1209.04 Deceptively Misdescriptive Marks

Two-part test. Section 2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), also prohibits registration of designations that are deceptively misdescriptive of the goods or services to which they are applied. A mark is considered deceptively misdescriptive if (1) the mark misdescribes the goods or services and (2) consumers would be likely to believe the misrepresentation. In re Dolce Vita Footwear, Inc., 2021 USPQ2d 478, at *11 (TTAB 2021) (citing In re Budge Mfg. Co., 857 F.2d 773, 775, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988); In re White Jasmine LLC, 106 USPQ2d 1385, 1394 (TTAB 2013)).

The examining attorney must first determine whether a term is misdescriptive as applied to the goods or services. A term that conveys an immediate idea of an ingredient, quality, characteristic, function, feature, purpose, or use of the goods or services with which it is used is merely descriptive. TMEP §1209.01(b). If a term immediately conveys such an idea but the idea is false, although plausible, then the term is deceptively misdescriptive and is unregistrable under §2(e)(1). See In re Dolce Vita Footwear, Inc., 2021 USPQ2d 478, at *11 (quoting In re Hinton, 116 USPQ2d 1051, 1052 (TTAB 2015); In re Phillips-Van Heusen, 63 USPQ2d 1047, 1048 (TTAB 2005)); In re AOP LLC, 107 USPQ2d 1644 (TTAB 2013) (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 Woodward & Lothrop Inc., 4 USPQ2d 1412 (TTAB 1987) (CAMEO deceptively misdescriptive of jewelry); In re Ox-Yoke Originals, Inc., 222 USPQ 352 (TTAB 1983) (G.I. deceptively misdescriptive of gun cleaning patches, rods, brushes, solvents, and oils); see also In re Hinton, 116 USPQ2d 1051, 1055 (TTAB 2015) (finding that the misdescription presented by the mark THCTEA is plausible and would be highly relevant to a consumer’s purchasing decision); In re Shniberg, 79 USPQ2d 1309, 1311 (TTAB 2006) ("[T]he misdescription must concern a feature that would be relevant to a purchasing decision.").

The examining attorney must make of record evidence demonstrating why the mark is misdescriptive, regardless of whether the wording in the mark appears in the identification of goods or services. Specifically, the record must show the meaning of the wording at issue and that applicant’s goods or services lack the feature or characteristic. Examples of such evidence include dictionary definitions, LexisNexis® articles, Internet websites (see TMEP §710.01(b) regarding Internet evidence requirements), advertising material, product information sheets, hang tags, point-of-purchase displays, and trade journals. An applicant’s admission in the application record regarding its goods or services may also satisfy the first prong of the test.

Thus, restricting the identification of goods or services to exclude the feature or characteristic referenced in the mark will generally not avoid or overcome the refusal. See In re Dolce Vita Footwear, Inc., 2021 USPQ2d 478, at *13. It cannot be assumed that consumers of the applicant’s goods or services will be aware that the identification is so restricted, and the restriction is not controlling on public perception. Id. (citing In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1187-88 (TTAB 2018)).

With respect to the second part of the test, the Trademark Act does not prohibit the registration of misdescriptive terms unless they are deceptively misdescriptive, that is, unless reasonably prudent consumers of the goods or services are likely to believe the misrepresentation. See In re Dolce Vita Footwear, Inc., 2021 USPQ2d 478, at *11 (citing In re Hinton, 116 USPQ2d at 1052); In re Quady Winery Inc., 221 USPQ 1213, 1213-14 (TTAB 1984) (finding ESSENSIA deceptively misdescriptive for wines not containing essensia, a rare, commercially unavailable type of Hungarian Tokay wine); Binney & Smith Inc. v. Magic Marker Indus., Inc., 222 USPQ 1003, 1011 (TTAB 1984) (holding LIQUID CRAYON neither the common descriptive name, nor merely descriptive, nor deceptively misdescriptive of coloring kits or markers).

To prove that the description conveyed by the mark is believable, the examining attorney must provide evidence demonstrating that consumers regularly encounter the same or similar goods or services with the features or characteristics in the mark. For example, to support the believability element as to the mark LOVEE LAMB for seat covers that were not made of lambskin, the examining attorney provided evidence that seat covers can be and are made from lambskin. See In re Budge Mfg. Co., 857 F.2d at 775, 8 USPQ2d at 1260. In another case, excerpts from a LexisNexis® search for the phrases "organic clothing," "organic fabric," "organically grown cotton," and "organic cotton" were used to prove that consumers were familiar with clothing and textiles from organically grown plants or plants free of chemical processing or treatment. See In re Organik Techs., Inc., 41 USPQ2d 1690, 1693–94 (TTAB 1997) . Applicant’s own hang tags, labels, advertising, and product information may also provide evidence of the believability of the misdescription. See In re Shapely, Inc., 231 USPQ 72, 75 (TTAB 1986) (concluding that statements on hangtags can be used to show the materiality of the mispresentation in the purchasing decision); Evans Prods. Co. v. Boise Cascade Corp., 218 USPQ 160, 164–65 (TTAB 1983) (finding that applicant’s advertising materials and affidavit indicated that it did attempt to "adopt a mark [CEDAR RIDGE] which conveyed the impression of authentic cedar"). Webpage evidence showing third-party usage of the proposed mark used in a descriptive manner with the same or similar goods or services has also been accepted as evidence of the believability of the misrepresentation. See In re Dolce Vita Footwear, Inc., 2021 USPQ2d 478, at *13.

