Deceptive Marks

An earlier post discussed marks that were found to be deceptively misdescriptive under §2(e)(1) of the Lanham Act. This post will discuss marks that are found to be deceptive under §2(a) of the Act. The Lanham Act, 15 U.S.C. §1052(a), bars registration of deceptive matter on either the Principal Register or the Supplemental Register. The Trademark Manual of Examining Procedure specifies that, “Neither a disclaimer of the deceptive matter nor a claim that is 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.”

A deceptive mark can be a single deceptive term, a deceptive term within a composite mark which also features non-deceptive elements or a term or portion of a term that suggests a deceptive quality, characteristic, function, composition or use. Deceptive marks can also be marks that falsely portray the material content of a product and marks that are geographically misdescriptive.

To determine whether or not a mark consists of or comprises deceptive matter, the Court of Appeals for the Federal Circuit created a three-prong test; see In re Budge Mfg. Co., 857 F.2d 773, 775, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988). The test is the same one used to determine whether or not a mark is deceptively misdescriptive. The three parts, as outlined in the Trademark Manual of Examining Procedure, are as follows: (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?

If the first two prongs are satisfied, then a term is deceptively misdescriptive under §2(e)(1) of the Lanham Act. If the first two, and the third prong are met, then the mark is deceptive. A deceptively misdescriptive mark may feature a misdescription that is a relevant factor that may be considered in the purchasing decision. However, if a mark features a misdescription that is a material factor considered in the purchasing decision, it is deceptive under §2(a).  In any case where it is not clear whether or not a misdescription would materially affect a decision to purchase, an examining attorney should refuse federal registration under both §2(a) and §2(e)(1) of the Lanham Act.

In order for an examining attorney to establish a prima facie case of deceptiveness, he/she must supply sufficient evidence to show that the misdescriptive quality or characteristic would be a material factor in the purchasing decision of a “significant portion of the relevant consumers.” To supply such evidence, the examining attorney must produce evidence that the misdescriptive quality or characteristic would make the goods or services “more appealing or desirable to prospective purchasers.”

When determining whether a mark is deceptive or not, there are certain objective criteria that an examining attorney must analyze in deciding if a misdescriptive term is a material factor or not. Often, if there is evidence of “objective inducement to purchase” within or comprising the mark, it supports a notion that a reasonable number of relevant consumers would likely be deceived. Five common objective criteria considered when materiality are, (1) Superior Quality, (2) Enhanced Performance or Function, (3) Difference in Price, (4) Health Benefit and (5) Religious Practice or Social Policy. If an examining attorney can provide evidence showing that the goods or services for which the mark is being used do not contain the above criteria, then the mark will be deemed deceptive.

The same evidence used to show that a term is deceptively misdescriptive can also be used to establish that a mark is deceptive. This includes Internet searches using the objective criteria and applicant’s own advertising materials including specimens, brochures, web pages, press releases or product or service information sheets. An examining attorney must also record any instances in which an applicant attempts to benefit as a result of the potentially deceptive term. Instances wherein advertising materials contain false ascertains pertaining to the deceptive wording must be recorded as well. An applicant’s intent to deceive may also provide strong evidence in determining whether or not a mark is deceptive, though showing intention is not a requirement under §2(a) of the Act.

A mark that is found to be deceptive under §2(a) of the Lanham Act may, under no circumstance, be registered on either the Principal Register or the Supplemental Register. However, if a mark is found to be deceptively misdescriptive, it may be eligible for registration under §2(f) of the Act if it has acquired distinctiveness, or on the Supplemental Register if appropriate.

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