service information sheets - may provide the best evidence of deceptiveness. Moreover, the examining attorney should make of record any instances where the applicant attempts to benefit from the potentially deceptive term and where the advertising includes false assertions related to the deceptive wording. Although not a requirement for a deceptive refusal, proof of an actual intent to deceive may be considered strong evidence of deceptiveness.

1203.02(d)(ii)    Mere Personal Preference

The types of objective criteria discussed above can be contrasted with mere personal preferences for which the requisite evidentiary support generally cannot be found to establish materiality. For example, SPEARMINT for gum, LAVENDER for dish soap, and BLUE for bicycles refer to flavor, scent, and color features that, in those contexts, most likely reflect mere personal preferences which would not be considered material for purposes of a deceptiveness refusal.

Similarly, personal preferences regarding types of cuisine served at restaurants (e.g. , SEAFOOD or PIZZA) generally do not establish materiality absent evidence that the type of cuisine meets some objective criteria more in line with those listed above, such as for VEGAN or KOSHER.

Whether the requisite evidentiary support can be found to establish that the use of such terms in connection with goods/services that do not contain or feature the characteristic is deceptively misdescriptive under §2(e)(1) must be determined on a case-by-case basis.

1203.02(e)    Procedures for Issuing §2(a) Deceptive Refusals

1203.02(e)(i)    When the Mark is Clearly Misdescriptive

If there is evidence in the record clearly indicating that the mark or a term(s) in the mark is misdescriptive (e.g. , the specimen or language in the identification indicates that the goods/services do not have the relevant feature or characteristic), the examining attorney must determine whether the misdescription is believable and material and do the following:

  • If the misdescription would not be believable, no refusal under either §2(a) or §2(e)(1) should be made. If the application is otherwise in condition for publication, approve the mark for publication. Otherwise, issue an Office action containing all other relevant refusals and/or requirements.
  • If the misdescription would be believable, but would not be material, issue a refusal under §2(e)(1) as deceptively misdescriptive (or disclaimer requirement if appropriate, i.e., if the term at issue is not part of a unitary expression), with supporting evidence, and all other relevant refusals and/or requirements.
  • If the misdescription would be believable and material, issue a deceptiveness refusal under §2(a) with supporting evidence, an alternative refusal under §2(e)(1) as deceptively misdescriptive (or disclaimer requirement if appropriate), and all other relevant refusals and/or requirements.

1203.02(e)(ii)    When It is Not Clear Whether the Mark is Misdescriptive

When a mark comprises or contains descriptive wording, but it is not clear whether the goods/services possess the relevant feature or characteristic, the examining attorney must first determine whether such feature or characteristic would be believable and material to the decision to purchase.

If the potential misdescription would not be believable, no refusal under either §2(a) or §2(e)(1) should be made. If the application is otherwise in condition for publication, the examining attorney should approve the mark for publication. Otherwise, the examining attorney should issue an Office action containing all other relevant refusals and/or requirements.

If the goods possess the relevant feature or characteristic and the feature or characteristic referenced by the mark would be believable and material, the identification must include the feature or characteristic in order to resolve the ambiguity between the mark and the identification of goods/services. The identification must be amended even if the record indicates elsewhere that the goods/services contain the feature or characteristic. Therefore, if the application could otherwise be put in condition for approval for publication by an examiner’s amendment ( see TMEP §707), to expedite prosecution, the examining attorney should:

  • Attempt to contact the applicant to obtain authorization for a disclaimer, if appropriate (i.e., if the term at issue is not part of a unitary expression), and an amendment to the identification to include the feature or characteristic (if believable and material), and for any other amendments that would put the application in condition for approval for publication.
  • If the applicant states that the goods/services do not possess the feature or characteristic, the examining attorney must so indicate in a Note to the File entered in the record, and must then issue a refusal under §2(e)(1) as deceptively misdescriptive (if believable but not material), or disclaimer requirement if appropriate, or a refusal under §2(a) as deceptive (if believable and material) and an alternative refusal under §2(e)(1), or disclaimer requirement if appropriate, as deceptively misdescriptive, and make all other relevant requirements.
  • To ensure the completeness of the record in the event of an appeal, any Office action issued must also include an information request under 37 C.F.R. §2.61(b), asking whether the goods/services possess the feature or characteristic.