The examining attorney should consider and make of record, or require the applicant to make of record under 37 C.F.R §2.61(b) (see TMEP §814 regarding requests for information), all available information that shows the presence or absence, and the believability, of a misrepresentation. See Glendale Int’l Corp. v. USPTO, 374 F. Supp. 2d 479, 486, 75 USPQ2d 1139, 1144 (E.D. Va. 2005) (holding TITANIUM deceptively misdescriptive of recreational vehicles that did not contain titanium, where the examining attorney made of record articles which showed that titanium is a lightweight metal, and discussed the use or potential use of titanium in the automotive industry).

The mere fact that the true nature of the goods or services is revealed by other matter on the labels, advertisements, or other materials to which the mark is applied does not preclude a determination that a mark is deceptively misdescriptive. See R. Neumann & Co. v. Overseas Shipments, Inc., 326 F.2d 786, 790, 140 USPQ 276, 279 (C.C.P.A. 1964) (holding DURA-HYDE deceptive and deceptively misdescriptive of plastic material of leather-like appearance made into shoes regardless of the presence of tags stating that the material "outwears leather"); In re Shniberg, 79 USPQ2d 1309, 1313 (TTAB 2006) (holding SEPTEMBER 11, 2001 deceptively misdescriptive of books and entertainment services that did not in any way cover the terrorist attacks of September 11, 2001; the fact that the nature of the misdescription would become known after consumers studied applicant’s books and entertainment services did not prevent the mark from being deceptively misdescriptive); see also In re Dolce Vita Footwear, Inc., 2021 USPQ2d 478, at *15-16 (finding "[p]re-sale discussion and promotion leading to deception is likely in this case" even though visual inspection of the goods by consumers would show they did not include the particular feature; however, applicants goods could be promoted "by word-of-mouth or on social media or in print . . . without an image of the goods"); In re ALP of S. Beach Inc., 79 USPQ2d 1009, 1014-15 (TTAB 2006) (holding that pre-sale deception may occur without a sale taking place based on the deception); Nw. Golf Co. v. Acushnet Co., 226 USPQ 240 (TTAB 1985) (finding deception unlikely given alternative meanings of the mark and that even cursory curiosity on the part of consumers would avoid any potential deception).

Response options. Marks that have been refused registration pursuant to §2(e)(1) on the ground of deceptive misdescriptiveness may be registrable under §2(f) upon a showing of acquired distinctiveness, or on the Supplemental Register if appropriate. 15 U.S.C. §§1052(f), 1091. Similarly, marks that contain registrable matter in addition to deceptively misdescriptive components can be registered with a disclaimer of the deceptively misdescriptive matter, when appropriate. See TMEP §1213.03(a).

Section 2(a) consideration. If the misdescription represented by the mark is material to the decision to purchase the goods or use the services, then the mark must be refused registration under §2(a) of the Trademark Act, 15 U.S.C §1052(a). See TMEP §1203.02 regarding deceptive marks, §1203.02(c) regarding the distinction between deceptive marks and deceptively misdescriptive marks, and §1203.02(d)-(d)(ii) regarding determining materiality. Marks that are deceptive under §2(a) are not registrable on either the Principal Register or the Supplemental Register under any circumstances. TMEP §1203.02.

Case references. Some designations have been held deceptively misdescriptive under §2(e)(1). See, e.g., In re Dolce Vita Footwear, Inc., 2021 USPQ2d 478, at *1, *16-17 (holding CLEAR deceptively misdescriptive of footwear and clothing items, excluding transparent goods; third-party evidence showed "clear" used to describe footwear and clothing that was transparent or clear or contained transparent or clear elements); In re Hinton, 116 USPQ2d at 1055 (holding THCTEA deceptively misdecriptive for tea that does not contain THC; evidence showed that such teas could be offered through medical marijuana dispensiaries or locations where marijuana products are legally sold under state law); In re Woodward & Lothrop Inc., 4 USPQ2d 1412 (TTAB 1987) (holding CAMEO deceptively misdescriptive of jewelry "which has no cameos or cameo-like elements"; evidence showed that "cameo" names a type of jewelry); In re Ox-Yoke Originals, Inc., 222 USPQ 352 (TTAB 1983) (holding G.I., a well-known abbreviation for "government issue," deceptively misdescriptive of gun cleaning patches, rods, brushes, solvents, and oils that are not government issued, although "[t]he [U.S.] government does in fact issue gun cleaning products to its armed forces).