Thursday, March 21, 2013

Precedential No. 9: TTAB Affirms 2(a) Deceptiveness Refusal of WHITE JASMINE for Tea

The Board affirmed a Section 2(a) refusal of the mark WHITE JASMINE & Design, finding the word "White" to be deceptive for applicant's tea. For the sake of completeness, the Board also considered and affirmed the PTO's alternative refusal based on its requirement that "White Jasmine" be disclaimed, after reviewing applicant's evidence of acquired distinctive and finding it insufficient. In re White Jasmine LLC, 106 USPQ2d 1385 (TTAB 2013) [precedential].

Deceptiveness: Examining Attorney Christine C. Martin put applicant in hot water by submitting a considerable batch of Internet evidence establishing that "white jasmine" is a type of tea, including evidence of use of that term by competitors of applicant. She maintained that the word "white" in applicant's mark is deceptive because its tea does not contain white tea: white tea is believed to have health benefits and its presence is a material factor in the consumer's purchasing decision.

The Board noted that a mark may be found deceptive based on a single term embedded in a larger mark. Deceptiveness under Section 2(a) is an absolute bar to registration. The test for determining whether a mark is deceptive under Section 2(a) is as follows: (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 decisions of a significant portion of the relevant consumers?

As to the first question, white jasmine tea is a subcategory of two types of tea: white tea and jasmine tea. The word "white" immediately describes a significant ingredient of tea because it indicates that the tea is white tea, or at least contains white tea. Applicant admitted that its tea does not contain white tea leaves. Consequently, the term WHITE JASMINE misdescribes applicant's tea.

As to the second question, the Board found it quite likely that consumers would believe that applicant's tea contains white tea.

As to the third, the Examining Attorney's evidence showed that consumers perceived that white tea has desirable health benefits. Therefore, the misdescription is material to the purchasing decision.

Strike, three! Yerrrrr out!

Disclaimer requirement: Although a disclaimer cannot render a deceptive mark registrable, the Board considered and affirmed the PTO's disclaimer requirement in the alternative. The Board agreed with the Examining Attorney that the term WHITE JASMINE is deceptively misdescriptive under Section 2(e)(1). A term is deceptively misdescriptive under that section if it (1) misdescribes the goods, and (2) a consumer is likely to believe the misrepresentation. [Note: if the misrepresentation is material to the purchasing decision, then the term would be deceptive under Section 2(a)].

The Board found clear evidence that consumers would believe that applicant's tea is a particular type of white tea (white tea scented or flavored with jasmine). Since it is not, WHITE JASMINE is deceptively misdescriptive, and must be disclaimed.

Acquired distinctiveness: Deceptively misdescriptive marks, unlike marks that are deceptive under Section 2(a), may be registrable with a showing of acquired distinctiveness under Section 2(f). The Board observed that, under the circumstances, applicant had a heavy burden of proof.

The Board found applicant's Section 2(f) evidence unconvincing. Use since 2003 is not by itself persuasive considering the nature of the matter sought to be registered and the widespread third-party use of the term "White Jasmine." Applicant's sales of about $75,000 over four years was "hardly persuasive." Moreover, there was no evidence placing those sales in context vis-a-vis competing products. Applicant's advertising and marketing efforts were modest, and they did not outweigh its minimal sales and the extensive third-party use.

And so the Board affirmed the Section 2(a) refusal, and in the alternative affirmed the refusal to register based upon applicant's failure to comply with the PTO's Section 6 disclaimer requirement.

Read comments and post your comment here.

Text Copyright John L. Welch 2013.


At 9:14 AM, Anonymous Orrin A. Falby said...

I think that the Board is going way too far with these deceptiveness refusals. I submit that it is dissecting the mark to reach the conclusion that the term white as used in the applied-for mark is deceptive. When the mark is viewed in its entirety, I do not see how a consumer would assume that the goods contain white tea. WHITE JASMIN is a flower and seems to be a unitary phrase -- albeit descriptive for these goods. Is WHITE ROSE for tea deceptive? What if the mark was BLACK CAT? Would the Board then conclude that the mark is deceptive if the evidence of record established that black tea is perceived by consumers as having some desireable quality or benefit?

At 10:37 AM, Blogger John L. Welch said...

I think one must consider the mark in the context of the goods, not in the abstract. I think it's reasonable to conclude that WHITE JASMINE for tea would lead an appreciable number of consumers to conclude that the tea contains white and jasmine teas. It did not contain white tea.
At best, I think it might be considered a double entendre, but if one of the meanings in deceptive, then I think that is enough for a 2(a) ruling. [see In re Fox, where a double entendre mark was unregistrable because one of its meanings was vulgar.]

At 11:43 AM, Anonymous Orrin A. Falby said...

Marks containing a term identifying a material, ingredient, or feature should not be refused registration under Section 2(a) if the mark in its entirety would not be perceived as indicating that the goods contained that material or ingredient. See A. F. Gallun & Sons Corp. v. Aristocrat Leather Products, Inc ., 135 USPQ 459 (TTAB 1962). Further, misdescriptiveness of a term may be negated by its meaning in the context of the whole mark inasmuch as the combination is seen together and makes a unitary impression. See, A.F. Gallun & Sons Corp., 135 USPQ at 460.


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