Deceptiveness Cases

The last post covered deceptive marks, which are marks that are unregistrable under §2(a) of the Lanham Act. 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.

As discussed in the post on deceptive marks, the Court of Appeals for the Federal Circuit created a three-prong test to determine whether or not a mark may be deceptive and therefore unregistrable under §2(a) of the Act; see In re Budge Mfg. Co., 857 F.2d 773, 775, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988). If a mark meets the first two prongs of the test, it may be considered deceptively misdescriptive under §2(e)(1) of the Lanham Act. If a mark satisfies all three prongs of the test, it may be considered deceptive. If an examining attorney has found a mark to be deceptive, and therefore unregistrable with the USPTO, an applicant may go before the Trademark Trial and Appeal Board on appeal. The Trademark Trial and Appeal Board will either affirm the refusal for registration or reverse the decision in favor of the applicant. Below are two recent Trademark Trial and Appeal Board decisions affirming refusal for registration under §2(a) of the Lanham Act:

In a 2019 non-precedential opinion, the Trademark Trial and Appeal Board affirmed the refusal for registration of the deceptive mark NU DOWN, for pillows and bedding “made in whole or substantial part of synthetic down or down alternatives.” For the first element of the three-prong test, the applicant did not argue that the term DOWN was descriptive and had disclaimed it previously. However, the applicant argued that the mark NU DOWN was not misdescriptive because the term NU could imply something aside from natural down. The Board found that the term “down,” in the dictionary presumptively meant natural down, and if not precisely natural down, something comparable. It was found that when used in commerce, relevant purchasers believed the term “down” to mean natural down unless otherwise stated.  Turning its attention to the term NU, the Board held that even if it was understood as the phonetic version of the term “new,” it could simultaneously mean “an updated or modern version” of natural down instead of new and substitute material. The Board found that the applicant’s mark satisfied the first prong of the test and was misdescriptive of the identified goods. “The addition of the word ‘NU’ to the word ‘DOWN’ would not inform purchasers with any clarity that Applicant’s goods are not filled with down.” Regarding the second element of the test, relating to whether or not prospective purchasers are likely to believe that the misdescription actually describes the goods, the applicant admitted that the term “down” is often used in the particular industry in reference to products containing natural down. In satisfying the second prong of the test, the Board concluded that although the applicant’s packaging explained the products were down alternative, there was no guarantee that consumers would read the provided explanation. Furthermore, those purchasing the goods online may not read the fine print labeling required by the federal Textile and Wool Acts. “The mark standing alone must pass muster and this it fails to do.” Finally, the third element of the test, in regard to whether or not the misdescription is likely to affect a significant portion of the relevant consumers’ decision to purchase, the Board found that a significant number of relevant consumers would likely be interested in knowing what material was used in the applicant’s goods for multiple reasons including thinness or bulkiness of the fill, allergy issues, animal cruelty issues and monetary factors. Because of this, the Board concluded that the misdescription in the applicant’s mark would likely affect the purchasing decisions of a significant portion of relevant consumers. In summation, the Board affirmed the Examining Attorney’s refusal of registration for deceptiveness under §2(a) of the Lanham Act.

In a 2018 non-precedential opinion, the Trademark Trial and Appeal Board affirmed the refusal for registration of the deceptive mark P6 CHROME, for “dietary and nutritional supplements that do not contain chromium.” The Board found the mark to be deceptive because it was a misdescription of the identified goods which could lead consumers to believe that the supplements contained chromium and would, in turn, affect a significant portion of relevant consumers. In an effort to rebut this, the applicant claimed that the term “chrome” simply referred to the color of the packaging. The Board then turned to the three-prong test created by the Court of Appeals for the Federal Circuit to determine whether or not a mark is deceptive. To satisfy the first element of the test, the Board must decide whether or not the term misdescribes the character, quality, function, composition or use of goods. In this instance, both the applicant and the Examining Attorney submitted dictionary definitions that established that the term “chrome” meant chromium. It had been previously established that the applicant’s goods did not contain chromium, therefore the term was misdescriptive. The applicant argued that the term “chrome” had more than one meaning, but the Board held that alternative meanings held no merit in the context of the goods for which the mark was used. The record supplied evidence showing that there were already many dietary and nutritional supplements containing chromium sold under marks that used the term “CHROME.” Though the applicant argued that term “chrome” was in regard to the color of the packaging, the Board dismissed it saying that not all potential purchasers would see the packaging, only the mark and would likely perceive the term “CHROME” to be a description of an ingredient in the identified goods. The second prong, which asks if consumers are likely to believe the misdescription, was satisfied since the applicant’s goods did not contain chromium, however, it was previously established that many dietary and nutritional supplements do contain chromium. The Board went on to explain that not only average customers but “sophisticated purchasers” as well would be likely to believe the misdescription. “Sophisticated” customers would likely be familiar with the health benefits of chromium and be aware of other dietary and nutritional supplements that contained chromium and were sold under marks containing the term “CHROME.” The third prong of the test, regarding whether or not the misdescription would affect the purchasing decisions of a significant portion of relevant consumers, was satisfied as well. The Board found that though not all consumers would be aware of the potential health benefits of chromium, consumers who frequently purchased supplements “would find Applicant’s supplements more desirable because of the perceived representation that they contain chromium.” In this manner, all three prongs of the test were satisfied, and the Board affirmed the refusal of registration for deceptiveness under §2(a) of the Lanham Act.

Deceptive marks may not be registered with the USPTO under any circumstance. Unlike marks that have been deemed deceptively misdescriptive under §2(e)(1) of the Lanham Act, marks found to be deceptive under §2(a) cannot be federally registered even with a claim of acquired distinctiveness under §2(f) of the Lanham Act; nor is it enough for the applicant to disclaim the deceptive material.

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