Tuesday, March 17, 2015

TTAB Test: Is FLAT IRON TACO Deceptively Misdescriptive of Tacos?

William R. Nyborg applied to register the mark FLAT IRON TACO for tacos, but Examining Attorney Tracy Cross refused registration on the ground that the mark is deceptively misdescriptive of the goods under Section 2(e)(1). Mr. Nyborg appealed. He admitted that his tacos do not contain "flat iron" steak, but argued that the USPTO failed to show that consumers would believe the supposed misrepresentation: "if a consumer were to order a shredded chicken variant of Applicant’s ‘FLAT IRON TACO’ it would be hard to believe that the consumer in question would expect ‘flat-iron steak’ to be contained therein." How do you think this came out? In re William R. Nyborg, Serial No. 85661044 (February 27, 2015) [not precedential].

The test for deceptive misdescriptiveness is two-pronged: (1) does the term in question misdescribe a characteristic, quality, function, composition, or use of the goods, and if so (2) will prospective purchasers likely believe that the misdescription actually describes the goods?

The examining attorney established that "flat iron" is a type of steak, and that flat iron steak is a primary ingredient in prepared taco dishes. Moreover, the phrase "flat iron tacos" is used to describe tacos having a filling of flat iron steak! The Board therefore concluded that FLAT IRON TACO is "merely descriptive of a significant aspect of the goods which the goods could plausibly possess."

Applicant Nyborg feebly argued that "flat iron" may be used to describe items other than steak, like a hair straightener. Irrelevant, said the Board, because for Section 2(e)(1) purposes a mark must be considered in the context of the involved goods.

Mr. Nyborg's argument that a consumer would not believe the misrepresentation because he or she would not expect flat-iron steak after ordering shredded chicken, was a misapplication of the 2(e)(1) test.

Clearly if a customer orders a chicken taco he or she will not be expecting to get a steak taco. However, a consumer might well order a FLAT IRON TACO believing that he or she will be getting a taco filled with flat iron steak, and therefore the mark will misrepresent a characteristic of the goods.

And so the Board affirmed the refusal.

Read comments and post your comment here

TTABlog note: Well how did you do? What about Section 2(a) deceptiveness? Wouldn't the misrepresentation be material to many consumers?

Text Copyright John L. Welch 2015.


At 11:54 AM, Anonymous joe dreitler said...

Never been a "fan" of the Office issuing both the 2(a) and 2(e) refusal but in this case initial reaction is that one could rightly assume that a flat iron taco has steak and no amount of secondary meaning is going to fix that problem (ex. Silk Eaze for blouses).

At 12:29 PM, Blogger TMBaron said...

This seems to be a continuation of a "presumption of invalidity/non-registrability" which is becoming more prevalent in the USPTO and the TTAB. I do not like the concept of assuming that all consumers are stupid and unthinking, and I wish that they would instead use the patent concept of "one of ordinary skill in the art" in judging these things. There are far too many refusals of very reasonable marks.

At 8:10 PM, Anonymous Anonymous said...

TMBRaron hits the nail on the head. More and more frequently I'm scratching my head at Office Actions and wondering exactly how simple the Office thinks the consumer is.

I do wonder how this would have resolved had the G/S been for restaurant services.

At 9:59 AM, Anonymous Anonymous said...

I thought it was named after a restaurant in the Flat Iron building.


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