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I. INTRODUCTION
II. ELEMENTS OF A §2(a) REFUSAL
III. ESTABLISHING DECEPTIVENESS
A. Is the Term Misdescriptive of a Character, Quality, Function,
Composition, or Use of the Goods/Services?
B. Is the Misdescription Believable?
C. Determining Materiality
1. Objective Criteria
2. Mere Personal Preference
IV. PROCEDURES FOR ISSUING §2(a) REFUSALS
A. When the Mark is Clearly Misdescriptive
B. When It is Not Clear Whether the Mark is Misdescriptive
C. Guidelines for Amending the Identification of Goods/Services
1. Goods
2. Services
D. Responding to Applicant’s Arguments
1. Extrinsic Evidence
2. When Deception Occurs
3. Evidence of Long-Term Use and Acquired Distinctiveness
V. CASE LAW INTERPRETING §2(a)
A. Deceptive
B. Not Deceptive
I. INTRODUCTION
Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a), prohibits the registration of
immoral or scandalous matter; deceptive matter; and matter that may disparage,
falsely suggest a connection, or bring into contempt or disrepute. This examination
guide reviews (1) the elements of a §2(a) deceptiveness refusal with respect to non-
geographic marks; (2) evidentiary issues with respect to the refusal; (3) procedures
for issuing refusals; and (4) case law interpreting §2(a)1. It supersedes the
Trademark Manual of Examining Procedure (TMEP), 5th edition, to the extent any
inconsistency exists.
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issue and that the identification indicates that the applicant’s goods/services lack
the feature or characteristic. Examples of such evidence are dictionary definitions,
Lexis/Nexis® articles, Internet websites, advertising material, product information
sheets, hang tags, point-of-purchase displays, and trade journals. The applicant’s
admission regarding its goods/services may also satisfy the first prong of the test.
C. Determining Materiality
To establish a prima facie case of deceptiveness, the examining attorney must
provide sufficient evidence that the misdescriptive quality or characteristic would be
a material factor in the purchasing decision of a significant portion of the relevant
consumers because it would make the product or service more appealing or
desirable.16 A product or service is usually more desirable because of objective
standards or criteria that provide an objective inducement to purchase the goods
and/or services beyond that of mere personal preference.
1. Objective Criteria
In assessing whether a misdescription would affect the decision to purchase, the
following are examples (not a comprehensive list) of the type of objective criteria
that should be used to analyze whether a term is a material factor. The evidence
may often point to more than one characteristic, thereby strengthening the
examining attorney’s prima facie case. For example, the evidence may show that
goods deemed “organic” because they are produced in compliance with objective
criteria can also be more costly, provide health benefits, and satisfy a social policy
of reducing the impact on the environment by utilizing chemical-free growing
practices. The evidence also must suffice to indicate that the misdescriptive quality
or characteristic would affect the purchasing decision of a significant portion of the
relevant consumers.17 Generally, evidence of the objective inducement to purchase
(see below) supports a presumption that a significant portion of the relevant
consumers would likely be deceived.
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The evidence necessary to establish deceptiveness can come from the same
sources used to show that the term is misdescriptive. Searches that combine the
deceptive term with terms such as “desirable,” “superior,” “premium,” “better
quality,” “sought after,” “more expensive,” or “established standards” may be
useful in seeking evidence to support the second and third prongs of the test.
Applicant’s own advertising - in the form of specimens, brochures, web pages, press
releases, or product and service information sheets - may provide the best evidence
of deceptiveness. Moreover, the examining attorney should make of record any
instances where the applicant attempts to benefit from the potentially deceptive
term and where the advertising includes false assertions related to the deceptive
wording. Although not a requirement for a deceptive refusal, proof of an actual
intent to deceive would be considered strong evidence of deceptiveness.
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Whether the requisite evidentiary support can be found to establish that the use of
such terms in connection with goods/services that do not contain or feature the
characteristic is deceptively misdescriptive must be determined on a case-by-case
basis.20
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If the applicant states that the goods/services do not contain the feature or
characteristic, the examining attorney must so indicate in a note to the file
and must then issue a refusal under §2(e)(1) as deceptively misdescriptive (if
believable but not material) or a refusal under §2(a) as deceptive (if
believable and material) and an alternative refusal under §2(e)(1) as
deceptively misdescriptive, and make all other relevant requirements.
