TTAB Affirms 2(a) Deceptiveness Refusal of SIKSILK for Clothing

The Board affirmed a Section 2(a) refusal of the purported mark SIKSILK for a laundry list of clothing items -- including T-shirts, track suits, and top hats -- finding the mark to be deceptive for the goods. Applicant submitted slang dictionary definitions of "silk," claimed that the mark is a double entrendre, and pointed to third-party registrations for marks containing the word SILK. The Board was unmoved. In re Monkey IP Limited, Serial No. 88265123 (August 14, 2020) [not precedential] (Opinion by Judge Elizabeth A. Dunn).

Under Section 2(a), registration is unavailable for a mark that “[c]onsists of or comprises… deceptive … matter.” The test for determining deceptiveness sets forth three requirements: (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 the purchasing decision of a significant portion of relevant consumers? Importantly, a mark may be deemed deceptive "on the basis of a single deceptive term that is embedded in a larger mark…."

Misdescriptive?: Applicant Monkey IP admitted during prosecution that the "majority of goods" listed in its application do not contain silk. Therefore, the Board concluded, the mark is misdescriptive of the goods. Monkey relied on several slang dictionary definitions of "silk" identifying "fine clothing" and describing "silk" as something that is "very good." The Board noted that the slang dictionaries gave different definitions for "silk," and there was no evidence of widespread acceptance of the slang versions of the word. Moreover, there was no limitation in Monkey's identification of goods to any particular demographic that would be aware of the slang definitions.

We find the dictionary definitions and website evidence available to the general public to be a more accurate gauge for determining the public perception of SIKSILK goods to be purchased by the general public. Accordingly, we find the record evidence showing that SILK is perceived as a fabric and component of clothing is entitled to more probative weight than the slang definitions of SILK.

Monkey also argued that SIKSILK is a double entendre because SIK, "or its homonym SICK," is "a slang term typically defined as 'good.'" The Board agreed, finding that, as applied to clothing, "the term SIKSILK will be perceived as impressive silk clothing." However, the Board did not find a double entendre:

The term SIKSILK does not denote “readily apparent” second expression [sic] which may serve as a double entendre, and Applicant has supplied no evidence except the slang definitions indicating that prospective purchasers would regard SIKSILK as conveying a double meaning. This is insufficient to support finding a double entendre.

Monkey pointed to eight third-party registrations for marks including the word SILK, but five of the registrations do not involve general apparel items. In any case, "the mere existence of these third-party registrations does not warrant a finding that the mark SIKSILK is a unitary term with a connotation that outweighs its misdescriptiveness." There was no evidence regarding the extent of use of those marks, or the public's awareness of them.

Believable?: The Board observed that "[w}here the record demonstrates that goods are commonly made from a certain material, purchasers are likely to believe goods identified by the term for the material are actually made from that material." Understandably, Applicant Monkey did not dispute that clothing may be made of silk, and the Board rejected the argument that consumers would not expect the goods to contain silk because SIKSILK is a double entendre.

Materiality?: The evidence showed that advertisers of clothing extol the benefits of silk. Monkey asserted that it did not promote the misdescription, but the Board observed that it is not necessary that an applicant do so in order for a mark to be deemed deceptive. "[W]e find that the misdescription in the applied-for mark SIKSILK is likely to affect the purchasing decision of a significant or substantial portion of relevant consumers."

Conclusion: The Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: If I were buying a SIKSILK top hat, I would think it contained silk, wouldn't you?

Text Copyright John L. Welch 2020.