Wednesday, February 20, 2008

Finding "MINK" Deceptive and Deceptively Misdescriptive for Clothing, TTAB Affirms 2(a) and 2(e)(1) Refusals

Applicant Rebecca Brough had a TTABrough time in her attempt to register the mark MINK & Design, shown below, for clothing, headgear, and footgear made of non-animal products. The Board found the mark to be deceptive under Section 2(a) and deceptively misdescriptive under 2(e)(1). In re Brough, Serial No. 78680981 (January 30, 2008) [not precedential]

Applicant Brough did not dispute the meaning of "mink" as an animal fur, nor that mink is used in various clothing items. She focused her argument on the way she uses the mark in connection with shoes: she is devoted to "providing cruelty-free fashionable footwear" and "worked to develop a new way of manufacturing shoes with non-animal materials." Her customers "would never imagine that MINK shoes are manufactured using mink-fur."

The publicity she has received emphasizes "the animal-free nature of MINK shoes," and so "the likelihood that a purchaser would be deceived about the materials used in the shoe products' actual construction are practically zero." Applicant is listed on PETA's "Shopping Guide to Compassionate Clothing" and her use of the name MINK is "simply an off-the-wall, out-of-the-box, wildly creative, animal-friendly design."

The Board was unmoved. It must focus on the applied-for mark, and not on Applicant's actual use of the mark. As Examining Attorney Robert Clark noted, Applicant "could use the term MINK in connection with faux fur without any disclaimer or explanation." In short, "applicant's explanations and intentions are not part of the application." Therefore the mark is misdescriptive of the goods.

As to Section 2(a) deceptiveness, the first two factors (misdescriptiveness and believability of the misdescription) were established above. The third requirement is that the misdescription be likely to affect the purchasing decision. The PTO submitted website materials showing that mink is a desirable component material for clothing items. Mink is perceived as "a luxury item that imbues the owner with status" and therefore use of the term would would materially affect the purchasing decision. Ergo, MINK is deceptive in connection with the identified goods.

The TTAB affirmed the two refusals.

Text Copyright John L. Welch 2008.


Post a Comment

<< Home