Wednesday, March 15, 2023

TTAB Affirms Two Refusals of "ROSE PETALS" for Supplements Not Containing Rose Petals

The Board wasted little time in affirming the USPTO's refusals to register the proposed mark ROSE PETALS for "Dietary supplements in capsule form not containing rose petals as an ingredient." The Board found the mark to be deceptive under Section 2(a) and, alternatively, deceptively misdescriptive under Section 2(e)(1). In re Intimate Science, Serial No. 90123272 (March 13, 2023) [not precedential] (Opinion by Judge Cynthia C. Lynch).

A proposed mark must be refused registration as deceptive under Section  2(a) if:

(1) it consists of or comprises a term that describes 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 applicant and Examining Attorney Michael FitzSimons agreed that the first prong of the test was satisfied: i.e., the mark misdescribes the goods. As to the second prong, however, the applicant disagreed that the misdescription would be believed because consumers would not take the reference literally: "rose petals conjure the image of decoration or romance."  Applicant submitted Google brand search results showing that rose petals are commonly used as decorations at weddings and the like. The Board was unimpressed: the issue at hand was the meaning of rose petals in the context of applicant's goods, not in the abstract.

The Examining Attorney submitted website evidence of consumer exposure to dietary supplements consisting or containing rose petals, including a journal article referring to the [w]orldwide trend towards the use of natural plant remedies."

The Board found that the "wording in the proposed mark 'is a common supplement or ingredient in dietary supplements, [and] consumers will believe, based on the mark and the goods at issue, that applicant’s goods contain [it].'"

Given consumer exposure to rose petal supplements as shown in the record, supplement consumers would take a reference to ROSE PETALS for supplements literally and believe that Applicant’s “ROSE PETALS” supplements contain that ingredient when, according to Applicant’s identification of goods, they do not.

Turning to the third prong of the test, materiality, the Examining Attorney argued, based again on website evidence, that consumers desire rose petals as an ingredient in supplements because of the perceived health benefits. The Board agreed: "whether a supplement contains rose petals would be material to the purchasing decision of a significant portion of the relevant consumers."

And so, the Board upheld the deceptiveness refusal.

As to deceptive escriptiveness, the test is identical to the first two prongs of the deceptiveness test. Those prongs having been met, the Board affirmed this alternative refusal.

Read comments and post your comment here.

TTABlogger comment:Is this a WYHA? Note that a deceptive misdescriptiveness refusal under Section 2(e)(1) may be overcome by proof of acquired distinctiveness, but not a deceptiveness refusal under Section 2(a).

Text Copyright John L. Welch 2023.


At 1:15 PM, Anonymous Anonymous said...

Why would you concede misdescriptivness rather than arguing that it is arbitrary (or at least suggestiveness)? Is "apple" misdescriptive of computers?


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