Descriptive Trademarks

The two major reasons for not protecting [allowing registration of] descriptive marks are:  (1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods or services; and (2) to avoid the possibility of costly infringement suits brought by the registrant.  This thus enables businesses and competitors to have the freedom to use common descriptive language when merely describing their own goods or services to the public in advertising and marketing materials.  In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (C.C.P.A. 1978); In re Colonial Stores, Inc., 394 F.2d 549, 157 USPQ 382, 383 (C.C.P.A. 1968); Armour & Co. v. Organon Inc., 245 F.2d 495, 114 USPQ 334, 337 (C.C.P.A. 1957); In re Inc., 58 USPQ2d 1523, 1526-1527 (TTAB 2001); In re Inc., 57 USPQ2d 1445, 1448 (TTAB 2000).

What is the definition of a descriptive trademark? A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods and/or services.  In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987);  In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP §1209.01(b).  A mark that describes an intended user of a product or service is also merely descriptive within the meaning of Section 2(e)(1).  Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996 (TTAB 1986); In re Camel Mfg. Co., Inc., 222 USPQ 1031 (TTAB 1984); In re Gentex Corp., 151 USPQ 435 (TTAB 1966). See Examples of Merely Descriptive Trademarks.

Deceptive Trademarks

TMEP 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 1589 (Fed. Cir. 2009); In re Budge Mfg. Co. Inc., 857 F.2d 773, 775, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988), aff’g 8 USPQ2d 1790 (TTAB 1987).

The question of whether a particular term is merely descriptive or deceptive is not decided in the abstract. Rather, the proper test in determining whether a term is merely descriptive is to consider the term in relation to the goods or services for which registration is sought, the context in which the term is used or is intended to be used, and the significance that the term is likely to have on the average purchaser encountering the goods or services in the marketplace. See In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978); In re Intelligent Instrumentation Inc., 40 USPQ2d 1792 (TTAB 1996); In re Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB 1995); In re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991); In re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986); and In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). (As cited in In re Aristocrat Technologies, Inc. (TTAB 2005).

To be unregistrable under Section 2(e)(1) of the Trademark Act because the mark is “deceptively misdescriptive” of the identified goods, the idea conveyed by the mark must be not only false, but also plausible. Hence, the test for deceptive misdescriptiveness has two parts. First we must determine if the matter sought to be registered misdescribes the goods. If so, then we must ask if it is also deceptive, that is, if anyone is likely to believe the misrepresentation. In re Berman Bros. Harlem Furniture Inc. 26 USPQ2d 1514 (TTAB 1993) [the term, FURNITURE MAKERS, is deceptively misdescriptive for retail  furniture store services, not including the manufacture of furniture]. (As cited in In re Aristocrat Technologies, Inc. (TTAB 2005).

A trademark is also viewed in its entirety, including any design element and the grammatical relationship among the component words. If the mark as a whole has characteristics that counteract the misdescriptive nature of a term, then the mark would not be deceptive. See, for example, A.F. Gallun & Sons Corp. v. Aristocrat Leather Prods., Inc., 135 USPQ 459 (TTAB 1962) (the term CALF in the mark COPY CALF not deceptive for goods of artificial leather). It is also well established that a mark may be found deceptive on the basis of a single deceptive term that is embedded in a larger mark. American Speech-Language-Hearing Association v. National Hearing Aid Society, 224 USPQ 798, 808 (TTB 1984).

Examples of Descriptive Trademarks-Deceptive and Not Deceptive Trademarks

Examples of Marks Found to Be Deceptive or Deceptively Misdescriptive

KUBA KUBA is primarily geographically deceptively misdescriptive as applied to cigars

In re Jonathan Drew, Inc. (TTAB 2011)

LOVEE LAMB held deceptive for seat covers not made of lambskin

In re Budge Mfg. Co. Inc., 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1988), aff’d 8 USPQ2d 1790 (TTAB 1987)

CAFETERIA (stylized) held deceptive as used in connection with restaurants providing full service to sit-down patrons, excluding cafeteria-style restaurants

In re ALP of South Beach Inc., 79 USPQ2d 1009 (TTAB 2006)

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 Organik Technologies, Inc., 41 USPQ2d 1690 (TTAB 1997)

LONDON LONDON held deceptive for clothing having no connection with London

In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694 (TTAB 1992)

PERRY NEW YORK and design of New York City skyline held deceptive for clothing originating in North Carolina, in view of the renown of New York City in the apparel industry

In re Perry Mfg. Co., 12 USPQ2d 1751 (TTAB 1989)

