Office of Trademark Quality Review Examination Procedures for §2(a) Deceptiveness Refusals for Non-Geographic Marks Examination Guide 01-09 Janice O’Lear Office of Trademark Quality Review Cathy Cain Legal Policy Office

Why address deceptiveness now? Promote consistency Confusion regarding when to issue refusals Establish procedures, provide guidelines and examples Do I pub it? 9/16/2018

§2(a) prohibits registration of deceptive marks The Exam Guide reviews: Elements of a §2(a) deceptiveness refusal Evidentiary issues Procedures for issuing refusal and/or requirements Guidelines for amending the ID Responding to applicant’s arguments Case law interpreting/applying §2(a) 9/16/2018

The test for determining whether a mark is deceptive Is the term misdescriptive of the character, quality, function, composition, or use of the goods? If so, are prospective purchasers likely to believe the misdescription? If so, is the misdescription likely to affect a significant portion of the relevant consumers’ decision to purchase? 9/16/2018

What types of marks might be deceptive? SINGLE TERM COMPOSITE MARK PHONETIC EQUIVALENTS FOREIGN EQUIVALENT DESIGN MARK 9/16/2018

Is the mark misdescriptive? DOES THE TERM/DESIGN MISDESCRIBE A SIGNIFICANT CHARACTERISTIC, QUALITY, FEATURE, FUNCTION, COMPOSITION, OR USE OF THE GOODS OR SERVICES? 9/16/2018

Is the misdescription believable? Evidence must establish that consumers are likely to believe the misdescription: Internet or Lexis/Nexis® evidence demonstrating the g/s with the characteristic, material content, or feature 3rd Party registrations where the g/s identify that characteristic, material composition, or feature Applicant’s own specimens or website 9/16/2018

Materiality The misdescription must be a MATERIAL FACTOR in the decision to purchase BASED ON OBJECTIVE STANDARDS OR CRITERIA (i.e., an objective inducement to purchase beyond that of mere personal preference) 9/16/2018

Examples of objective criteria SUPERIOR QUALITY IN GENERAL ENHANCED PEFORMANCE OR FUNCTION DIFFERENCE IN PRICE HEALTH BENEFIT RELIGIOUS PRACTICE OR SOCIAL POLICY 9/16/2018

Evidence search strategies Internet or Nexis® searches that combine the deceptive term with laudatory terms such as “desirable,” “superior,” “premium,” “better quality,” “sought after,” “more expensive,” or “established standards” may be useful to establish materiality. 9/16/2018

Personal preference How do we tell the difference between what is personal preference and what is material based on “objective criteria”? Evidence 9/16/2018

Some examples MATERIAL NOT MATERIAL ORGANIC (food, clothing, cosmetics, etc.) BAMBOO (flooring, clothing, bedding) MAHOGONY (furniture, cabinets, musical instruments) NOT MATERIAL SPICY (food or drink: chips, juice, rum, prepared meals, etc.) PLAID (clothing, pocketbooks, umbrella, furniture, etc.) CURRY or KABOB (restaurant services) 9/16/2018

Procedures for issuing refusals Remember that if a mark is deceptive within the meaning of §2(a), it is not registrable - disclaimer and §2(f) will never apply If possible to call and ask regarding the potentially deceptive term (and amend the ID or recitation by examiner’s amendment) by all means do it! See the following Flow Charts 9/16/2018

Record is clear: goods/services do not contain feature 9/16/2018

Record is not clear 9/16/2018

Miscellaneous issues How to amend the Identification or Recitation Extrinsic Evidence When does deception occur? (“Well, the consumer can see for themselves that the goods aren’t made of leather! The label says what the goods are made of in large letters.”) 9/16/2018

Example 1 Mark: JASMINE BLOOM Goods: Rice Is it 2(a) deceptive if not “Jasmine Rice”? No – The evidence demonstrates that while some people “believe” it is the best rice (for various reasons), many others disagree and have other favorites. It falls somewhere in the middle on price (Basmati, for example, is more expensive). JASMINE BLOOM 9/16/2018

Example 2 Mark: ROCKET NITROUS Goods: Fuel for Automobiles Is it 2(a) deceptive if not nitrous oxide or NOS? Yes - The evidence found clearly shows that NOS makes your car go faster, is more expensive and increases your horsepower and torque. 9/16/2018

Example 3 Mark: THE BEST-TEX LA-TEX Goods: House paint Is it 2(a) deceptive if not latex paint? Yes - The evidence found on the web and on Lexis/Nexis® clearly demonstrates that Latex paint is superior to non-latex paint in several significant ways. 9/16/2018

Example 4 Mark: LEMON DROP Goods: Liqueur Is it 2(a) deceptive if the goods are not lemon flavored? No – The evidence does not show that lemon flavor or lemon drop flavor is objectively better or superior to any other flavor. 9/16/2018

Review of Excellent Office Action The proper legal citation for all refusals is used. The proper form paragraphs and original writing are used to link the law to the facts of the case. The action includes sufficient evidence to support the 2(e)(1) descriptiveness refusal and the alternative 2(a) and 2(e)(1) deceptively misdescriptive refusals. The action is clear that the recommendation to amend the application to seek registration on the Supplemental Register is appropriate for the 2(e)(1) refusals and not the 2(a) refusal. The action includes the appropriate request to amend the identification of goods. The action includes an appropriate information request. 9/16/2018

Practice tips Notes to File Rule 2.61(b) Information Request Useful for listing information obtained from applicant, resources checked, consultation with Managing or Senior Attorney, etc. Rule 2.61(b) Information Request Include in written actions to clarify facts for the record In subsequent actions, including finals, indicate status of any withdrawn §2(a) or §2(e)(1) refusal 9/16/2018

Resources 15 U.S.C. §1052(a) and §1052(e)(1) TMEP §§1209.04 (Deceptively Misdescriptive Marks) and 1210.05 et seq. (Deceptive Matter) 37 C.F.R. §2.61(b) Examination Guide 01-09 and cases cited therein 9/16/2018

REVIEW OF MORE EXAMPLES Conclusion QUESTIONS AND ANSWERS REVIEW OF MORE EXAMPLES 9/16/2018