TTABlog Collection of Section 2(a) Deceptiveness Cases
Here is a collection of Section 2(a) deceptiveness cases from the TTABlog. One might estimate from these rulings that the odds are about 1 in 8 that a deceptiveness refusal will be overturned on appeal. Of course, most of these decisions are not precedential, but even non-precedential decisions may be helpful in framing effective arguments and locating precedential support for them.
The Board applies a three-part test for determining whether a mark is deceptive under Section 2(a): (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? In re White Jasmine LLC, 106 USPQ2d 1385 (TTAB 2013) [precedential], citing In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988).
Deceptive trademarks (unlike deceptively misdescriptive marks under Section 2(e)(1)) are not eligible for registration via Section 2(f) acquired distinctiveness.
A mark is deceptively misdescriptive if it satisfies the first two prongs of the test set forth above. Deceptively misdescriptive marks may be registered on the Principal Register via Section 2(f), or on the Supplemental Register.
Marks that are primarily geographically deceptively misdescriptive are treated under Section 2(e)(3) and are not eligible for registration via Section 2(f), unless the mark acquired distinctiveness before December 8, 1993, the effective date of the North American Free Trade Agreement Act (NAFTA). The TTABlog collection of 2(e)(3) cases may be found here.
These distinctions are explained and explored in Anne Gilson LaLonde's recent article, "You Are Not Going to Believe This! Deception, Misdescription and Materiality in Trademark Law," 102 Trademark Reporter 883 (May-June 2012) [TTABlogged here].
Marks found deceptive:
- Precedential No. 29: TTAB Affirms Five (5) Refusals of "AOP" for Wine
- TTAB Affirms 2(a) Deceptiveness Refusal of IRON-TEK CLEAN PERFORMANCE for Nutritional Supplements
- TTAB Affirms 2(a) and 2(e)(1) Refusals of GREEN SEAL for Non-Environmentally-Friendly Adhesive Tape
- Precedential No. 9: TTAB Affirms 2(a) Deceptiveness Refusal of WHITE JASMINE for Tea
- TTAB Affirms Deceptiveness Refusal of "VALENCIA" for Rice
- Precedential No. 25: TTAB Finds "α CU" (Alpha CU) Deceptive for Copper-less Dietary Supplements
- Finding "ORGANIC ASPIRIN" Deceptively Misdescriptive of and Deceptive for Dietary Supplements, TTAB Sustains Bayer Opposition
- TTAB Chops Down Evasive "SILVER BIRCH" Applicant with Three Well-Aimed Strokes
- TTAB Affirms Section 2(e)(1) and 2(a) Refusals of "NEUROBOTICS" for Augmented Surgical Goods and Services
- TTAB Agrees that "BIOSILK" is Deceptive for Clothing
- TTAB Affirms 2(a) Deceptiveness Refusal of "MINK BIKINI" for Minkless Clothing
- Finding "MINK" Deceptive and Deceptively Misdescriptive for Clothing, TTAB Affirms 2(a) and 2(e)(1) Refusals
- TTAB Affirms Refusal of "ECODOWN" for Pillows Under 2(a), 2(d), and 2(e)(1)
- TTAB Affirms Three Deceptiveness Refusals of "SWISSGOLD" for Watches and Parts
- TTAB Citable No. 20: Divided Panel Affirms 2(a) Deceptiveness Refusal of "CAFETERIA" for Non-Cafeterias
Marks found not deceptive:
- "ILEX" Not Deceptive or Deceptively Misdescriptive for Medicated Skin Paste, Says TTAB
- TTAB Finds AMERICAN HERITAGE Neither Merely Descriptive of, Nor Deceptive for, Wines
Text Copyright John L. Welch 2013.