As stated in section 1207.01 Likelihood of Confuion of the Trademark Manual of Examination Procedure:

Section 2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), also prohibits registration of designations that are deceptively misdescriptive of the goods or services to which they are applied. The examining attorney must consider the mark in relation to the applicant's goods or services to determine whether a mark is deceptively misdescriptive.

The examining attorney must first determine whether a term is misdescriptive as applied to the goods or services. A term that conveys an immediate idea of an ingredient, quality, characteristic, function or feature of the goods or services with which it is used is merely descriptive. See TMEP §1209.01(b). If a term immediately conveys such an idea but the idea is false, although plausible, then the term is deceptively misdescriptive and is unregistrable under §2(e)(1). See In re Woodward & Lothrop Inc., 4 USPQ2d 1412 (TTAB 1987) (CAMEO deceptively misdescriptive of jewelry); In re Ox-Yoke Originals, Inc., 222 USPQ 352 (TTAB 1983) (G.I. deceptively misdescriptive of gun cleaning patches, rods, brushes, solvents and oils).

The Trademark Act does not prohibit the registration of misdescriptive terms unless they are deceptively misdescriptive, that is, unless persons who encounter the mark, as used on or in connection with the goods or services in question, are likely to believe the misrepresentation. See Binney & Smith Inc. v. Magic Marker Industries, Inc., 222 USPQ 1003 (TTAB 1984) (LIQUID CRAYON held neither common descriptive name, nor merely descriptive, nor deceptively misdescriptive of coloring kits or markers).

As explained in the case of In re Quady Winery Inc., 221 USPQ 1213, 1214 (TTAB 1984):

The test for deceptive misdescriptiveness has two parts. First we must determine if the matter sought to be registered misdescribes the goods. If so, then we must ask if it is also deceptive, that is, if anyone is likely to believe the misrepresentation. Gold Seal Co. v. Weeks, 129 F. Supp. 928 (D.D.C. 1955), aff'd sub nom. S.C. Johnson & Son v. Gold Seal Co., 230 F.2d 832 (D.C. Cir.) (per curiam), cert. denied, 352 U.S. 829 (1956). A third question, used to distinguish between marks that are deceptive under Section 2(a) and marks that are deceptively misdescriptive under Section 2(e)(1), is whether the misrepresentation would materially affect the decision to purchase the goods. Cf. In re House of Windsor, Inc., 221 USPQ 53 (TTAB 1983).

If the misdescription represented by the mark is material to the decision to purchase the goods or use the services, then the mark should be refused registration under §2(a) of the Trademark Act, 15 U.S.C. §1052(a). See TMEP §1203.02 regarding deceptive marks, and 1203.02(a) regarding the distinction between deceptive marks and deceptively misdescriptive marks.

The examining attorney should consider and make of record, or require the applicant to make of record, all available information that shows the presence or absence, and the materiality, of a misrepresentation. See Glendale International Corp. v. United States Patent and Trademark Office, 374 F. Supp. 2d 479, 75 USPQ2d 1139 (E.D. VA 2005) (TITANIUM deceptively misdescriptive of recreational vehicles that do not contain titanium, where the examining attorney made of record articles which showed that titanium is a lightweight metal, and discussed the use or potential use of titanium in the automotive industry).

The mere fact that the true nature of the goods or services is revealed by other matter on the labels, advertisements or other materials to which the mark is applied does not preclude a determination that a mark is deceptively misdescriptive. See R. Neumann & Co. v. Overseas Shipments, Inc., 326 F.2d 786, 140 USPQ 276 (C.C.P.A. 1964) (DURA-HYDE held deceptive and deceptively misdescriptive of plastic material of leather-like appearance made into shoes); In re Shniberg, 79 USPQ2d 1309 (TTAB 2006) (SEPTEMBER 11, 2001 held deceptively misdescriptive of books and entertainment services which did not in any way cover the terrorist attacks of September 11, 2001; the fact that the nature of the misdescription would become known after consumers studied applicant's books and entertainment services does not prevent the mark from being deceptively misdescriptive); In re Woolrich Woolen Mills Inc., 13 USPQ2d 1235 (TTAB 1989) (WOOLRICH for clothing not made of wool found not to be deceptive under §2(a)); Tanners' Council of America, Inc. v. Samsonite Corp., 204 USPQ 150 (TTAB 1979) (SOFTHIDE held deceptive within the meaning of §2(a) for imitation leather material).

See also Northwestern Golf Co. v. Acushnet Co., 226 USPQ 240 (TTAB 1985); R.J. Reynolds Tobacco Co. v. Brown & Williamson Tobacco Corp., 226 USPQ 169 (TTAB 1985); and American Speech-Language-Hearing Association v. National Hearing Aid Society, 224 USPQ 798 (TTAB 1984) regarding the issue of deceptive misdescriptiveness.

Marks that have been refused registration pursuant to §2(e)(1) on the ground of deceptive misdescriptiveness may be registrable under §2(f) upon a showing of acquired distinctiveness, or on the Supplemental Register if appropriate. 15 U.S.C. §§1052(f) and 1091. Marks that are deceptive under §2(a) are not registrable on either the Principal Register or the Supplemental Register under any circumstances.

