Friday, May 24, 2013

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 Of course, most of these decisions are not precedential, but even non-precedential decisions may be helpful in framing effective arguments and locating precedential support for them.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:

Marks found not deceptive:

Text Copyright John L. Welch 2013.


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