Posts Tagged ‘Descriptive Marks’

Deceptively Misdescriptive Case – CLEAR

Thursday, May 6th, 2021

In a 2021 precedential case, the Trademark Trial and Appeal Board affirmed two §2(e)(1) registration refusals for the mark CLEAR finding it deceptively misdescriptive for footwear, lingerie, and other clothing items, and for handbags, purses, wallets and related items, all “excluding transparent goods.”

Under §2(e)(1) a mark is considered deceptively misdescriptive if: (1) The mark misdescribes a quality, feature, function or characteristic of the goods or services with which it is used, and (2) consumers would be likely to believe the misrepresentation. “[T]he reasonably prudent consumer test is applied in assessing whether consumers are likely to believe the misrepresentation.” See In re Hinton, 116 USPQ2d at 1052 (citing R. J. Reynolds Tobacco Co. v. Brown & Williamson Tobacco Corp., 226 USPQ 169, 179 (TTAB 1985)).

The Board began its analysis of the proposed mark by determining whether or not the mark was misdescriptive of the goods with which it was used. After reviewing the evidence submitted by the Examining Attorney, which included the dictionary definition of the term “clear” and third-party website submissions, it considered Applicant’s argument that “it is only seeking to register it for non-transparent footwear.” (Emphasis added.) Further, the Applicant argued that its proposed mark did not describe a plausible feature of its goods because the goods recited in the application did not include transparent clothing, footwear or accessories. However, the Board found that argument ineffective and stated, “We cannot assume that consumers of Applicant’s goods will be aware that its identification is so restricted, and the restriction is not controlling of public perception.” See In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1187-88 (TTAB 2018).  The Board was similarly unpersuaded by Applicant’s argument that the term “clear” had other meanings when used in connection with its goods.  Accordingly, the Board found the first prong of the test was satisfied and concluded that the Applicant “cannot avoid a finding of deceptive misdescriptiveness by excluding from its identification the very characteristic that its mark is misdescribing.” Cf. In re ALP of South Beach, Inc., 79 USPQ2d 1009, 1010 (TTAB 2006).

The Board then considered the second prong of the test: whether or not consumers were likely to believe the misrepresentation. The evidence submitted by the Examining Attorney showed that Applicant’s goods could indeed be transparent, “clear” or include “clear” elements. Moreover, the record indicated that “clear shoes were one of the big breakout trends on the spring/summer runways.” The Board found that as a result of the evidence submitted, consumers would likely believe that the items under the proposed mark CLEAR were clear or transparent even when they were not. The Applicant contended that consumers were unlikely to believe the misrepresentation because they would be “visually inspecting” the items prior to the purchase. This argument did not sway the Board and it found that just because consumers would understand that the goods were not made of, and/or did not contain, clear or transparent elements it did not negate their understanding of the misdescription prior to visual inspection. The Board stated, “If Applicant’s goods were to be promoted by word-of-mouth or on social media or in print (e.g., in fashion blogs, magazine articles, or even Applicant’s future advertising) without an image of the goods, a reasonable consumer seeking what the record shows to be a fashion trend would believe that Applicant’s goods, promoted under the proposed CLEAR mark, would feature transparent or clear attributes.” See, e.g., In re Woodward & Lothrop Inc., 4 USPQ2d 1412, 1414 (TTAB 1987). So, the Board found that the second prong of the test was satisfied.

In conclusion, the Board found that both prongs of the deceptively misdescriptive test were satisfied, and therefore affirmed both of the §2(e)(1) refusals of registration for the Applicant’s proposed mark CLEAR.

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