If the examining attorney is unable to reach the applicant or cannot obtain authorization for an examiner’s amendment, or if an Office action is otherwise necessary to make substantive refusals or requirements that cannot be satisfied by examiner’s amendment, the examining attorney must:

  • Issue a refusal under §2(e)(1) as descriptive (or a requirement for a disclaimer, if appropriate, i.e., if the term at issue is not part of a unitary expression), based on the presumption that the goods/services possess the feature or characteristic; and
  • Issue a requirement that the applicant amend the identification to include the feature or characteristic (if believable and material); and
  • Issue an information request under 37 C.F.R. §2.61(b), asking whether the goods/services possess the feature or characteristic; and
  • Issue any other relevant refusals and/or requirements.

If the applicant responds that the goods/services possess the feature or characteristic or amends the identification to include the feature or characteristic, the examining attorney must issue a final Office action, assuming that the application is otherwise in condition for final action, as to the descriptiveness refusal (or disclaimer requirement, if not provided), identification requirement (if applicable and not amended), and any other relevant refusals and/or requirements, as appropriate.

If the applicant responds that the goods/services do not possess the feature or characteristic, the examining attorney must withdraw the §2(e)(1) descriptiveness refusal (or disclaimer requirement), as well as the identification requirement (if applicable), and issue a subsequent nonfinal Office action dependent on whether the misdescription would be believable and material:

  • If the misdescription would be believable but not material, the examining attorney must issue a refusal under §2(e)(1) as deceptively misdescriptive (or disclaimer requirement if appropriate), with supporting evidence, and maintain all other relevant refusals and/or requirements.
  • If the misdescription would be believable and material, the examining attorney must issue a deceptiveness refusal under §2(a) with supporting evidence, an alternative refusal under §2(e)(1) as deceptively misdescriptive (or disclaimer requirement if appropriate), and maintain all other relevant refusals and/or requirements.

If the applicant does not respond to the information request and does not amend the identification to include the feature or characteristic, the examining attorney must:

  • Issue a subsequent nonfinal Office action maintaining the descriptiveness refusal (or disclaimer requirement, if not provided), based on the presumption that the goods/services possess the feature or characteristic, as well as the identification requirement (if applicable), information request, and any other relevant refusals and/or requirements raised in the initial Office action, as appropriate; and
  • If the misdescription would be believable and material, issue an alternative refusal under §2(a) as deceptive, based on the presumption that the goods/services do not possess the relevant feature or characteristic, and supported by evidence; and
  • Issue an alternative refusal under §2(e)(1) as deceptively misdescriptive, or disclaimer requirement if appropriate, based on the presumption that the goods/services do not possess the relevant feature or characteristic.

See, e.g., In re AOP LLC, 107 USPQ2d 1644 (TTAB 2013) (holding AOP deceptive, deceptively misdescriptive, or, alternatively, merely descriptive for wine, after the applicant failed to fully respond to the examining attorney’s inquiries regarding the origin and certification of applicant’s goods); In re Cheezwhse.com, Inc., 85 USPQ2d 1917 (TTAB 2008) (holding NORMANDIE CAMEMBERT primarily geographically descriptive or, in the alternative, primarily geographically deceptively misdescriptive for cheese; the applicant failed to respond to a 37 C.F.R. §2.61(b)  information request as to the origin of the goods).

1203.02(f)    Responding to a §2(a) Deceptiveness Refusal

1203.02(f)(i)    Amending the Identification of Goods or Services

Generally, an applicant may avoid or overcome a deceptiveness refusal by amending the identification of goods or services, if accurate, to include the potentially deceptive term. For deceptiveness refusals based on the material composition of the goods, if the applicant amends the identification to include the potentially deceptive term, the USPTO will rely on the presumption that the goods contain a sufficient amount of the material to obviate deceptiveness; there is no requirement to substantiate the amount or percentage of the material or feature in the goods. Thus, the applicant may amend "ties" to "silk ties," "milk and cheese" to "organic milk and cheese," and "jewelry" to "gold jewelry" or to "jewelry made in whole or significant part of gold."

The Office construes the wording "made in significant part of" as indicating that the goods contain a sufficient amount of the named ingredient/material composition to meet the standard for use of the term in the relevant industry. In the case of "coats made in significant part of leather," such wording would be construed to mean that the "coats" contain a sufficient amount of leather to be called "leather coats" in the relevant industry. However, the wording "coats made in part of leather" is not acceptable because, although the goods may contain some leather, it may not be an amount sufficient for the goods to be called "leather coats" in the relevant industry.

Note, however, that amending the identification to exclude goods made from the named ingredient or material composition will not avoid or overcome a deceptiveness refusal.

Amending an identification of services to add "featuring" or "including" a material term (e.g. , "restaurants featuring organic cuisine" and "retail furniture stores including leather furniture") generally is sufficient to obviate deceptiveness. For example, as long as the identification indicates that the restaurant provides organic cuisine, or the furniture store sells leather furniture, there is no deception even if other types of food or furniture are also available.

