Thursday, January 23, 2020

DENIM & CO. Is Deceptive for Non-Denim Clothing, Says TTAB Panel Majority

A divided Board panel affirmed two refusals to register the standard character mark DENIM & CO. for various clothing items made of materials other than denim, on the grounds of deceptiveness under Section 2(a) and, alternatively, deceptive misdescriptiveness under Section 2(e)(1).  In re QVC, Inc., Serial No. 86670074 (January 21, 2020) [not precedential] (Majority opinion by Judge Cynthia C. Lynch; dissent by Judge Marc A. Bergsman).

Deceptiveness: A mark is deceptive under Section 2(a) if:
  1. it consists of or comprises a term that misdescribes the character, quality, function, composition, or use of the goods;
  2. prospective purchasers are likely to believe that the misdescription actually describes the goods; and
  3. the misdescription is likely to affect the purchasing decision of a significant or substantial portion of relevant consumers.
The panel majority (Judge Lynch and Judge David Mermelstein) found that DENIM & CO. misdescribes the goods. Applicant QVC contended that DENIM refers not to the material content of the goods but to a "comfortable, casual and relaxed lifestyle." The Board didn't buy it. It found that, considering the mark as a whole, DENIM refers to the fabric. QVC's evidence that it refers to a lifestyle was "minimal and unpersuasive," and was "dwarfed by overwhelming evidence" of use of DENIM to refer to the fabric from which denim clothing is made.

QVC did not argue that the addition of "& CO." to DENIM changed the connotation of the mark, but since the dissenting opinion made that point, the panel majority addressed it. It found that CO. is an abbreviation for "company," and that the mark "gives the impression of a business enterprise connected with denim fabric."

The panel majority next found that the misrepresentation was believable. QVC contended that the following limitation in the identification of goods prevents consumers from believing the misdescription:

… sold through interactive television and interactive online media wherein the clothing products offered for sale are modeled and whereby detailed information regarding such clothing products is provided including information as to the fabrics and materials from which such clothing products are made.

The majority, however, found this language ineffective to foreclose deceptiveness. The definition of "interactive" could include any television show or website that allows a consumer to order merchandise. The fact that the clothing is "modeled" does not prevent a consumer from believing the misdescription. Similar arguments about fabric content disclosure have been made and rejected in prior cases. Even as to interactive channels of trade, consumers may focus on the DENIM & CO. mark without paying attention to the fabric content disclosure. Moreover, evidence of QVC's advertising showed no fabric content disclosures, or disclosures that were ambiguous.

As to the third prong of the test, consumers desire denim clothing because it is strong and durable, easy to clean, and comfortable. QVC touts some of the advantages of denim at its website. The Board was therefore convinced that "whether clothing is denim is material to the purchasing decision of a significant portion of the relevant consumers."

All three prongs of the Section 2(a) test having been met, the Board affirmed the deceptiveness refusal.

Deceptive Misdescriptiveness: In the interest of completeness, the Board also considered the Section 2(e)(1) refusal, despite the fact that its Section 2(a) deceptiveness finding is an absolute bar to registration. Since the two prongs of the Section 2(e)(1) test are the same as the first two prongs of the Section 2(a) test, the Board found the mark to be deceptively misdescriptive, and it therefore affirmed the alternative requirement of a disclaimer of DENIM.

Dissenting Opinion: Judge Bergsman maintained that DENIM & CO. has a meaning and engenders a commercial impression that is not deceptive: denim and other materials. Furthermore, the majority failed to give proper weight to the explanatory information in the identification of goods, which makes it clear that the clothing products are not made of denim. The apparel includes "detailed information regarding ... the fabrics and materials from which such clothing products are made."

Judge Bergsman opined that, based on QVC's long and successful use of the mark, consumers are likely to regard DENIM & CO. as "identifying all clothing Applicant sells and not [likely to] believe the mark refers only to clothing made of denim."

Read comments and post your comment here.

TTABlog comment: Nothing in the identification of goods requires that the consumer pay attention to the detailed information. Maybe QVC should say "sold only to consumers who do not think the goods contain denim?"

PS: I expect this one to be appealed, don't you?
PPS: The refusal was appealed by way of civil action. On August 20, 2020, the E.D. Va. enter and Order of Dismissal, remanding that application to the USPTO for entry of an order (here) amending the identification of goods.

Text Copyright John L. Welch 2020.


At 7:56 AM, Blogger Carole Barrett said...

The oral hearing for this case was Trademark Day - 4 months before decision. I would not be surprised if this is appealed.

At 8:56 AM, Anonymous Anonymous said...

That would be awesome if this case is appealed because I have a “lifestyle brand” application pending with a misdescriptiveness refusal and would like to see some favorable law develop to counter such refusals.

At 10:29 AM, Anonymous Anonymous said...

Hmm...maybe amend the specification (see discussion in the first part of the TTAB decision) rather than appeal?

At 10:56 AM, Blogger Gene Bolmarcich, Esq. said...

Yes, I absolutely expect it to be appealed. How can DENIM be deceptive where it is obvious that the goods are either DENIM or not DENIM (of course how to prove that 'obviousness' is the hurdle)

At 11:18 AM, Blogger Bob Klein said...

Doesn't it matter what consumers believe "denim" is? According to wikipedia: "Denim is a sturdy cotton warp-faced textile in which the weft passes under two or more warp threads. This twill weaving produces a diagonal ribbing that distinguishes it from cotton duck." Given various samples of fabric, I'm not sure I could correctly identify which were "denim." Or does that not matter? When shopping for "jeans" I may or may not get "denim."

At 10:33 AM, Anonymous Anonymous said...

Since when did "lifestyle brand" equate to "source indication"? It's irrelevant: denim or not, lifestyle or not, whatever or not, a mark is not a mark unless it identifies a source, a Single source. All else is secondary: all else is a balancing of equities. Personally, "& Co" changes things, and yes, I'm sure they make denim and non-denim jeans. So what? it's a consumer choice, and I will bet dollars to donuts that there isn't a shred of evidence in the record showing whether or how the MARK will influence consumers to SEPARATE with their money under those circumstances (because the Office isn't forced to provide that evidence). So the arguments are all academic. Should "Denim & Co" be given the right to protect or should the dumbest of consumer be considered? That's the balance. Now decide.


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