The previous post discussed marks that are geographically deceptive. Marks that are primarily geographically deceptively misdescriptive under §2(e)(3) and those that are deceptive under §2(a) are the same. Therefore, marks that are primarily geographically deceptively misdescriptive of goods or services are considered deceptive and deemed unregistrable with the USPTO under §2(e)(3) of the Lanham Act.  There is a three-prong inquiry to determine whether a mark is primarily geographically deceptively misdescriptive in connection with the goods for which it is being used: (1) The primary significance of the mark is a generally known geographic location; (2) The goods do not come from the place named in the mark, but the relevant public would be likely to believe that the goods originate there; and (3) The misrepresentation is a material factor in the purchaser’s decision to buy the goods in question.  Following is an example of a geographical deceptiveness refusal which was affirmed by the Trademark Trial and Appeal Board.

In a 2020 non-precedential opinion, the Trademark Trial and Appeal Board affirmed the refusal for registration of the geographically deceptive mark EMPORIO ITALIA, for “bedsheets; pillowcases; comforters; bedspreads,” finding the mark to be primarily geographically deceptively misdescriptive. The applicant made two non-compelling arguments that the Board quickly dismissed. The applicant first argued that the mark merely suggested goods of high quality or style, and second, due to the high price of Italian bedding, only a select number of consumers would make the connection between Italy and bedding.  Before applying the three-prong analysis to determine whether or not a mark is primarily geographically deceptively misdescriptive, and therefore unregistrable under §2(e)(3) of the Lanham Act, the Board determined that the doctrine of foreign equivalents applied in this case, where the mark, EMPORIO ITALY translated into EMPORIUM ITALY. The Board found that not only would Italian-speakers stop and translate the mark, but also, “non-Italian speaking American consumers would readily perceive the mark as ‘Emporium Italy’ because the English translation is substantially similar in appearance and sound to Applicant’s mark EMPORIO ITALY.”

Starting with the first prong of the inquiry the Board found that, when considering the mark in its entirety, the primary significance of EMPORIO ITALIA is the generally known geographic location, Italy.  The examining attorney provided internet and gazetteer evidence showing that bedding and textiles are among Italy’s main exports. In submitting such evidence, he met the initial burden of establishing a goods/place association between the applicant’s goods and the generally known location, Italy. The applicant argued that his mark was “suggestive, arbitrary, or fanciful, such as when a geographic mark may indicate that a product is stylish or of high quality, i.e. HYDE PARK or NANTUCKET for clothing, and FIFTH AVENUE for a car.” The Board did not accept the reasoning

The second prong of the inquiry considers whether the relevant public would be likely to believe that the goods originate from the location identified in the mark, though they do not. This prong was satisfied with the applicant’s statement that the goods will originate from India. “The goods are not and will not be manufactured, packaged, shipped from, sold in or have any other connection with the geographic location named in the mark.”  Therefore, given this statement and the satisfaction of the first prong, it is likely that relevant consumers would believe the goods originated from the place identified in the mark. The third and final prong of the test, which questions the materiality of the misrepresentation, was satisfied as well. The Board said, “We infer from this evidence that a substantial portion of customers in the market for ‘bedsheets; pillowcases; comforters; bedspreads’ will be motivated to purchase Applicant’s goods because of the mistaken belief that the goods originate in Italy.”  In light of the evidence provided, the Board affirmed the refusal for registration under §2(e)(3) of the Lanham Act.

An earlier post discussed deceptive marks, marks that may not be registered with the USPTO under §2(a) of the Lanham Act. This post will discuss marks that are geographically deceptive, which may not be registered on the Principal Register or the Supplemental Register.

There are four elements of a §2(e)(3) refusal under the Lanham Act: (1) The primary significance of the mark is a generally known geographic location (2) The goods or services do not originate in the place identified in the mark (3) Purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark (4) The misrepresentation would be a material factor in a significant portion of the relevant consumers’ decision to buy the goods or use the services.

In regard to the first three elements, the determination of whether the primary significance of the mark is a generally known location can be made “by showing that the mark in question consists of or incorporates a term that denotes a geographical location which is neither obscure or remote.” See In re Sharky’s Drygoods Co., 23 USPQ2d 1061, 1062 (TTAB 1992). For this element, the inquiry is whether the term at issue is primarily geographic respective to the mark, not whether the geographic reference dominates the mark. Thereafter, the focus shifts to the fourth element: determining materiality – whether a known or possible misdescription in the mark would affect a substantial portion of the relevant consumers’ decision to purchase the goods or services.

When it comes to determining materiality, which must be established to prove a geographic term is primarily deceptively misdescriptive under §2(e)(3) of the Act, or deceptive under §2(a), the tests differ slightly between determining materiality in cases involving goods, and those involving services.  To establish the materiality portion for goods, the evidence must show that: (1) The place named in the mark is famous as a source of the goods at issue, (2) The goods in question are a principal product of the place named in the mark; or (3) The goods are, or are related to, the traditional products of the place named in the mark, or are an expansion of the traditional products of the place named in the mark.

In terms of determining materiality in cases involving goods, the Board has stated that it “looks to evidence regarding the probable reaction of purchasers to a particular geographical term when it is applied to particular goods.” Evidence to establish a basis for materiality may be found on places such as third-party websites and magazine/gazetteer entries. If the evidence shows that the geographic area named in the mark is sufficiently known to lead purchasers to make a goods/place association, yet the record does not show that the relevant goods are a principal product of the location, the deception will likely be found not material. However, deception will most likely be found to be material if the relevant, or related goods, are a principal product of the geographic location named in the mark. Where locations that are “famous,” “renowned,” “well-known,” or “noted for” goods are in the mark, the location is clearly material.

Determining materiality in services is similar to the process used when determining the materiality in goods. However, when it comes to cases involving services, simply showing that the geographic location named in the mark offers a service is not sufficient, except for in cases where it rises to the level of fame. This quantifier is especially true when dealing with restaurant services. When customers attend a restaurant, they are aware of the location of the services and are less likely to associate the services with the place identified in the mark. However, if a customer sitting in a restaurant in one location would believe that: (1) The food came from the place named in the mark; or (2) The chef received specialized training in the place identified in the mark; or (3) The menu is identical to a known menu from the geographic location named in the mark. Regarding the question of fame, it can heighten the association between the services and the geographic location identified in the mark, which then raises the possibility of deception or materiality in the service mark, the location is material.  The Federal Circuit stated that “the record might show that customers would patronize the restaurant because they believed the food was imported from, or the chef was trained in, the place identified by the restaurant’s mark. The importation of food and culinary training are only examples, not exclusive methods of analysis…” See Les Halles De Paris, 334

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.

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.