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  • Test for determining whether a mark is deceptive under Section 2(a)
    • In re ALP of South Beach Inc., Serial No. 75819306, (TTAB 2006).
      • The test for determining whether a mark is deceptive under Section 2(a) has been stated by the Court of Appeals for the Federal Circuit as: (1) Is the term misdescriptive of the character, quality, function, composition or use of the goods (or services)" (2) If so, are prospective purchasers likely to believe that the misdescription actually describes the goods (or services)" (3) If so, is the misdescription likely to affect the decision to purchase" In re Budge Manufacturing Co., Inc., 857 F.2d 773, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988) [LOVEE LAMB held deceptive for seat covers not made of lambskin]. See also, In re Woolrich Woolen Mills, Inc., 13 USPQ2d 1235 (TTAB 1989) [WOOLRICH for clothing not made of wool found not to be deceptive under §2(a)].
    • In re Phillips-Van Heusen Corp., Serial No. 75/664,835, (TTAB 2002).
      • A mark satisfying such criteria is additionally considered to be deceptive if the misrepresentation would be a material factor in the purchasing decision. Id. Thus, as set forth in the leading case of In re Budge Manufacturing Co. Inc., 857 F.2d 773, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988), a mark must meet the following three-prong test to be adjudged deceptive: "(1) Is the term misdescriptive of the character, quality, function, composition or use of the goods [or services]" (2) If so, are prospective purchasers likely to believe that the misdescription actually describes the goods [or services]" (3) If so, is the misdescription likely to affect the decision to purchase"" Provided that the United States Patent and Trademark Office puts forth sufficient evidence to establish prima facie that each of the above elements is met, a mark is deceptive and thus is unregistrable under Section 2(a). 8 USPQ2d at 1261.
    • In re ALP of South Beach Inc., Serial No. 75819306, (TTAB 2006).
      • The next part of the Budge test is whether any prospective purchaser is likely to believe the misdescription. In re Quady Winery Inc., 221 USPQ 1213, 1214 (TTAB 1984).
    • In re ALP of South Beach Inc., Serial No. 75819306, (TTAB 2006).
      • We turn then to the third and final prong for deceptiveness under the Budge test. Having found that prospective patrons of applicant's restaurant are likely to believe that the misdescription actually describes the services, we must still determine whether the misdescription is likely to affect the decision to purchase.
  • When considered in conjunction with the identified goods or services, the mark standing alone must pass muster, for that is what the applicant seeks to register, not extraneous explanatory statements.
    • In re ALP of South Beach Inc., Serial No. 75819306, (TTAB 2006).
      • Nonetheless, our primary reviewing court has held that when considered in conjunction with the identified goods or services, "the mark standing alone must pass muster, for that is what the applicant seeks to register, not extraneous explanatory statements." Id. See also, In re Berman Bros. Harlem Furniture Inc., 26 USPQ2d 1514 (TTAB 1993) [FURNITURE MAKERS held deceptively misdescriptive for retail furniture store services not including the manufacture of furniture]; and In re Woodward & Lothrop Inc., 4 USPQ2d 1412 (TTAB 1987) [CAMEO is deceptively misdescriptive for jewelry items without cameos or cameo-like elements].
  • A trademark registration is national in scope and it must be presumed that consumers would review all forms of advertisements and not just view a visual the mark next to the physical goods/services.
    • In re ALP of South Beach Inc., Serial No. 75819306, (TTAB 2006).
      • We are not convinced, however, by applicant's arguments that everyone who comes into its CAFETERIA establishments knows in advance the nature of the restaurant. In reaching our decision herein on deceptiveness, we cannot rely on applicant's allegations about its current marketing strategies. Any registration that issues from this application will be national in scope, and applicant clearly would not be limited to the two establishments it currently operates. Certainly, we cannot assume that word-of-mouth publicity and detailed restaurant reviews are the only ways prospective consumers would ever encounter the mark. We must presume that magazine advertisements, classified ad listings, and highway billboards could some day be part of applicant's marketing mix, or alternatively, that a prospective patron might well chance upon the restaurant when driving or walking by, and come in for a meal after seeing the signage on the exterior of the building.
  • Applicant has cited no cases saying that the owner of a service mark can advertise or display false information prominently about its services to prospective consumers, and then escape a finding of deceptiveness because the sale may ultimately not be consummated when the customer discovers the misrepresentation just in time to avoid the transaction.
    • In re ALP of South Beach Inc., Serial No. 75819306, (TTAB 2006).
      • Applicant has pointed to cases where the casual observer of consumer products is presumed to be able to discover that the mark is obviously misdescriptive by looking at the involved goods. We do not find these cases involving a close-up visual examination of consumer items, such as golf clubs, space heaters and paint brushes, to be analogous to the allegedly misdescriptive service mark involved herein. Applicant has cited no cases saying that the owner of a service mark can advertise or display false information prominently about its services to prospective consumers, and then escape a finding of deceptiveness because the sale may ultimately not be consummated when the customer discovers the misrepresentation just in time to avoid the transaction.
  • That some prospective customers did have a misimpression about the nature of applicant's services indicates to us that others may also have been misled. We find that this is similar to likelihood of confusion cases, where evidence of some instances of actual confusion can serve as a powerful demonstration that many more people are likely to be confused.
    • In re ALP of South Beach Inc., Serial No. 75819306, (TTAB 2006).
      • We really cannot be sure what portion of prospective customers, at some point, actually believed the deceptive misdescription. In his affidavit, Mark Thomas Amadei, Vice President of ALP of South Beach Inc. and one of applicant's principals, states that only a very few prospective customers appeared to have any misimpressions about the nature of applicant's services. We view this acknowledgement as significant. That some prospective customers did have a misimpression about the nature of applicant's services indicates to us that others may also have been misled. We find that this is similar to likelihood of confusion cases, where evidence of some instances of actual confusion can serve as a powerful demonstration that many more people are likely to be confused. For each prospective patron who actually voiced confusion over the misrepresentation, there may have been many others who left the restaurant without complaining or commenting.
  • Case Finding: Failed arguments regarding the final prong of the Budge test.
    • In re ALP of South Beach Inc., Serial No. 75819306, (TTAB 2006).
      • This final prong of the Budge test has been restated as inquiring whether or not the misrepresentation would materially affect the decision to purchase the goods. In this context, applicant argues that this prong is not met because (1) applicant offers a higher class of services than the lunchroom or self-service restaurant services that the term CAFETERIA describes, and (2) the prospective patron who realizes her mistake is able to walk away from the reservation desk before purchasing a meal requiring full table service.