GOLDENER TROPFEN held deceptive for wines, in view of evidence of the international renown of the Goldtropfchen vineyard of West Germany, the Board 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

Stabilisierungsfonds fur Wein v. Peter Meyer Winery GmbH, 9 USPQ2d 1073, 1075 (TTAB 1988)

COLAGNAC held deceptive for cola-flavored liqueur containing Spanish brandy, the Board concluding that purchasers were likely to believe that applicant’s goods contained COGNAC brandy

Bureau Nat’l Interprofessionnel Du Cognac v. International Better Drinks Corp., 6 USPQ2d 1610 (TTAB 1988)

SILKEASE held deceptive as applied to clothing not made of silk

 In re Shapely, Inc., 231 USPQ 72 (TTAB 1986)

BAHIA held 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

In re House of Windsor, Inc., 221 USPQ 53 (TTAB 1983), recon. denied, 223 USPQ 191 (TTAB 1984)

CEDAR RIDGE held deceptive for embossed hardboard siding not made of cedar

Evans Products Co. v. Boise Cascade Corp., 218 USPQ 160 (TTAB 1983)

TEXHYDE held deceptive as applied to synthetic fabric for use in the manufacture of furniture, upholstery, luggage, and the like

In re Intex Plastics Corp., 215 USPQ 1045 (TTAB 1982)

SOFTHIDE held deceptive for imitation leather material

Tanners’ Council of America, Inc. v. Samsonite Corp., 204 USPQ 150 (TTAB 1979)

AMERICAN LIMOGES, used on dinnerware that was neither made in Limoges, France, nor made from Limoges clay, held deceptive because of the association of Limoges with fine quality china

In re Salem China Co., 157 USPQ 600 (TTAB 1968)

SHEFFIELD, used on cutlery not made in Sheffield, England, held deceptive because of the renowned status of Sheffield in relation to cutlery

Company of Cutlers of Hallamshire in the County of York v. Regent-Sheffield, Ltd., 155 USPQ 597 (TTAB 1967)

IVORY WOOD, for lumber and timber products, held deceptive since the goods were not made of ivorywood nor did they contain an ivorywood pattern

 In re U.S. Plywood Corp., 138 USPQ 403 (TTAB 1963)

Examples of Marks Found to Be NOT Deceptive

PARIS BEACH CLUB, applied to T-shirts and sweatshirts, not deceptive under § 2(a), the Board reasoning that because Paris is not located on an ocean or lake, and does not have a beach, the juxtaposition of "Paris" with "Beach Club" results in an incongruous phrase which purchasers would view as a humorous mark, a take off on the fact that Paris is known for haute couture. Thus, purchasers would not expect T-shirts and sweatshirts to originate in the city of Paris

In re Sharky's Drygoods Co., 23 USPQ2d 1061 (TTAB 1992)

PARK AVENUE held neither deceptive nor geographically deceptively misdescriptive as applied to applicant’s cigarettes and smoking tobacco, the Board finding no goods/place association between Park Avenue in New York City, on which opposer’s world headquarters was located, and tobacco products

Philip Morris Inc. v. Reemtsma Cigarettenfabriken GmbH, 14 USPQ2d 1487 (TTAB 1990)

WOOLRICH for clothing not made of wool found not to be deceptive under §2(a)

 In re Woolrich Woolen Mills Inc., 13 USPQ2d 1235 (TTAB 1989)

NIPPON, for radios, televisions, and the like, found not deceptive in relation to the goods because, although the applicant was an American firm, the goods were actually made in Japan

In re Fortune Star Products Corp., 217 USPQ 277 (TTAB 1982)

SWEDEN and design, for which registration was sought under §2(f) for external artificial kidney units, held not deceptive, the Board 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”

In re Sweden Freezer Mfg. Co., 159 USPQ 246, 249 (TTAB 1968)

COPY CALF, for wallets and billfolds of synthetic and plastic material made to simulate leather, found not deceptive, the Board 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

 A. F. Gallun & Sons Corp. v. Aristocrat Leather Products, Inc., 135 USPQ 459 (TTAB 1962)

How can you Avoid Descriptive or Deceptive Trademarks?

Plan for a Strong Trademark Registration (not a filled in form!)

To verify a potential trademark is: NOT DESCRIPTIVE or DECEPTIVE, is strong, is available to use, and is ready to register, the process should be more than a direct hit federal search by a service unfamiliar with trademark law. To maximize the commercial strength and minimize the weaknesses of a trademark, we start with these five steps:

1) Verify Inherent Strength (this avoids merely descriptive, geographically descriptive and other office actions),

2) Verify Right to Use, (this avoids likelihood of confusion refusal office actions and others)

3) Verify Right to Register, (this avoids many types of refusals including merely descriptive, deceptively misdescriptive, geographically descriptive and others that can often be predicted)

 4) Verify the potential mark (as currently used) Functions As A Mark, and (this avoids specimens refusals, trade name refusals, and others. The USPTO is looking for valid use not just any use of a mark.)

