Under §2(e)(1) of the Lanham Act, there are several types of marks that may not be registered with the USPTO: merely descriptive marks, deceptively misdescriptive marks, primarily geographically descriptive marks, geographically deceptively misdescriptive marks, marks that are primarily a surname and marks that compromise any matter, used wholly, is functional. This article will explore marks that are deceptively misdescriptive. A mark is deceptively misdescriptive if it immediately conveys a certain idea, but the idea is false, although plausible. Simply, a mark may not be registered, if people who encounter the mark, in connection with the goods or services for which it is being used, are likely to believe the misrepresentation. Deceptively misdescriptive marks fall somewhere between marks that consist of (or) comprise immoral, deceptive or scandalous matter, which may not be registered under §2(a), and arbitrary marks which may be registered on the Principal Register.

The Federal Circuit devised a two-prong test to determine whether a mark is deceptively misdescriptive or merely deceptive.

The trademark examining attorney must first decide if the term is misdescriptive of the character, quality, function, composition or use of the goods or services for which it is being used.  It is the examining attorney’s job to record evidence demonstrating why the mark is misdescriptive. Specifically, the record must show the meaning of the term in question, and that the identification indicates that the applicant’s goods or services do not have the feature or characteristic. Several examples of evidence are dictionary definitions, Internet websites, point-of-purchase displays, advertising materials, product information sheets, hang tags and trade journals. An applicant’s statement in reference to his/her goods or services may also satisfy the first component of the test. An example of a misdescriptive term is APPLE for computer products. However, the consuming public is unlikely to believe the misrepresentation conveyed through the mark. This would make the misdescriptive term an arbitrary mark.

The second component of the test examines whether the idea conveyed is plausible, and how likely the consuming public would be to believe the misrepresentation of the mark in connection with goods or services for which it is being used. In order to prove this prong of the test, an examining attorney must provide evidence that the description conveyed by the mark is plausible by demonstrating that potential consumers regularly encounter goods or services that contain the features or services in the mark. For example, in a 1988 Federal Circuit case, an applicant attempted to register the mark LOVEE LAMB for seat covers that were not made of the lamb. In order to demonstrate the believability of the idea conveyed in the mark, the examining attorney provided evidence that seat covers can be made of lambskin and sometimes are made of lambskin, therein proving that the consuming public would be likely to believe the misrepresentation conveyed by the mark. Much like the first prong, an applicant’s hangtags, labels, advertising and product information may also provide evidence of the believability of the misdescription.

Furthermore, the fact that the true nature of the goods or services is revealed by other elements on the labels, advertisements or other materials with which the mark is connected does not preclude a determination that a mark is deceptively misdescriptive.

Following is an example of a mark that was refused registration because it was deceptively misdescriptive under §2(e)(1) of the Lanham Act.

In a 2006 precedential opinion by the Trademark Trial and Appeal Board, the Board affirmed refusal for registration of the deceptively misdescriptive mark SEPTEMBER 11, 2001, for books and media services. The examining attorney provided evidence that established that the date of Sept. 11, 2001, “acquired special significance in America.” The examining attorney went on to clarify that the date was used as a common reference to the terrorist attacks that occurred on that date. In satisfying the first prong of the two-prong test, the Board determined that the term was misdescriptive in connection to the applicant’s goods which did not in any way cover the events that took place on Sept. 11, 2001. In a similar fashion, the second prong was satisfied when the Board ruled that in light of the many books, articles and shows about the events that took place on that date, it would be likely for consumers to believe the misdescription of the mark. The Board concluded, “While the nature of the misdescription would become known after consumers studied applicant’s books and entertainment services, that does not prevent the mark from being deceptively misdescriptive.”

Marks that have been refused registration under §2(e)(1) of the Lanham Act on the ground of deceptive misdescriptiveness may be registerable under §2(f) of the Act if they have acquired distinctiveness, or on the Supplemental Register if appropriate. Marks that have been found deceptive under §2(a) of the Act may not be registered on either the Principal Register or the Supplemental Register in any case.

Under the Trademark law, merely descriptive marks are not entitled to registration on the Principal Register. Merely descriptive marks are marks that describe an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services. Unlike suggestive marks that take a certain amount of thought to associate the mark with a good or service, merely descriptive marks convey an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services in question. Both types of marks (Descriptive and Suggestive) are discussed at length in the post on the Spectrum of Distinctiveness.

As discussed in the post on Secondary Meaning, a merely descriptive mark may not be afforded the protections afforded under the Lanham Act without having acquired distinctiveness. Simply because an owner may be the first and only user of a mark that may be descriptive does not mean the mark is entitled to registration by the U.S. Trademark Office or even protection by the courts.

When determining whether a mark is merely descriptive or not, the decision must be made in direct relation to the goods and services with which the mark is used. An Examining Attorney at the Trademark Office must look at the possible significance that the mark would have to the general consumers of the goods or services in the marketplace. When searching for the context in which a mark may be used, sources include websites, publications, labels, packages, advertising material, explanatory text on specimens for the goods or services and consumer surveys.  Marks that are merely descriptive, are often terms that could be used to describe an entire category of goods or services; therefore, they are not inherently associated with one specific brand of goods or services. For example:

In 2016, the Trademark Trial and Appeal Board affirmed an examining attorney’s decision in finding the mark “BEST PROTEIN,” merely descriptive of the owner’s dietary and nutritional supplements. In addition to other elements, the examining attorney pointed out that protein is a common and heavily promoted element in dietary and nutritional supplements, he furthered his argument documenting several products that included the term protein not only in the marks themselves but listed on the ingredients label as well.