    • In re ALP of South Beach Inc., Serial No. 75819306, (TTAB 2006).
      • We agree that while descriptiveness or misdescriptiveness must be considered in relation to the services, this does not mean that prospective purchasers cannot be misled prior to arriving at the restaurant itself. Upon encountering applicant's mark for restaurant services in a promotional context, some share of prospective patrons will initially conclude, quite erroneously, that the referenced restaurant is, indeed, a cafeteria. Accordingly, we agree with the Trademark Examining Attorney on this question, and find that the critical point for gauging whether or not potential patrons believe the misdescription inherent in applicant's service mark is earlier than applicant has argued.
  • The question of materiality is whether or not the misleading information conveyed by the mark bestows upon the service greater marketability and is the reason why the services are desired and hence bought.
    • In re ALP of South Beach Inc., Serial No. 75819306, (TTAB 2006).
      • However, we disagree with the thrust of applicant's analysis. The question of materiality is "whether or not the misleading information conveyed by the mark bestows upon the service greater marketability and is the reason why the services are desired and hence bought …." In re Lyphomed Inc., 1 USPQ2d 1430 (TTAB 1986). The emphasis here ought not to be placed on the term, "and hence bought," as the factual situation of this type of service mark presents us with the question of "pre-sale" deception.
  • In certain factual situations, the question of materiality presents the question of "pre-sale" deception.
    • In re ALP of South Beach Inc., Serial No. 75819306, (TTAB 2006).
      • However, we disagree with the thrust of applicant's analysis. The question of materiality is "whether or not the misleading information conveyed by the mark bestows upon the service greater marketability and is the reason why the services are desired and hence bought …." In re Lyphomed Inc., 1 USPQ2d 1430 (TTAB 1986). The emphasis here ought not to be placed on the term, "and hence bought," as the factual situation of this type of service mark presents us with the question of "pre-sale" deception.
  • The critical point is when the customers encounter the mark in any form of advertisement and, then in each of these instances, make a decision to purchase the services. Irrespective of exactly where the customer may be at the point they recognize the deception, by the time the prospective customers are faced with the choice of either completing the purchase or finding another business, deception has already taken place.
    • In re ALP of South Beach Inc., Serial No. 75819306, (TTAB 2006).
      • True, the state of being misled may well be dispelled before the customer completes the purchase. Nonetheless, customers will have been misled by the name in the first place – causing them to decide to patronize the restaurant. The critical point is not when the customers walk into the restaurant or when they are handed a menu, but when they encounter the mark in an advertisement, informational road sign, or the signage on the exterior of the restaurant, and then in each of these cases, making a decision to purchase the services. And whether prospective patrons who have been misled actually stay upon learning of their misapprehension ought not to be the determining factor under Section 2(a) of the Act. Irrespective of exactly where the patrons may be at the point they recognize the deception (e.g., parking across the street, walking down the sidewalk, standing at the reservation desk, or sitting at a table), we find that by the time the prospective patrons are faced with the choice of either completing the purchase of a meal different from the one sought or finding another restaurant, deception has already taken place.
  • Pre-sale deception has parallels to the concept of "pre-sale confusion" in the context of trademark infringement and likelihood of confusion.
    • In re ALP of South Beach Inc., Serial No. 75819306, (TTAB 2006).
      • Our concern over pre-sale deception has parallels to the concept of "pre-sale confusion" in the context of trademark infringement and likelihood of confusion. See Grotrain, Helfferich, Schulz, Th. Steinweg Nachf. V. Steinway & Sons, 523 F.2d 1331 (2nd Cir. 1975). The defendant's actions may attract or lure potential customers by improperly benefiting from the goodwill that the plaintiff developed in its mark, even though any confusion as to the source of goods or services may be dispelled before an actual sale occurs.13 FOOTNOTE 13 ""By the time [the customer looking for a deal on a Steinway piano] gets to the store and realizes that the Steinweg is not really a Steinway, she may decide that the Steinweg is good enough and buy it anyway. Even is she doesn't, the deception may have cost her the better part of an afternoon, gas, wear and tear on her car, and a not insignificant bit of road rage. Courts correctly treat such pre-sale confusion as unfair competition and trademark infringement under the Lanham Act …." Cf. "Initial Interest Confusion: Standing at the Crossroads of Trademark Law," by Jennifer E. Rothman, 27 Cardozo Law Review, 105, 161 – 162, http://www.cardozolawreview.com/ PastIssues/ROTHMAN.FINAL.VERSION.pdf
  • The existence of pre-sale deception does not depend upon whether or not a sale is completed as a result of the deception. The mere fact that a customer decides to patronize a business, based solely upon applicant's choice of a deceptively misdescriptive name, is sufficient to meet the test of the final prong of the test for deceptiveness.
    • In re ALP of South Beach Inc., Serial No. 75819306, (TTAB 2006).
      • Similarly, we find that the existence of pre-sale deception does not depend upon whether or not a sale is completed as a result of the deception. The mere fact that one may have decided to go to applicant's restaurant in order to patronize a true cafeteria, based solely upon applicant's choice of a deceptively misdescriptive name for a restaurant, is sufficient to meet the test of the final prong of the Budge test for deceptiveness.
  • The two-prong test for whether a mark is deceptively misdescriptive.
    • In re Moti Shniberg, Serial No. 78083495, (TTAB 2006).
      • The two-prong test for whether a mark is deceptively misdescriptive has been set out as follows: "(i) whether the mark misdescribes the goods [or services] to which it applies; and (ii) whether consumers are likely to believe the misdescription." Glendale International Corp. v. U.S. Patent and Trademark Office, 374 F. Supp.2d 479, 75 USPQ2d 1139, 1143 (E.D. Va. 2005). See also In re Phillips-Van Heusen Corp., 63 USPQ2d 1047, 1048 (TTAB 2002) and In re Quady Winery Incorporated, 221 USPQ 1213, 1214 (TTAB 1984).
    • In re Phillips-Van Heusen Corp., Serial No. 75/664,835, (TTAB 2002).
      • Applicant does not appear to disagree with the Examining Attorney as to the proper standards for determining whether a mark is deceptively misdescriptive under Section 2(e)(1) and whether it is deceptive within the meaning of Section 2(a). Specifically, as set forth in, for example, In re Quady Winery Inc., 221 USPQ 1213, 1214 (TTAB 1984), a mark is deceptively misdescriptive if the following two-part test is met: (1) Does the mark misdescribe the goods or services" (2) Are consumers likely to believe the misrepresentation"
  • A mark may be ‘deceptively misdescriptive' under § 2(e) if it misrepresents any fact concerning the goods that may materially induce a purchaser's decision to buy.
