Thursday, July 03, 2008

TTAB Agrees that "BIOSILK" is Deceptive for Clothing

It took only seven pages for the Board to explain its affirmance of the PTO's Section (a) deceptiveness refusal of BIOSILK for men's and women's clothing. Applicant argued, to no avail, that consumers would not be deceived but would recognize the term as merely an expansion of Applicant's well-known cosmetics mark to a new product line. In re Farouk Systems, Inc., Serial No. 78646723 (June 19, 2008) [not precedential].

The Board observed that a mark is deceptive under Section 2(a) if (1) the term misdescribes the character, quality, function, composition, or use of the goods, (2) prospective purchasers are likely to believe that the misdescription actually describes the goods, and (3) the misdescription is likely to affect the purchasing decision.

Applicant did not clarify whether its goods contain silk (it said it didn't know what the goods will be made of), and so the PTO and the Board presumed that the goods "include items consisting of silk." Examining Attorney Steven Fine argued that the addition of the prefix "bio" to the word "silk" does not "provide a basis for believing that the goods are in fact not made of real silk." The Board agreed:

"The prefix BIO is defined as 'life; living organisms or tissue.' *** The term SILK is defined as 'a lustrous, tough elastic fiber produced by silkworms and used for textiles.' *** Thus, the examining attorney argues that 'one would expect a prefix connoting life and living things to be used in association with natural fibers rather than synthetic one.'"

The Board found that BIOSILK would connote the natural fiber silk and therefore would misdescribe clothing not made of silk.

Regarding Applicant's argument regarding the renown of the BIOSILK mark for its cosmetic products, the Board pointed out that many customers would not know that name or would not think to associate the source of the clothing with the source of the cosmetics.

As to the second prong of the deceptiveness test, because silk is a common material for clothing, "consumers would certainly believe that applicant's clothing is made of silk.'

Finally, with regard to materiality, the PTO website evidence showed that silk is a desirable material for clothing and the misdescription would therefore affect the purchasing decision.

And so, Board concluded that BIOSILK is deceptive in connection with clothing, and if affirmed the refusal.

Text Copyright John L. Welch 2008.


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