Furthermore, a term does not have to describe all of the purposes, functions, characteristics or features of a good or service to be considered merely descriptive. It can be classified as such if the term describes one important function, attribute or property. In a similar fashion, the term does not need to describe all of the goods or services identified on the application, so long as it describes one of them. An example of this can be seen in this decision:

In 2018, the Trademark Trial and Appeal Board affirmed a trademark examining attorney’s decision that the mark “BUYER ENGINE” was merely descriptive in reference to the owner’s real estate marketing services. Along with numerous other reasons, the Board stated that the mark refers “to a significant feature of the services themselves…”

A mark may also be considered merely descriptive if the listed goods or services fall within a subset of the of their respective class identified by the term.

Assessing whether a mark is merely descriptive depends upon the facts in each case.

Our Office can help you determine whether your mark is merely descriptive or suggestive for the goods and services with which it is connected.

Not all trademarks are created equal. Certain types of marks are entitled to little or no protection, while others are afforded a strong scope of protection against competing marks. The purpose of a trademark is to inform consumers of the source of the goods or services. Strong trademarks can be used to prevent others from using confusingly similar marks (i.e. source identifiers) in connection with similar goods or services, so the consumer is not confused as to the source. Regardless of whether a mark is a common law mark or a registered mark, the strength of the rights acquired in the mark depends on its level of distinctiveness. There are five categories of trademarks within the spectrum of distinctiveness. Each category will be addressed from the weakest type of mark to the strongest.

Generic Marks: These marks are the weakest and an owner cannot use this type of mark to identify the source of his/her goods or services or register a generic mark with the USPTO. A generic term is one that describes a whole category or a group of goods or services. For example, an owner cannot register the trademark “COLA,” because the generic term describes an entire category of beverages. Because a generic term is simply a descriptor, no one owner can claim exclusive rights to it.

Descriptive Marks: These are the second weakest type of mark and often convey an immediate idea of the ingredients, qualities or characteristics of a good or service. Much like generic terms, these are words or phrases that are commonly used in connection with goods and services and can be difficult to distinguish from one another. An example of a descriptive mark would be “Clean Shower” for a shower cleaning product.  The mark is simply identifying what the product does and uses a descriptive term that is not unique to one specific product. Under the common law, a descriptive mark is entitled to little or no protection, with certain exceptions. The USPTO may not register “merely descriptive” marks. This is because registration would possibly prevent competitors from describing their own products. Sometimes, descriptive marks can become associated with the goods or services with which they are used. After a minimum of five years of using a mark in commerce with goods or services, the mark may be said to have acquired distinctiveness or secondary meaning because purchasers have come to associate the descriptive words with one source for the products or services. At the USPTO, an owner may attempt to show that they used the mark for at least five years exclusively and continuously. If it can be shown that by the fifth anniversary, the mark has acquired distinctiveness/secondary meaning, it may qualify for registration with the USPTO. Two examples of descriptive marks that have acquired a secondary meaning are AMERICAN AIRLINES and KENTUCKY FRIED CHICKEN. Surnames fall in the descriptive category as well, such as the hotel chain HILTON Hotel. Aside from famous marks, when descriptive marks are afforded protection, it is usually very narrow.

Suggestive Marks: These marks often suggest an aspect or feature of an owner’s goods or services without directly describing the product.  There is sometimes a fine line between suggestive marks and descriptive marks. Suggestive marks require more thought to grasp the connection between the mark and the good or service. They are more vague than descriptive marks, which directly describe the product. Suggestive marks have a higher chance of being approved by the USPTO because standing alone, the word or phrase does not immediately convey the goods or services to which it is connected. These marks, which are more unique or creative, can be afforded a broader scope of protection. An example of a suggestive mark would be “COPPERTONE,” for the brand of sunscreen. The mark “COPPERTONE,” suggests the outcome of the product, without directly describing it. Another example is “PLAYBOY.” Some of the most contentious litigation hinges on whether a mark is descriptive or offensive.

Arbitrary Marks: These are existing words or phrases that would not normally be associated with an owner’s goods or services. These are terms or phrases that are unrelated to the good or service itself. They are the second strongest type of mark because the owner is giving a common word or phrase a new or unique meaning by associating it with his/her product. An example of a strong arbitrary mark would be “UBER” for the ridesharing service. While the term “uber” is now associated mainly with the ridesharing service, Merriam Webster’s Dictionary defines the term “uber” as, “being a superlative example of its kind or class.” Other examples include “APPLE” for technological products and “CAMEL” for tobacco products.

Coined or Fanciful Marks: These marks are the strongest, and most well-protected marks. A fanciful mark is a made-up term that does not have a previously existing dictionary definition. A coined term is a new and unique combination of words without a previous meaning. Since these terms did not exist prior to their usage, they are extremely difficult, or even impossible to challenge. Examples include: EXXON, ROLEX, LEXUS, XEROX and CLOROX.

In conclusion, when choosing a trademark, it is important for an owner to come up with a creative name for his/her goods or services.