Recommended Reading: Anne Gilson LaLonde, "You Are Not Going to Believe This! Deception, Misdescription and Materiality in Trademark Law"
The latest issue of The Trademark Reporter® includes Anne Gilson LaLonde's informative article entitled, "You Are Not Going to Believe This! Deception, Misdescription and Materiality in Trademark Law," 102 TMR 883 (May-June 2012) [pdf here]. Anne patiently explains the differences between Section 2(a) deceptiveness, Section 2(e)(1) deceptive misdescriptiveness, and Section 2(e)(3) primarily geographically deceptive misdescriptiveness.
Trademarks that misdescribe goods and services can fall into a wide range of categories, depending on whether they are misleading or simply inapt. They may be arbitrary, suggestive, misdescriptive, deceptively misdescriptive, deceptive or primarily geographically deceptively misdescriptive. Arbitrary, suggestive and merely misdescriptive marks are immediately valid and registrable; deceptively misdescriptive terms are only valid and registrable with a showing of secondary meaning; and deceptive and primarily geographically deceptively misdescriptive marks are never valid or registrable. So the category a misdescriptive trademark falls into is vital.
The article also includes a discussion of false or misleading representations under on Section 43(a), and finishes with some suggestions for statutory change.
TTABlog note: Thanks again to The Trademark Reporter® and to Matthew Bender for granting permission to provide a link to this article.
Copyright © 2012 Matthew Bender & Company, Inc., a member of the LexisNexis Group. All rights reserved. Materials reproduced from Gilson on Trademarks® with the permission of Matthew Bender & Company, Inc., a member of the LexisNexis Group. No part of this document may be copied, photocopied, reproduced, translated, or reduced to any electronic medium or machine readable form, in whole or in part, without prior written consent of Matthew Bender & Company, Inc. Changes to the original are stylistic, save for a few updates and clarifications.