In a 2021 non-precedential decision, the Trademark Trial and Appeal Board affirmed a disclaimer requirement for the term DANK in the proposed mark DANK TANK for “Ale; Beer.” The Board found the term to be merely descriptive of the applicant’s goods, and therefore without the disclaimer, the proposed mark was unregistrable under §2(e)(1) and §6(a) of the Trademark Act.

Under §2(e)(1), the determination of descriptiveness of an Applicant’s mark, or portion of one, is based on three elements: (1) The relation of the term to the Applicant’s goods or services, (2) The context in which the mark is being used and (3) the possible significance the mark would have to the average purchaser because of the manner of its use or intended use, not in the abstract or on the basis of guesswork. See In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012). If the term is found to be merely descriptive of an Applicant’s goods or services, it is considered to be an unregistrable component of the mark and must be disclaimed.

The Applicant attempted three arguments: First, the Applicant argued that neither the term DANK nor the unitary mark DANK TANK conveyed an immediate idea of the characteristics of the goods, but rather was suggestive of “a beer or ale product that does not include cannabis.” The Applicant reasoned that “customers must apply multiple mental steps, first associating the term ‘tank’ with a beverage and then associating the unitary mark ‘DANK TANK’ with a particular beverage (beer, ale) that does not include cannabis, demonstrates the suggestiveness of the mark.” Second, the Applicant argued that DANK TANK was a unitary mark for the goods at issue and therefore, it should not be dissected in order to require a disclaimer for the term DANK. In its third and final argument, the Applicant maintained that the proposed mark DANK TANK was a double entendre, because “the term ‘dank’ is used by some to refer to cannabis.”

Starting with the Applicant’s first argument, the Board turned to the definition of the term “dank” submitted by the Examining Attorney, and a third-party usage of the term, which was in line with the submitted definition. As defined on UrbanDictionary.com, the term “dank” “means or refers to ‘…sticky, juicy, very pungent and of a high level’ and ‘[v]ery hoppy, cloudy IPAs with high alcohol content and flavors with a very funky taste.’” Further, the Examining Attorney submitted an article from the Washington Post website that said, “…you see, cannabis and hops are relatives, and both get their flavors and aromas from compounds called terpenes. That’s why brewers like to describe super-hoppy IPAs the way that they might talk about marijuana: ‘dank,’ ‘resinous,’ ‘sticky.’” Regarding the submitted definition, the Board stated that simply because no traditional dictionary contained a definition for the term “dank,” it did not mean that the term was not merely descriptive. See In re Thomas Collators, Inc., 158 USPQ 297, 298 (TTAB 1968). Ultimately, in terms of the Applicant’s first argument, the Board concluded that the term was indeed merely descriptive of the listed goods.

Turning the Applicant’s second argument, which held that DANK TANK was a unitary mark, the Board maintained that “A mark is considered unitary when it creates a single and distinct commercial impression separate and apart from the meaning of its constituent elements.” See Dena v. Belvedere, 21 USPQ2d at 1052. Further, “If the matter that comprises the mark or relevant portion of the mark is unitary, no disclaimer of an element, whether descriptive, generic, or otherwise, is required.” See In re EBS Data Processing, 212 USPQ 964, 966 (TTAB 1981). When looking at the Applicant’s proposed mark DANK TANK, the Board found that prospective purchasers who viewed the proposed mark would know that DANK was descriptive of the listed goods, and TANK was defined as “a usually large receptacle for holding, transporting, or storing liquids (such as water or fuel).” So, they would easily find that the proposed mark was comprised of two separate terms. Therefore, the Board concluded that the proposed mark DANK TANK was not a unitary mark and could indeed be dissected for the purpose of a required disclaimer.