    • In re Moti Shniberg, Serial No. 78083495, (TTAB 2006).
      • The Federal Circuit also addressed the question of misdescriptiveness in Hoover Co. v. Royal Appliance Manufacturing Co., 238 F.3d 1357, 57 USPQ2d 1720 (Fed. Cir. 2001). In that case, the Court held: "‘A mark may be ‘deceptively misdescriptive' under § 2(e) if it misrepresents any fact concerning the goods that may materially induce a purchaser's decision to buy.' 2 McCarthy on Trademarks § 11:56." 57 USPQ2d at 1723.4
  • In deceptiveness cases, the misdescription is likely to affect the decision to purchase.
    • In re Moti Shniberg, Serial No. 78083495, (TTAB 2006).
      • The Court had earlier noted that in deceptiveness cases, the misdescription is "likely to affect the decision to purchase." 57 USPQ2d at 1723 (underlining added).
  • Where the misdescription is a material factor in the consumer's purchasing decision, the mark is not merely deceptively misdescriptive, but ‘deceptive.
    • In re Moti Shniberg, Serial No. 78083495, (TTAB 2006).
      • Similarly, the Glendale court emphasized that: "Where the misdescription is a material factor in the consumer's purchasing decision, the mark is not merely ‘deceptively misdescriptive,' but ‘deceptive.'" Glendale International, 75 USPQ2d at 1144 n. 10.
  • The misdescription must concern a feature that would be relevant to a purchasing decision.
    • In re Moti Shniberg, Serial No. 78083495, (TTAB 2006).
      • Therefore, the misdescription must concern a feature that would be relevant to a purchasing decision.
  • If the misdescription is more than simply a relevant factor that may be considered in purchasing decisions but is a material factor, the mark would also be deceptive.
    • In re Moti Shniberg, Serial No. 78083495, (TTAB 2006).
      • If the misdescription is more than simply a relevant factor that may be considered in purchasing decisions but is a material factor, the mark would also be deceptive.6
        FOOTNOTE 6 "For example, if pizza is sold under the mark FOUNDRY PIZZA and the pizza is not made in, or associated with, an old foundry, the fact that potential purchasers may believe that the pizza may be made in an old foundry building would not result in the mark being deceptively misdescriptive. In the Phillips-Van Heusen case, the board explained that for "a term to misdescribe goods or services, the term must be merely descriptive … of a significant aspect of the goods or services which the goods or services plausibly possess but in fact do not." 63 USPQ2d at 1051."
  • For a term to misdescribe goods or services, the term must be merely descriptive, rather than suggestive, of a significant aspect of the goods or services which the goods or services plausibly possess but in fact do not.
    • In re Moti Shniberg, Serial No. 78083495, (TTAB 2006).
      • "[F]or a term to misdescribe goods or services, the term must be merely descriptive, rather than suggestive, of a significant aspect of the goods or services which the goods or services plausibly possess but in fact do not." Phillips-Van Heusen, 63 USPQ2d at 1051.
  • A term is merely descriptive if it immediately describes the ingredients, qualities, or characteristics of the goods or services or if it conveys information regarding a function, purpose, or use of the goods or services.
    • In re Moti Shniberg, Serial No. 78083495, (TTAB 2006).
      • A term is merely descriptive if it immediately describes the ingredients, qualities, or characteristics of the goods or services or if it conveys information regarding a function, purpose, or use of the goods or services. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217 (CCPA 1978).
  • Book titles are often descriptive of book contents and this court's case law prohibits proprietary rights for single book titles.
    • In re Moti Shniberg, Serial No. 78083495, (TTAB 2006).
      • FOOTNOTE 7 "We add that the Federal Circuit has held that "book titles are often descriptive of book contents" and "this court's case law prohibits proprietary rights for single book titles." Herbko International Inc. v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1379-80 (Fed. Cir. 2002)."
  • Congress has said that the advantages of registration may not be extended to a mark that deceives the public. Thus, the mark standing alone must pass muster, for that is what the applicant seeks to register, not extraneous explanatory statements.
    • In re Moti Shniberg, Serial No. 78083495, (TTAB 2006).
      • Consumers, upon seeing the mark "SEPTEMBER 11, 2001" in connection with applicant's books and entertainment services, would believe that they are simply additional books or entertainment services on the subject of the events concerning the terrorist attacks of September 11, 2001.7 While the nature of the misdescription would become known after consumers studied applicant's books and entertainment services, that does not prevent the mark from being deceptively misdescriptive. See, e.g., In re Budge Manufacturing Co., 857 F.2d 773, 8 USPQ2d 1259, 1261 (Fed. Cir. 1988) ("Congress has said that the advantages of registration may not be extended to a mark which deceives the public. Thus, the mark standing alone must pass muster, for that is what the applicant seeks to register, not extraneous explanatory statements").
  • Difference between merely descriptive and suggestive marks.
    • In re Moti Shniberg, Serial No. 78083495, (TTAB 2006).
      • This misdescription would be relevant to consumers who would be interested in books or entertainment services concerning the terrorist attacks of September 11, 2001, and the misdescription "may materially induce a purchaser's decision to buy" or use the goods or services. Hoover Co., 57 USPQ2d at 1723.
  • A mark is merely descriptive if it immediately conveys information concerning a quality or characteristic of the product or service. The perception of the relevant purchasing public sets the standard for determining descriptiveness. Thus, a mark is merely descriptive if the ultimate consumers immediately associate it with a quality or characteristic of the product or service. On the other hand, if a mark requires imagination, thought, and perception to arrive at the qualities or characteristics of the goods or services, then the mark is suggestive
    • In re Vanilla Gorilla, L.P., Serial No. 76561135, (TTAB 2006).
      • "A mark is merely descriptive if it immediately conveys information concerning a quality or characteristic of the product or service. The perception of the relevant purchasing public sets the standard for determining descriptiveness. Thus, a mark is merely descriptive if the ultimate consumers immediately associate it with a quality or characteristic of the product or service. On the other hand, if a mark requires imagination, thought, and perception to arrive at the qualities or characteristics of the goods or services, then the mark is suggestive." In re MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003) (citations and internal quotation marks omitted). See also In re Nett Designs, 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) and In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217 (CCPA 1978).
  • In order for a term to misdescribe goods/services, the term must be merely descriptive, rather than suggestive, of a significant aspect of the goods/services which the goods/services plausibly possess but in fact do not.
    • In re Phillips-Van Heusen Corp., Serial No. 75/664,835, (TTAB 2002).
      • As a starting point for analysis, we observe that in order for a term to misdescribe goods or services, the term must be merely descriptive, rather than suggestive, of a significant aspect of the goods or services which the goods or services plausibly possess but in fact do not.6

