1. 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

2. Why address deceptiveness now?
Promote consistency
Confusion regarding when to issue refusals
Establish procedures,
provide guidelines and
examples
Do I pub it?
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3. §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)
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4. 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?
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5. What types of marks might be deceptive?
SINGLE TERM
COMPOSITE MARK
PHONETIC EQUIVALENTS
FOREIGN EQUIVALENT
DESIGN MARK
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6. Is the mark misdescriptive?
DOES THE TERM/DESIGN MISDESCRIBE A SIGNIFICANT CHARACTERISTIC, QUALITY, FEATURE, FUNCTION, COMPOSITION, OR USE OF THE GOODS OR SERVICES?
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7. 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
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8. 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)
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9. Examples of objective criteria
SUPERIOR QUALITY IN GENERAL
ENHANCED PEFORMANCE
OR FUNCTION
DIFFERENCE IN PRICE
HEALTH BENEFIT
RELIGIOUS PRACTICE OR SOCIAL POLICY
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10. 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.
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11. Personal preference
How do we tell the difference between what is personal preference and what is material based on “objective criteria”?
Evidence
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12. 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)
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13. 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
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14. Record is clear: goods/services do not contain feature
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15. Record is not clear
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16. 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.”)
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17. 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
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18. 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.
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19. 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.
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20. 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.
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21. 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.
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22. 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
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23. Resources 15 U.S.C. §1052(a) and §1052(e)(1)
TMEP §§ (Deceptively Misdescriptive Marks) and et seq. (Deceptive Matter)
37 C.F.R. §2.61(b)
Examination Guide and cases cited therein
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24. REVIEW OF MORE EXAMPLES
Conclusion
QUESTIONS AND ANSWERS
REVIEW OF MORE EXAMPLES
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