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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 Styleclick.com Inc.,
58 USPQ2d 1523, 1526- 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- 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- 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- |
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Examples of Descriptive Trademarks- |
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Examples of Marks Found to Be Deceptive or Deceptively Misdescriptive |
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KUBA KUBA is primarily geographically deceptively misdescriptive as applied to cigars |
In re Jonathan Drew, Inc. (TTAB 2011) |
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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) |
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CAFETERIA (stylized) held deceptive as used in connection with restaurants providing
full service to sit- |
In re ALP of South Beach Inc., 79 USPQ2d 1009 (TTAB 2006) |
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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) |
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LONDON LONDON held deceptive for clothing having no connection with London |
In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694 (TTAB 1992) |
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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) |
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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) |
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COLAGNAC held deceptive for cola- |
Bureau Nat’l Interprofessionnel Du Cognac v. International Better Drinks Corp., 6 USPQ2d 1610 (TTAB 1988) |
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SILKEASE held deceptive as applied to clothing not made of silk |
In re Shapely, Inc., 231 USPQ 72 (TTAB 1986) |
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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) |
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CEDAR RIDGE held deceptive for embossed hardboard siding not made of cedar |
Evans Products Co. v. Boise Cascade Corp., 218 USPQ 160 (TTAB 1983) |
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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) |
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SOFTHIDE held deceptive for imitation leather material |
Tanners’ Council of America, Inc. v. Samsonite Corp., 204 USPQ 150 (TTAB 1979) |
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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) |
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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- |
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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) |
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Examples of Marks Found to Be NOT Deceptive |
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PARIS BEACH CLUB, applied to T- |
In re Sharky's Drygoods Co., 23 USPQ2d 1061 (TTAB 1992) |
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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) |
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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) |
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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) |
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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) |
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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) |
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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- Call us at 1- |
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