Finally, the Board briefly looked at the Applicant’s last argument that the proposed mark was a double entendre. As stated in the Trademark Manual of Examining Procedure (TMEP), “For trademark purposes, a ‘double entendre’ is an expression that has a double connotation or significance as applied to the goods or services. … The multiple interpretations that make an expression a ‘double entendre’ must be associations that the public would make fairly readily.” The Applicant’s argument that the term “dank” was occasionally used to refer to cannabis was not strong enough for the Board to find a double entendre. It found that when the term “dank” was combined with “tank,” it maintained its descriptive significance in relation to the Applicant’s listed goods. So, the Board stated, “Therefore, “DANK” would be perceived by purchasers of Applicant’s ale and beer as signifying a quality, feature or characteristic of those goods resulting in no unitary meaning or double entendre imparted by DANK TANK.”

In conclusion, the Board found that the proposed mark DANK TANK was merely descriptive of the Applicant’s listed goods, it did not create a unitary mark and it did not form a double entendre, therefore, the Board affirmed the disclaimer requirement of the term “dank” under §2(e)(1) and §6(a) of the Trademark Act.

In a 2021 non-precedential case, the Trademark Trial and Appeal Board affirmed a refusal of registration for the mark MALIBU SUPPER CLUB (SUPPER CLUB disclaimed) for restaurant and bar services and found the mark to be geographically descriptive under §2(e)(2).

To establish that a mark is geographically descriptive, the must satisfy three elements: (1) The primary significance of the term in the mark sought to be registered is the name of a place generally known to the public, (2) The services originate in the place named in the mark and (3) The public would make an association between the goods or services and the place named in the mark by believing that the goods or services originate in that place. See In re Newbridge Cutlery Co., 776 F.3d 854, 113 USPQ2d 1445, 1448 (Fed. Cir. 2015). Moreover, geographic descriptiveness “‘must be evaluated in relation to the particular goods [or services] for which registration is sought, the context in which [the mark] is being used, and the possible significance that the term would have to the average purchaser of the goods [or services] because of the manner of its use or intended use.’” In re Chamber of Commerce of the U.S.A., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012).

The Board began its analysis by stating the facts that were set forth in the recorded evidence: (1) The term MALIBU in the applied-for mark is a generally known geographic location, (2) The phrase “supper club” is commonly used by restaurants and bars to identify a type of restaurant, (3) Applicant’s services will originate in Malibu and (4) Relevant consumers will immediately make a connection between the place located in the mark, i.e., Malibu, California, and the services offered by Applicant, namely, restaurant and bar services.

However, the Applicant argued that the term MALIBU would not be seen primarily as a place by consumers, but rather as a common reference to luxury or relaxation. The Applicant’s argument relied on the definition a “[glitzy] area that Hollywood movie stars flock to,” which was taken from a “Pop Culture Dictionary” excerpt from Dictionary.com. The Board negated the argument as the full “Pop Culture Dictionary” passage made it clear that the primary significance of MALIBU was the geographic location, and the passage even began with “Malibu variously refers to a wealthy beach city near Los Angeles….” So, the Board found that consumers would immediately perceive the mark MALIBU SUPPER CLUB, in connection with the Applicants listed services, as designating the location of Applicant’s restaurant.

The Board then looked at the third-party registrations submitted by the Applicant that contained the term MALIBU. It found that the applications were not relevant to the issue at hand as one group of registrations involved goods or services that were unrelated to restaurant or bar services, and the second group of applications contained additional or distinctive wording and the Applicant’s additional wording, SUPPER CLUB, had already been disclaimed. Ultimately the Board stated, “As none of the marks featured in the above-referenced registrations is analogous to the applied-for mark, the third-party registrations submitted by Applicant do not change the result in this case.” See, e.g., In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1635 (Fed. Cir. 2016).  

In conclusion, the mark MALIBU SUPPER CLUB satisfied each of the three elements under the §2(e)(2) geographically descriptive test. The mark primary significance of the mark, not including the disclaimed terms, MALIBU SUPPER CLUB is the name of a place generally known to the public, the applied-for services originated in Malibu and as the Board previously stated, relevant consumers will immediately make a connection between the place located in the mark, i.e., Malibu, California, and the services offered by Applicant, namely, restaurant and bar services.  So, in light of the information at hand, the Board affirmed the §2(e)(2) refusal of registration.

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.