5) Verify that the Goods and Services ID is both the correct and the maximum claim that are user can make and verify that the Goods and Services ID meets USPTO requirements before filing. (This avoids office actions to correct incorrect IDs  which can slow down a registration. Incorrect IDs  may be corrected during the prosecution of a trademark if they do not materially alter the mark or the ID. Correcting problems before application saves time and money. Filing in a new class after an application has been submitted to cure a problem ID is the same price as a new application in that class.)

*We don’t stop here but this is a good start!

A registration that protects legal rights and sets the ground work for Strong Trademark Registration strategies will protect investments in a product or service that can last through a long product life. A registration that only meets minimum requirements for filing (all the right blanks filled in) may not ever issue or may not protect legal rights.

Note: If your form service missed or misstated the relevance of some likelihood of confusion issues, you may not only be refused registration but may also have informed the prior user of the mark or similar mark that you may be infringing on their mark. The USPTO uses the same legal principles as the Federal Circuit court to find likelihood of confusion. See Likelihood of Confusion-Internet for more information.

Call us at 1-651-500-7590 for a Strong Trademark. A Strong Trademark is Not Just a tool to increase sales to customers–it is also easier to sell to your investors & licensees.

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Call 1-651-500-7590 or email for Responses to Office Actions; File or Defend an Opposition or Cancellation; Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

For more information from Not Just Patents, see our other sites:      

Evolved Means, Method or Format-Is your trademark registration obsolete?

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill   Abandoned Trademarks

Chart of Patent vs. Trade Secret

Patent or Trademark Assignments

Trademark Disclaimers   Trademark Dilution     TSDR Status Descriptors

Oppose or Cancel? Examples of Disclaimers  Business Cease and Desist

Patent, Trademark & Copyright Inventory Forms

USPTO Search Method for Likelihood of Confusion

Verify a Trademark  Be First To File    How to Trademark Search

Are You a Content Provider-How to Pick an ID  Specimens: webpages

How to Keep A Trade Secret

Decrease Your Vulnerability to Cancellation

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Opposition Pleadings    UDRP Elements    

Oppositions-The Underdog    Misc Changes to TTAB Rules 2017

How To Answer A Trademark Cease and Desist Letter

Trademark Integrity: Are your IP Assets Vulnerable?

Trademark Refusals    Does not Function as a Mark Refusals

Insurance Extension  Advantages of ®

How to Respond to Office Actions  Final Refusal

What is a Compact Patent Prosecution?

Acceptable Specimen       Supplemental Register   $224 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Trademark-Request for Reconsideration

Why Not Just Patents? Functional Trademarks   How to Trademark     

What Does ‘Use in Commerce’ Mean?    

Grounds for Opposition & Cancellation     Cease and Desist Letter

Trademark Incontestability  TTAB Manual (TBMP)

Valid/Invalid Use of Trademarks     Trademark Searching

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 TTAB Document Service  TBMP 309 Standing

Examples and General Rules for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion   DuPont Factors

What are Dead or Abandoned Trademarks?

 Can I Use An Abandoned Trademark?

Color as Trade Dress  3D Marks as Trade Dress  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS, TEAS RF and TEAS plus  

Extension of Time to Oppose?

Ornamental Refusal  Standard TTAB Protective Order

SCAM Letters Surname Refusal

What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

Descriptive Trademarks  

Likelihood of Confusion 2d  TMOG Trademark Tuesday

Acquired Distinctiveness  2(f) or 2(f) in part

Merely Descriptive Trademarks  

Merely Descriptive Refusals

ID of Goods and Services see also Headings (list) of International Trademark Classes

Register a Trademark-Step by Step  

Protect Business Goodwill Extension of Time to Oppose

Geographically Descriptive or Deceptive

Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Not Just Patents Often Represents the Underdog

 Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   

Section 2(d) Refusals

Zombie Trademark  

What is the Difference between Principal & Supplemental Register?

Typical Brand Name Refusals  What is a Family of Marks? What If Someone Files An Opposition Against My Trademark?

How to Respond Office Actions  

DIY Overcoming Descriptive Refusals

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

Trademark Clearance Search   DIY Trademark Strategies

Published for Opposition     What is Discoverable in a TTAB Proceeding?

Counterclaims and Affirmative Defenses

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