TTABlog Test: Is “Pili” Deceptive for Cosmetics Not Containing Pili Oil?

[This is a guest post written by Susmita A. Gadre, a litigation associate at Wolf, Greenfield & Sacks, PC]. The USPTO refused to register the mark PILI in the stylized form shown below, deeming the mark to be deceptive under Section 2(a) for a variety of cosmetic and skincare products. Applicant argued that American consumers do not know what “pili oil” is, and therefore could not be deceived. How do you think this came out? In re Farmacia Drogueria San Jorge Ltda – Drogueria San Jorge, Serial No. 87404726 (September 19, 2019) [not precedential] (Opinion by Judge Cynthia C. Lynch).

In order for a mark to be deceptive under Section 2(a), it must misdescribe the character, quality, function, composition, or use of the goods. Furthermore, prospective purchasers must be likely to believe that the misdescription actually describes the goods, and said misdescription must be likely to affect the purchasing decisions of a significant portion of consumers.

The Examining Attorney contended that the mark was deceptive because the term “pili” referred to pili nut oil, an ingredient that is used in commonly available products, but is not present in Applicant’s goods. The second and third prongs were supported by evidence showing that such products were often purchased specifically because of the inclusion of pili oil, and at higher prices than Applicant’s goods.

The Applicant argued that none of the three prongs had actually been met, and the Board agreed. It is true that Applicant’s products do not contain pili oil – but the evidence showed that pili oil is so rarely used as an ingredient in the cosmetic and skincare industry as to be “non-existent” to American consumers, and thus PILI could not be seen as a misdescription.

Even if the mark did misdescribe the goods, the Board found that the second and third prongs were not met. Applicant’s evidence showed that pili-based skincare products are primarily common only in the Philippines. While there are a handful of pili oil products available to U.S. consumers, they were not as commonly available as the Examining Attorney suggested. The Board found that the relevant U.S. consumers would not know what pili oil is – thus, they would not be misled into thinking that Applicant’s products contain it, meaning their purchasing decisions could not be affected by the mark.

And so the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlog comment: Are you a U.S. based cosmetics/skincare consumer who has heard of pili nut oil before? If so, let us know – you’re one of the few!

Text Copyright Susmita A. Gadre and John L. Welch 2019.