1203.02(f)(ii)    Other Arguments

Applicants may attempt to overcome a §2(a) refusal by providing evidence that applicant’s advertising, or other means, would make consumers aware of the misdescription. Neither evidence regarding advertising, labeling, or extent of use, nor information found on the specimens, can negate the misdescriptiveness with regard to use of the mark in relation to the goods or services. In addition, an applicant’s anecdotal or past practices and "explanatory statements in advertising or on labels which purchasers may or may not note and which may or may not always be provided" are of little value in the deceptiveness analysis. See In re Budge Mfg. Co., 857 F.2d 773, 775-76, 8 USPQ2d 1259, 1261 (Fed. Cir. 1988).

However, in some cases, the applicant may be able to provide credible evidence that consumers would not expect goods sold under a certain mark to actually consist of or contain the feature or characteristic named in the mark. See, e.g., In re Robert Simmons, Inc.,192 USPQ 331 (TTAB 1976)(holding that WHITE SABLE is not deceptive on artist's paint brushes).

The argument that there is no deception because consumers will immediately discern the true nature of the goods and/or services when they encounter them is not persuasive. Deception can attach prior to seeing or encountering the goods or services, for example, based on advertising over the radio or Internet or via word of mouth. See In re ALP of S. Beach, Inc., 79 USPQ2d 1009, 1014 (TTAB 2006) .

As noted above, marks that are deceptive under §2(a) are never registrable on either the Principal Register, even under §2(f) or the Supplemental Register. However, applicants may present evidence of a similar nature to what is often submitted for acquired distinctiveness, such as declarations regarding how the mark is perceived by consumers, as rebuttal evidence to the prima facie case, in an effort to overcome one or all of the prongs of the §2(a) test. See In re Woolrich Woolen Mills Inc., 13 USPQ2d 1235, 1238 (TTAB 1989) . Note that merely relying on the length of use, without providing other information or evidence, would never be sufficient to overcome a §2(a) refusal. Moreover, priority of use cannot overcome a deceptiveness refusal. In re AOP LLC, 107 USPQ2d 1644, 1650 n.6 (TTAB 2013) .

The fact that only those knowledgeable in the relevant trade, and not average purchasers, would be deceived does not preclude a finding that a mark comprises deceptive matter. In re House of Windsor, Inc., 223 USPQ 191, 192 (TTAB 1984) .