        FOOTNOTE 6 "It is well settled, in this respect, that a term is considered to be merely descriptive of goods or services, within the meaning of Section 2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), if it immediately describes an ingredient, quality, characteristic or feature thereof or if it directly conveys information regarding the nature, function, purpose or use of the goods or services. See In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). It is not necessary that a term describe all of the properties or functions of the goods or services in order for it to be considered to be merely descriptive thereof; rather, it is sufficient if the term describes a significant attribute or idea about them. Moreover, whether a term is merely descriptive is determined not in the abstract but in relation to the goods or services for which registration is sought, the context in which it is being used on or in connection with those goods or services and the possible significance that the term would have to the average purchaser of the goods or services because of the manner of its use. See In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). Consequently, "[w]hether consumers could guess what the product [or service] is from consideration of the mark alone is not the test." In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985). However, a mark is suggestive if, when the goods or services are encountered under the mark, a multistage reasoning process, or the utilization of imagination, thought or perception, is required in order to determine what attributes of the goods or services the mark indicates. See, e.g., In re Abcor Development Corp., supra at 218, and In re Mayer-Beaton Corp., 223 USPQ 1347, 1349 (TTAB 1984). As has often been stated, there is a thin line of demarcation between a suggestive mark and a merely descriptive one, with the determination of which category a mark falls into frequently being a difficult matter involving a good measure of subjective judgment. See, e.g., In re Atavio, 25 USPQ2d 1361 (TTAB 1992) and In re TMS Corp. of the Americas, 200 USPQ 57, 58 (TTAB 1978). The distinction, furthermore, is often made on an intuitive basis rather than as a result of precisely logical analysis susceptible of articulation. See In re George Weston Ltd., 228 USPQ 57, 58 (TTAB 1985).

