Precedential Nos. 9 and 10: TTAB finds "CLEAR" Deceptively Misdescriptive of Non-Transparent Clothing and Handbags

The Board affirmed two Section 2(e)(1) refusals of the proposed mark CLEAR for footwear, lingerie, and other clothing items, and for handbags, purses, wallets and related items, all "excluding transparent goods," finding the term to be deceptively misdescriptive of the goods. The Board observed that consumers are not aware of the "nontransparent" limitation in the application, and not all purchases of Applicant Dolce Vita's goods are made after direct inspection of the goods. In re Dolce Vita Footwear, Inc., 2021 USPQ2d 478 and 479 (TTAB 2021) [precedential] (Opinions by Judge Jyll Taylor).

A mark is considered deceptively misdescriptive under Section 2(e)(1) if: (1) the mark misdescribes a quality, feature, function, or characteristic of the goods or services with which it is used; and (2) consumers would be likely to believe the misrepresentation. See In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988); In re White Jasmine LLC, 106 USPQ2d 1385, 1394 (TTAB 2013) (citing In re Quady Winery, Inc., 221 USPQ 1213, 1214 (TTAB 1984)). [T]he reasonably prudent consumer test is applied in assessing whether consumers are likely to believe the misrepresentation. In re Hinton, 116 USPQ2d at 1052 (citing R. J. Reynolds Tobacco Co. v. Brown & Williamson Tobacco Corp., 226 USPQ 169, 179 (TTAB 1985)).

Dictionary definitions and third-party website evidence convinced the Board that consumers "will perceive CLEAR as describing a feature" of Dolce Vita's clothing and clothing items, handbags, wallets, etc. 

As to Dolce Vita's exclusion of "non-transparent goods," the Board found that this exclusion "conclusively establishes" the CLEAR misdescribes a feature of the goods, satisfying the first element of the Section 2(e)(1) test.

Applicant’s contention that its proposed mark CLEAR does not describe a plausible feature of its goods because it has restricted its identification so that the recited goods do not include transparent footwear and clothing is unavailing. We cannot assume that consumers of Applicant’s goods will be aware that its identification is so restricted, and the restriction is not controlling of public perception. See In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1187-88 (TTAB 2018). Cf., e.g., In re Clorox Co., 578 F.2d 305, 198 USPQ 337, 340 (CCPA 1978) (“[T]he locus of potential confusion is [not] in the files of the PTO.”); In re Wada, 48 USPQ2d 1689, 1692 (TTAB 1998) (public is unaware of disclaimers that “quietly reside” in the records of the Office).

The Board observed that Dolce Vita "cannot avoid a finding of deceptive misdescriptiveness by excluding from its identification the very characteristic that its mark is misdescribing. Cf. In re ALP of South Beach, Inc., 79 USPQ2d 1009, 1010 (TTAB 2006) (“We find that the word CAFETERIA used in connection with restaurant services that explicitly exclude cafeteria-style restaurants does misdescribe the services.”)."

Next, as to the second element of the test, because the evidence showed that various types of clothing, footwear, and handbags may be transparent in whole or in part, the Board found that relevant consumers are likely to believe the misrepresentation. 

The Board rejected Dolce Vita's argument that consumers are unlikely to believe the misrepresentation because they will visually inspect the goods before purchase. Dolce Vita relied on three TTAB decisions, but the Board distinguished them: In re Econoheat, Inc., 218 USPQ 381, 383 (TTAB 1983) (SOLAR QUARTZ for space heaters), Nw. Golf Co. v. Acushnet Co., 226 USPQ 240, 242-43 (TTAB 1985) (POWER-STEP for golf clubs), and In re Robert Simmons, Inc., 192 USPQ 331, 333 (TTAB 1976) (WHITE SABLE for paint brushes made from synthetic fibers). As to WHITE SABLE, consumers are not likely to believe that paint brushes would be made from the hair or fur of a sable. As to POWER-STEP, the word STEP did not necessarily signify that the golf club shafts had a single "step." And as to SOLAR QUARTZ, there we no evidence that there was such a thing as a solar quartz heater.

Moreover, not all consumers will have the opportunity to visually inspect the goods:

If Applicant’s goods were to be promoted by word-of-mouth or on social media or in print (e.g., in fashion blogs, magazine articles, or even Applicant’s future advertising) without an image of the goods, a reasonable consumer seeking what the record shows to be a fashion trend would believe that Applicant’s goods, promoted under the proposed CLEAR mark, would feature transparent or clear attributes.

The second element of the test having been met, the Board concluded that proposed mark is deceptively misdescriptive of the goods, and so it affirmed the refusals to register.

Read comments and post your comment here.

TTABlogger comment: Not clear why these appeals weren't consolidated.

Text Copyright John L. Welch 2021.