To ensure the completeness of the record in the event of an appeal, any
Office action issued must also include an information request under Rule
2.61(b), 37 C.F.R. §2.61(b), asking whether the goods/services contain the
feature or characteristic.
Services
Amending an identification of services to add “featuring” a material term (e.g.,
“restaurants featuring organic cuisine” and “retail furniture stores including leather
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Co. v. Boise Cascade Corp., 218 USPQ 160 (TTAB 1983) (CEDAR RIDGE held
deceptive for embossed hardboard siding not made of cedar); In re Intex Plastics
Corp., 215 USPQ 1045 (TTAB 1982) (TEXHYDE held deceptive as applied to synthetic
fabric for use in the manufacture of furniture, upholstery, luggage and the like);
Tanners' Council of America, Inc. v. Samsonite Corp., 204 USPQ 150 (TTAB 1979)
(SOFTHIDE held deceptive for imitation leather material); In re U.S. Plywood Corp.,
138 USPQ 403 (TTAB 1963) (IVORY WOOD, for lumber and timber products, held
deceptive since the goods were not made of ivorywood nor did they contain an
ivorywood pattern).
Unpublished Cases: In re Angus Brands, Inc., 2006 TTAB Lexis 146, Serial No.
74373897 (February 2, 1997)[not precedential](ANGUS BRAND and design held
deceptive for “processed meats, namely, roast beef, corned beef and pastrami”); In
re Closet Clothing Co. Limited, Serial No. 76623748 (March 5, 2008) [not
precedential] (MINK BIKINI held deceptive for clothing and bikini swimwear); In re
Dillard’s Inc., Serial No. 75479731 (April 12, 2002)[not precedential]( DENIM RIDGE
held deceptive for “men’s shirts, shorts, pants, jeans, jackets and sweaters”); In re
Encompass Group, LLC, Serial No. 76311395 (Apr. 20, 2006)[not precedential](SILK
EASE held deceptive for "health care apparel worn by professional medical
personnel, namely, scrub suits and examination gowns"); In re Farouk Systems, Inc.,
Serial No. 78646723 (June 19, 2008) [not precedential](BIOSILK deceptive for
clothing notwithstanding applicant’s use of the mark on cosmetic and hair
products); In re Fisi Fibre Sintetiche S.p.A., Serial No. 76583503 (November 27,
2007)[not precedential](ECODOWN deceptive for pillow and pillowforms); In re Paj,
Inc., Serial No. 75438388 (March 7, 2001)[not precedential](DIAMONDLITE held
deceptive for “jewelry”); In re Brough, Serial No. 78680981 (January 30, 2008),
recon denied July 7, 2008 [not precedential](MINK and design deceptive for clothing,
headgear and footwear made of non-animal products); In re Rubie’s Costume Co.,
Inc., Serial No. 75410355 (September 26, 2000)[not precedential](RUBIESILK held
deceptive for “fabric used in the manufacture of masquerade costumes”).
Not Deceptive
Philip Morris Inc. v. Reemtsma Cigarettenfabriken GmbH, 14 USPQ2d 1487 (TTAB
1990) (PARK AVENUE held neither deceptive nor geographically deceptively
misdescriptive as applied to applicant's cigarettes and smoking tobacco, the Board
finding no goods/place association between Park Avenue in New York City, on which
opposer's world headquarters was located, and tobacco products); In re Fortune
Star Products Corp., 217 USPQ 277 (TTAB 1982) (NIPPON, for radios, televisions and
the like, found not deceptive in relation to the goods because, although the
applicant was an American firm, the goods were actually made in Japan); In re
Sweden Freezer Mfg. Co., 159 USPQ 246, 249 (TTAB 1968) (SWEDEN and design, for
which registration was sought under §2(f) for external artificial kidney units, held not
deceptive, the Board finding the case to be in the category "where a geographical
trademark may involve a degree of untruth but the deception may be perfectly
innocent, harmless or negligible").
FOOTNOTES:
1
See Examination Guide 02-09 regarding the procedures for geographically
deceptive and geographically deceptively misdescriptive marks.