  • Each case is decided on its own merits and, while uniform treatment is desirable, the TTAB is not bound by prior determinations of the Examining Attorneys regarding registrability.
    • In re Phillips-Van Heusen Corp., Serial No. 75/664,835, (TTAB 2002).
      • Each case must, of course, be decided on its own merits, including the evidentiary record presented, and while uniform treatment under the Trademark Act is desirable, the Board is not bound by prior determinations of Examining Attorneys with respect to registrability. See, e.g., In re Shapely, supra at 75.
  • Case Finding: Cases where terms were held deceptively misdescriptive.
    • In re ALP of South Beach Inc., Serial No. 75819306, (TTAB 2006).
      • In support of her position, the Trademark Examining Attorney relies upon cases where a trademark is applied to consumer goods such as clothing, shoes or seat covers, which marks may contain, for example, some form of the word SILK3 or HYDE/HIDE.4 FOOTNOTE "3 In re Phillips-Van Heusen Corp., 63 USPQ2d 1047 (TTAB 2002) [SUPER SILK is deceptively misdescriptive for clothing made of silk-like fabric]; and In re Shapely, Inc., 231 USPQ 72 (TTAB 1986) [SILKEASE held deceptive as applied to clothing not made of silk]. 4 R. Neumann & Co. v. Overseas Shipments, Inc., 326 F.2d 786, 140 USPQ 276 (CCPA 1964) [DURA-HYDE deceptive for shoes made of a plastic material having a leather-like appearance]; In re Intex Plastics Corp., 215 USPQ 1045 (TTAB 1982) [TEXHYDE held deceptive as applied to synthetic fabric for use in the manufacture of furniture, upholstery, luggage, etc.); and Tanners' Council of America, Inc. v. Samsonite Corp., 204 USPQ 150 (TTAB 1979) [SOFTHIDE held deceptive for imitation leather material]."
  • Case Finding: The word "Cafeteria" used in connection with restaurant services that explicitly exclude cafeteria style restaurants is not misdescriptive.
    • In re ALP of South Beach Inc., Serial No. 75819306, (TTAB 2006).
      • We find that the word CAFETERIA used in connection with restaurant services that explicitly exclude cafeteria style restaurants does misdescribe the services.
  • Case Finding: When the mark, "September 11, 2001," is used to identify these goods and services and the subject matter of the goods and services is not concerned with the events of September 11, 2001, the mark is misdescriptive.
    • In re Moti Shniberg, Serial No. 78083495, (TTAB 2006).
      • But the record shows that the date of September 11, 2001, has been used to describe numerous books, articles, and shows. When the mark, "SEPTEMBER 11, 2001," is used to identify these goods and services and the subject matter of the goods and services is not concerned with the events of September 11, 2001, the mark is misdescriptive. Therefore, the first prong of the test for misdescriptiveness is satisfied.
  • Case Finding: Cases where the word "super" was found either merely descriptive or suggestive.
    • In re Phillips-Van Heusen Corp., Serial No. 75/664,835, (TTAB 2002).
      • With respect to marks which contain the word "super," there have been a number of cases holding such marks to be either merely descriptive or suggestive, including: Quaker State Oil Refining Corp. v. Quaker Oil Corp., 453 F.2d 1296, 172 USPQ 361, 363 (CCPA 1972) ["SUPER BLEND" held merely descriptive of "motor oils" as designating "an allegedly superior blend of oils"]; In re Consolidated Cigar Co., 35 USPQ2d 1290, 1293-94 (TTAB 1995) ["SUPER BUY" found laudatory and hence merely descriptive of "cigars, pipe tobacco, chewing tobacco and snuff" inasmuch as term "ascribes a quality of superior value to the goods," in that they "are an exceptionally high value for their price," and is "an expression of pre-eminence, analogous to a grade designation"]; In re Carter-Wallace, Inc., 222 USPQ 729, 730 (TTAB 1984) ["SUPER GEL" held merely descriptive of a "lathering gel for shaving" because term "would be perceived as nothing more than the name of the goods modified by a laudatory adjective indicating the superior quality of applicant's shaving gel"]; In re Samuel Moore & Co., 195 USPQ 237, 241 (TTAB 1977) ["SUPERHOSE!" found merely descriptive of "hydraulic hose made of synthetic resinous materials" inasmuch as term "would be understood as the name of the goods modified by a laudatory adjective which would be taken to mean that applicant's hose is of superior quality or strength"]; In re Ralston Purina Co., 191 USPQ 237, 238 (TTAB 1976) ["SUPER" in "RALSTON SUPER SLUSH" ("SLUSH" disclaimed) held suggestive of a "concentrate used to make a slush type soft drink" because word "is used as mere puffery ... to connote a vague desirable characteristic or quality"]; In re Allen Electric & Equipment Co., 175 USPQ 176, 177 ["SUPER COLLINEAR" found neither descriptive nor misdescriptive of "base station communication antennas" inasmuch as "an antenna is either collinear or it is not" and thus "one antenna is not more collinear than another nor would it be[,] comparatively, most collinear of three or more such arrays"]; and In re Occidental Petroleum Corp., 167 USPQ 128 (TTAB 1970) ["SUPER IRON" held suggestive of "soil supplements" because "it takes some roundabout reasoning to make a determination ... that the product contains a larger amount of iron than most soil supplements or that this iron ... ingredient ... is superior in quality to iron found in other soil supplements"].
  • Case Finding: If the word "super" is combined with a word which names the goods or services, or a principal component, grade or size thereof, then the composite term is considered merely descriptive of the goods or services, but if such is not strictly true, then the composite mark is regarded as suggestive of the products or services.
    • In re Phillips-Van Heusen Corp., Serial No. 75/664,835, (TTAB 2002).
      • A general proposition which may be distilled from the foregoing cases is that if the word "super" is combined with a word which names the goods or services, or a principal component, grade or size thereof, then the composite term is considered merely descriptive of the goods or services, but if such is not strictly true, then the composite mark is regarded as suggestive of the products or services.
  • Case Finding: Purchasers and potential customers for such goods would plainly understand, as asserted by the Examining Attorney, that because shirts, like other items of apparel, are commonly made of silk, the term "SUPER SILK" designates goods made of an excellent, first-rate, or superior grade of silk fabric and not, as suggested by applicant, those produced from "a fabric that is similar but superior to silk.
