Friday, May 24, 2013

TTAB Affirms 2(a) Deceptiveness Refusal of IRON-TEK CLEAN PERFORMANCE for Nutritional Supplements

The Board affirmed a Section 2(a) refusal to register IRON-TEK CLEAN PERFORMANCE, finding it to be deceptive of "dietary and nutritional supplements" that do not contain iron. Applicant contended that "iron" in its mark suggests "pumping iron," but the Board gave that no weight, observing that Applicant's identification of goods is not limited to weightlifters. In re Country Life, LLC, Serial No. 85340192 (May 2, 2013) [not precedential].

Dictionary definitions and website pages demonstrated that iron is a common mineral in dietary and nutritional supplements. Applicant confirmed during prosecution that its products do not contain iron. The Board agreed with Examining Attorney Kim Teresa Moninghoff that ordinary consumers will view the term "iron" in the subject mark as meaning that the goods contain iron. Thus there was no doubt that the mark is misdescriptive, and deceptively so.

Finally, the misdescription of the goods would be material to the purchasing decision because iron is a "most desirable" ingredient in supplements.

Applicant pointed to its ownership of two incontestable registrations for the mark IRON-TEK for vitamins and nutritional supplements, but the Board was unmoved.

[C]onsistent with the statutory structure of the Trademark Act, each application for registration of a mark for particular goods must be separately evaluated based on its own set of facts and in view of whatever marketplace evidence is available in the record. Nothing in the statute provides a right ipso facto to register a new mark for additional goods, and we are not bound by prior determinations made by examining attorneys. While uniform treatment under the Trademark Act is highly desirable, our task here is to determine, based on the record before us, whether applicant’s mark is registrable. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001).

And so the Board affirmed the refusal.

Read comments and post your comment here.

Text Copyright John L. Welch 2013.


At 10:32 AM, Anonymous Morris Turek said...

I strongly disagree with this ruling. I view IRON-TEK as being suggestive of power, strength, and superior quality.

At 11:29 AM, Anonymous Anonymous said...

I agree with the decision. This easily meets every element needed to show deceptiveness. The only problem was an Examining Attorney previously allowed the mark to register.

The question now is whether an incontestable registration can still be challenged based on deceptiveness?

At 11:45 AM, Blogger John L. Welch said...

It looks to me like a registration may be cancelled on the ground of deceptiveness even after five years. See Section 14(3).
I don't like seeing the word "incontestability" being thrown around in the TTAB context. Section 15, and the affidavit referred to therein to make the right to use incontestable has nothing to do with whether the 5-year statute of limitations for a cancellation proceeding has run.


Post a Comment

<< Home