Monday, March 11, 2019

TTABlog Test: Is "NEW SILK ROAD" Deceptive for Clothing Not Made of Silk?

The USPTO refused registration of the mark NEW SILK ROAD for clothing, on the ground that the mark is deceptive under Section 2(a) because the goods are not primarily made of silk. Applicant Tang argued that consumers would understand the mark to refer to the historical Silk Road, not to the contests of the clothing. How do you think this came out? In re Tang, Serial No. 87630035 (March 8, 2019) [not precedential] (Opinion by Judge Karen Kuhlke).

According to In re Budge, The test for deceptiveness requires that the following three elements be met:
  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?
The Examining Attorney maintained that SILK is misdescriptive of the goods because they are not primarily made of silk, that consumers are likely to believe the misdescription, and that the misdescription is material because clothing primarily made of silk is more appealing and desirable.

Applicant Tang relied on a Wikipedia entry for "Silk Road" in asserting that the word SILK would not be considered by itself, but instead the unitary phrase NEW SILK ROAD would be perceived as a reference to the historical Silk Road:

The Silk Road or Silk Route was an ancient network of trade routes that were for centuries central to cultural interaction originally through regions of Eurasia connecting the East and West and stretching from the Korean peninsula and Japan to the Mediterranean Sea.

In a 5-page opinion, the Board agreed with Applicant Tang. Although a mark may be deceptive even if only a portion is deceptive (e.g., WHITE JASMINE for tea that did not include white tea, SILKEASE for clothing not made of silk), "[m]isdescriptiveness 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." Budge Mfg., 8 USPQ2d at 1261.

We find THE NEW SILK ROAD [sic] to be more in the nature of COPY CALF and PARIS BEACH CLUB in that the term SILK in the phrase NEW SILK ROAD cannot be separated from the meaning derived from the whole mark NEW SILK ROAD. While it may be that the “Silk Road derived its name precisely because silk was a major trade product along such routes” (Ex. Att. Br. 6 TTABVUE 11), the meaning and commercial impression of the SILK ROAD is not limited to trading in silk products. The Silk Road is a historical trading route known for trade in many products, as well as expanding economic, cultural and technological exchange around the world.

The Board therefore found that the mark NEW SILK ROAD is not deceptively misdescriptive of applicant's clothing, and therefore is not deceptive under Section 2(a).

Read comments and post your comment here.

TTABlog comment:  Perhaps the Board should have said that the mark is not misdescriptive of the goods, let alone deceptively misdescriptive. In any event, I think NEW SILK ROAD does imply that the goods are made of silk.

Text Copyright John L. Welch 2019.


At 9:20 AM, Blogger Strand said...

Not sure I agree with you, John. For some, Silk Road might actually refer to the illicit website formed in 2011 - Also, the two of the main categories of goods identified in the opinion are jewelry and leather goods. As a consumer, do you think those goods would have been made of silk?

At 2:23 PM, Anonymous Anonymous said...

Isn't it relevant that it was called Silk Road because the route was primarily used to trade silk?

At 6:40 PM, Blogger John L. Welch said...

The refusal concerned only the class 25 goods (clothing).

At 6:03 PM, Anonymous Anonymous said...

It does seem that the Board could have simply said the mark is not misdescriptive. Once you establish that the meaning and commercial impression of NEW SILK ROAD is not limited to the trading of silk products and that SILK is not separable there is no need to consider the 2nd and 3rd elements.


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