2
See American Speech-Language-Hearing Association v. National Hearing Aid
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Society, 224 USPQ 798, 808 (TTAB 1984); In re Charles S. Loeb Pipes, Inc., 190 USPQ
238, 241 (TTAB 1975); Trademark Manual of Examining Procedure (TMEP) §1203.02
(5th ed., 2007).
3
In re Budge Mfg. Co. Inc., 857 F.2d 773, 775, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988);
In re ALP of South Beach, Inc., 79 USPQ2d 1009, 1010 (TTAB 2006).
4
Section 2(e)(1) deceptively misdescriptive refusals are further distinguished and
discussed in SectionIV. A., infra.
5
Glendale International Corp. v. United States Patent and Trademark Office, 374 F.
Supp. 2d 479, 75 USPQ2d 1139 (E.D. Va. 2005).
6
See TMEP §1203.02(a) and In re Quady Winery Inc., 221 USPQ 1213 (TTAB 1984)
regarding the distinction between deceptive and deceptively misdescriptive marks.
7
Am. Speech-Language-Hearing, supra.
8
In re Organik Technologies, Inc., 41 USPQ2d 1690 (TTAB 1997); Tanners' Council of
America, Inc. v. Samsonite Corp., 204 USPQ 150 (TTAB 1979).
9
Marks consisting of or including foreign words or terms from common, modern
languages are translated into English to determine genericness, descriptiveness,
likelihood of confusion, and other similar issues. See, e.g., Palm Bay Imps., v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689,
1696 (Fed. Cir. 2005).
10
See TMEP §1209.03(f).
11
A. F. Gallun & Sons Corp. v. Aristocrat Leather Products, Inc., 135 USPQ 459 (TTAB
1962).
12
Id. Note, however, the difference with such marks as TEXHYDE and SOFTHIDE,
which were held deceptive as applied to synthetic fabric and imitation leather
material, respectively. In re Intex Plastics Corp., 215 USPQ 1045 (TTAB 1982);
Tanners' Council of Am., supra.
13
Budge, 857 F.2d at 775, 8 USPQ2d at 1261.
14
Organik, 41 USPQ2d at 1691.
15
In re Shapely, Inc., 231 USPQ 72, 75 (TTAB 1986); Evans Products Co. v. Boise
Cascade Corp., 218 USPQ 160, 165-166 (TTAB 1983).
16
Budge, 857 F.2d at 775-776, 8 USPQ2d at 1261; see also In re Spirits Int’l, N.V.,
Docket No. 2008-1369, slip op. at 9 (Fed. Cir. Apr. 29, 2009). Note that in cases
under the doctrine of foreign equivalents, where the misdescription in the mark
appears in a foreign language, the requirement that a substantial portion of the
relevant consuming public would likely be deceived raises special issues. To make a
determination about “a substantial portion” in such cases, the examining attorney
must consider whether the foreign language term would be understood by
consumers who do not speak the foreign language, and/or whether consumers who
speak the foreign language could constitute a substantial portion of the relevant
consumers (e.g., because they are the “target audience”). Id. at 15-16.
17
Spirits, slip op. at 9.
18
The American Heritage® Dictionary of the English Language: Fourth Ed. 2000.
19
Id.
20
Glendale, supra.
21
The procedures apply to applications under §§44 and 66(a) as well as those under
§1.
22
In some cases, a disclaimer may not be appropriate because the mark is unitary
(e.g., WHOLE LOTTA SNAKESKIN GOIN’ON for shoes, belts, bags, etc.). However, if
the term in the mark is a material feature, the identification must still be amended
to include the feature.
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23
Budge, 857 F.2d at 776, 8 USPQ2d at 1261.
24
In re Robert Simmons, Inc. 192 USPQ 331 (TTAB 1976). In this case, the applicant
was able to demonstrate with credible evidence that consumers encountering sable
brushes are accustomed to brushes that may or may not be made from the hair of
sable.
25
See ALP of South Beach, 79 USPQ2d at 1014.
26
In re Woolrich Woolen Mills Inc., 13 USPQ2d 1235, 1238 (TTAB 1989). Rebuttal
evidence submitted by the applicant included declarations, not just an allegation of
long and continuous use.
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