    • In re Phillips-Van Heusen Corp., Serial No. 75/664,835, (TTAB 2002).
      • Purchasers and potential customers for such goods would plainly understand, as asserted by the Examining Attorney, that because shirts, like other items of apparel, are commonly made of silk, the term "SUPER SILK" designates goods made of an excellent, first-rate, or superior grade of silk fabric and not, as suggested by applicant, those produced from "a fabric that is similar but superior to silk" (emphasis added). See, e.g., R. Neumann & Co. v. Overseas Shipments, Inc., 326 F.2d 786, 140 USPQ 276, 279 (CCPA 1964) ["We are unable to subscribe to the reasoning ... that 'DURA-HYDE' would at most merely suggest that appellee's nonleather goods of leatherlike appearance 'are as durable as leather' (emphasis supplied). The interjection of as between 'durable' and 'hide' supplies a distorted connotation"].
    • In re Phillips-Van Heusen Corp., Serial No. 75/664,835, (TTAB 2002).
      • However, because applicant's goods are identified as "clothing, namely[,] dress shirts and sport shirts made of silk-like fabric," it is clear that the term "SUPER SILK," which signifies an excellent, firstrate, or superior grade of silk fabric, misdescribes applicant's goods inasmuch as they are not made from silk fabric. See In re Shapely, Inc., supra at 73 ["There is no question that the presence of the noun 'silk' as a prefix renders the mark SILKEASE misdescriptive of appellant's blouses and dresses which contain no silk fibers"].
    • In re Phillips-Van Heusen Corp., Serial No. 75/664,835, (TTAB 2002).
      • Accordingly, because both elements of the test for a deceptively misdescriptive term have been satisfied, registration of the term "SUPER SILK" is barred by Section 2(e)(1) of the statute. See, e.g., R. Neumann & Co. v. Overseas Shipments, Inc., supra at 280-81; and In re Shapely, supra at 74-75.
    • In re Phillips-Van Heusen Corp., Serial No. 75/664,835, (TTAB 2002).
      • Moreover, the third-party registrations of marks composed of the terms "SILK," "SUEDE" or "SATIN" are not evidence that marks which contain a fabric name have been permitted registration where the goods do not contain that fabric. Rather, such registrations are implicitly limited, as the subject marks at a minimum would otherwise be considered deceptively misdescriptive, to goods which are made from the material named in the mark.
    • In re Phillips-Van Heusen Corp., Serial No. 75/664,835, (TTAB 2002).
      • Given that silk possesses such desirable attributes, it is plain that a term which indicates that shirts or other garments are made of silk is likely to affect the decision to purchase the goods. The term "SUPER SILK," which deceptively misdescribes applicant's dress shirts and sports shirts made of silk-like fabric as believably being made of an excellent, first-rate, or superior grade of real silk, accordingly is also deceptive within the meaning of Section 2(a) of the statute. See, e.g., R. Neumann & Co. v. Overseas Shipments, Inc., supra; In re Shapely, supra at 75; and Tanners' Council of America, Inc. v. Samsonite Corp., 204 USPQ 150, 154 (TTAB 1979) ["SOFTHIDE" for "imitation leather material" held deceptive].
  • See Anheuser-Busch, Inc. v. Holt, 92 USPQ2d 1101, 1108 (TTAB 2009) for the factors to be considered for a mark to be found deceptively misdescriptive.
    • Prakash Melwani v. Allegiance Corporation, Opposition No. 91190682 (TTAB 2010)
      • Nor does applicant's admission establish that the mark is deceptively misdescriptive. There is no evidence, for example, that consumers would likely believe the goods are made of silk. See Anheuser-Busch, Inc. v. Holt, 92 USPQ2d 1101, 1108 (TTAB 2009) for the factors to be considered for a mark to be found deceptively misdescriptive.
Prakash Melwani v. Allegiance Corporation, Opposition No. 91190682 (TTAB 2010) In re ALP of South Beach Inc., Serial No. 75819306, (TTAB 2006) In re Moti Shniberg, Serial No. 78083495, (TTAB 2006) In re Vanilla Gorilla, L.P., Serial No. 76561135, (TTAB 2006) In re Phillips-Van Heusen Corp., Serial No. 75/664,835, (TTAB 2002) Grand Total
Anheuser-Busch, Inc. v. Holt, 92 USPQ2d 1101 (TTAB 2009) 1
Glendale International Corp. v. U.S. Patent and Trademark Office, 374 F. Supp.2d 479, 75 USPQ2d 1139 (E.D. Va. 2005) 1
In re MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778 (Fed. Cir. 2003) 1
Herbko International Inc. v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1375 (Fed. Cir. 2002) 1
In re Phillips-Van Heusen Corp., 63 USPQ2d 1047 (TTAB 2002) 2
Hoover Co. v. Royal Appliance Manufacturing Co., 238 F.3d 1357, 57 USPQ2d 1720 (Fed. Cir. 2001) 1
In re Nett Designs Inc., 236 F.3d 1339, 957 USPQ2d 1564 (Fed. Cir. 2001) 1
In re Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB 1995) 1
In re Berman Bros. Harlem Furniture Inc., 26 USPQ2d 1514 (TTAB 1993) 1
In re Atavio, 25 USPQ2d 1361 (TTAB 1992) 1
In re Woolrich Woolen Mills Inc., 13 USPQ2d 1235 (TTAB 1989) 1
In re Budge Manufacturing Co., 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1988) 3
In re Woodward & Lothrop Inc., 4 USPQ2d 1412 (TTAB 1987) 1
In re Lyphomed Inc., 1 USPQ2d 1430 (TTAB 1986) 1
In re Shapely Inc., 231 USPO 72 (TTAB 1986) 1
In re American Greetings Corp., 226 UPSQ 365 (TTAB 1985) 1
In re George Weston Ltd., 228 USPQ 57, 58 (TTAB 1985) 1
In re Carter-Wallace Inc., 222 USPQ 729 (TTAB 1984) 1
In re Mayer-Beaton Corp., 223 USPQ 1347 (TTAB 1984) 1
In re Quady Winery Inc., 221 USPQ 1213 (TTAB 1984) 3
In re Intex Plastics Corp., 215 USPQ 1045 (TTAB 1982) 1
In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979) 1
Tanners' Council of America Inc. v. Samsonite Corp., 204 USPQ 150 (TTAB 1979) 2
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978) 3
In re TMS Corp. of the Americas, 200 USPQ 57 (TTAB 1978) 1
In re Samuel Moore & Co., 195 USPQ 237 (TTAB 1977) 1
In re Ralston Purina Co., 191 USPQ 237 (TTAB 1976) 1
Grotrain, Helfferich, Schulz, Th. Steinweg Nachf. V. Steinway & Sons, 523 F.2d 1331 (2nd Cir. 1975) 1
In re Allen Electric & Equipment Co., 175 USPQ 239 (TTAB 1972) 1
Quaker State Oil Refining Corp. v. Quaker Oil Corp., 453 F.2d 1296, 172 USPQ 361 (CCPA 1972) 1
In re Occidental Petroleum Corp., 167 USPQ 128 (TTAB 1970) 1
R. Neumann & Co. v. Overseas Shipments Inc., 326 F.2d 786, 140 USPQ 276 (CCPA 1964) 2
Grand Total 1 11 7 3 19 41