1203.02(g)    Deceptive Matter: Case References

In the following cases, proposed marks were determined to be deceptive, under §2(a): In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1988), aff’g8 USPQ2d 1790 (TTAB 1987) (holding LOVEE LAMB deceptive for seat covers not made of lambskin); In re AOP LLC, 107 USPQ2d 1644 (TTAB 2013) (holding AOP deceptive for wine, where the term is used by members of the European Union to designate a particular quality and geographical origin of wine, when applicant is not the entity that administers the designation and the goods do not necessarily originate in Europe); In re White Jasmine LLC, 106 USPQ2d 1385 (TTAB 2013) (holding the term WHITE in the proposed mark WHITE JASMINE deceptive for tea that did not include white tea, where the evidence established that consumers perceive that white tea has desirable health benefits); In re E5 LLC, 103 USPQ2d 1578 (TTAB 2012) (holding a mark consisting of the alpha symbol and letters "CU" deceptive for dietary supplements not containing copper, a common ingredient in dietary supplements, which evidence showed is referred to as CU); In re ALP of S. Beach Inc., 79 USPQ2d 1009 (TTAB 2006) (CAFETERIA (stylized) held deceptive as used in connection with "restaurants providing full service to sit-down patrons, excluding cafeteria-style restaurants"); In re Phillips-Van Heusen Corp., 63 USPQ2d 1047 (TTAB 2002) (holding SUPER SILK deceptive for "clothing, namely dress shirts and sport shirts made of silk-like fabric"); In re Organik Technologies, Inc., 41 USPQ2d 1690 (TTAB 1997) (holding ORGANIK deceptive for clothing and textiles made from cotton that is neither from an organically grown plant nor free of chemical processing or treatment, notwithstanding applicant’s assertions that the goods are manufactured by a process that avoids the use of chemical bleaches, because the identification of goods was broad enough to include textiles and clothing manufactured with chemical processes or dyes); In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694 (TTAB 1992) (holding LONDON LONDON deceptive for clothing having no connection with London); In re Perry Mfg. Co., 12 USPQ2d 1751 (TTAB 1989) (holding PERRY NEW YORK and design of New York City skyline deceptive for clothing originating in North Carolina, in view of the renown of New York City in the apparel industry); Stabilisierungsfonds fur Wein v. Peter Meyer Winery GmbH, 9 USPQ2d 1073, 1075 (TTAB 1988) (holding GOLDENER TROPFEN deceptive for wines, in view of evidence of the international renown of the Goldtropfchen vineyard of West Germany, finding that the purchasing public would be likely to think, mistakenly, that applicant’s wines were produced from grapes grown there in accordance with German wine laws and regulations); Bureau Nat’l Interprofessionnel Du Cognac v. Int'l Better Drinks Corp., 6 USPQ2d 1610, 1616 (TTAB 1988) (holding COLAGNAC deceptive for cola-flavored liqueur containing Spanish brandy, concluding that purchasers were likely to believe that applicant’s goods contained COGNAC brandy); In re Shapely, Inc., 231 USPQ 72 (TTAB 1986) (holding SILKEASE deceptive as applied to clothing not made of silk); In re House of Windsor, Inc., 221 USPQ 53 (TTAB 1983), recon. denied,223 USPQ 191 (TTAB 1984) (holding BAHIA deceptive as applied to cigars having no connection with the Bahia province of Brazil, the record indicating that tobacco and cigars are important products in the Bahia region); Evans Prods. Co. v. Boise Cascade Corp., 218 USPQ 160 (TTAB 1983) (holding CEDAR RIDGE deceptive for embossed hardboard siding not made of cedar); In re Intex Plastics Corp., 215 USPQ 1045 (TTAB 1982) (holding TEXHYDE deceptive as applied to synthetic fabric for use in the manufacture of furniture, upholstery, luggage, and the like); Tanners’ Council of Am., Inc. v. Samsonite Corp., 204 USPQ 150 (TTAB 1979) (holding SOFTHIDE deceptive for imitation leather material); In re Salem China Co., 157 USPQ 600 (TTAB 1968) (holding AMERICAN LIMOGES, used on dinnerware that was neither made in Limoges, France, nor made from Limoges clay, deceptive because of the association of Limoges with fine quality china); Co. of Cutlers of Hallamshire in the Cnty. of York v. Regent-Sheffield, Ltd., 155 USPQ 597 (TTAB 1967) (holding SHEFFIELD, used on cutlery not made in Sheffield, England, deceptive because of the renowned status of Sheffield in relation to cutlery); In re U.S. Plywood Corp., 138 USPQ 403 (TTAB 1963) (holding IVORY WOOD, for lumber and timber products, deceptive since the goods were not made of ivorywood nor did they contain an ivorywood pattern).

Marks were found not to be deceptive in the following cases: In re Tapco Int’l Corp., 122 USPQ2d 1369 (TTAB 2017) (holding KLEER MOULDINGS and KLEER TRIMBOARD not deceptive, because there was no evidence as to the likely consumer perception of the term "clear" (or KLEER) when used in connection with the identified PVC building products and thus the record did not establish that the term misdescribes the goods); Philip Morris Inc. v. Reemtsma Cigarettenfabriken GmbH, 14 USPQ2d 1487 (TTAB 1990) (holding PARK AVENUE neither deceptive nor geographically deceptively misdescriptive as applied to applicant’s cigarettes and smoking tobacco, finding no goods/place association between Park Avenue in New York City, on which opposer’s world headquarters was located, and tobacco products); In re Woolrich Woolen Mills Inc., 13 USPQ2d 1235 (TTAB 1989) (holding WOOLRICH for clothing not made of wool not to be deceptive under §2(a)); In re Fortune Star Prods. Corp., 217 USPQ 277 (TTAB 1982) (holding NIPPON, for radios, televisions, and the like, not deceptive in relation to the goods because, although the applicant was an American firm, the goods were actually made in Japan); In re Sweden Freezer Mfg. Co., 159 USPQ 246 (TTAB 1968) (holding SWEDEN and design, for which registration was sought under §2(f) for external artificial kidney units, not deceptive, finding the case to be in the category "where a geographical trademark may involve a degree of untruth but the deception may be perfectly innocent, harmless or negligible"); A. F. Gallun & Sons Corp. v. Aristocrat Leather Prods., Inc., 135 USPQ 459 (TTAB 1962) (holding COPY CALF, for wallets and billfolds of synthetic and plastic material made to simulate leather, not deceptive, noting that the mark, as an obvious play on the expression "copy cat," suggested to purchasers that the goods were imitations of items made of calf skin).