Sec. 1052. Trademarks registrable on principal register; concurrent registration

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it--
  1. (a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501(9) of title 19) enters into force with respect to the United States.
  2. (b) Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.
  3. (c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.
  4. (d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive: Provided, That if the Director determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to (1) the earliest of the filing dates of the applications pending or of any registration issued under this chapter; (2) July 5, 1947, in the case of registrations previously issued under the Act of March 3, 1881, or February 20, 1905, and continuing in full force and effect on that date; or (3) July 5, 1947, in the case of applications filed under the Act of February 20, 1905, and registered after July 5, 1947. Use prior to the filing date of any pending application or a registration shall not be required when the owner of such application or registration consents to the grant of a concurrent registration to the applicant. Concurrent registrations may also be issued by the Director when a court of competent jurisdiction has finally determined that more than one person is entitled to use the same or similar marks in commerce. In issuing concurrent registrations, the Director shall prescribe conditions and limitations as to the mode or place of use of the mark or the goods on or in connection with which such mark is registered to the respective persons.
  5. (e) Consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them, (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registrable under section 1054 of this title, (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them, (4) is primarily merely a surname, or (5) comprises any matter that, as a whole, is functional.
  6. (f) Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce. The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant's goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made. Nothing in this section shall prevent the registration of a mark which, when used on or in connection with the goods of the applicant, is primarily geographically deceptively misdescriptive of them, and which became distinctive of the applicant's goods in commerce before December 8, 1993.
A mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be refused registration only pursuant to a proceeding brought under section 1063 of this title. A registration for a mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be canceled pursuant to a proceeding brought under either section 1064 of this title or section 1092 of this title.