Trademark Application Refusal Based on Descriptiveness & Deceptiveness

Chapter 1200 of the Trademark Manual of Examining Procedure (“TMEP”) provides the rules by which an Examining Attorney at the United Stated Patent & Trademark Office will be governed when conducting substantive examinations of trademark applications. Often applications are refused due to a trademark being merely descriptive, deceptively misdescriptive, or deceptive. If this occurs, the Examiner will refuse the application under §2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1) or under §2(a) of the Trademark Act, 15 U.S.C. §1052(a).

A mark is considered merely descriptive if it describes a quality, characteristic, feature, function, use, purpose, or ingredient of the product or service. See §1209.01(b) of the TMEP. If the mark describes one single aspect of the goods or services that may be sufficient for the Examining Attorney to find that the trademark is merely descriptive of the goods or services. However, the conclusion that a trademark is merely descriptive must be made in relation to the product or service, and not in the abstract. In other words, it is not necessary that a mark describe all the purposes of a product or all the features of a service. For example, the mark SWEET & CRISPY for chocolate cookies may be refused on the basis of being merely descriptive of the goods. Another example is the mark BED & BREAKFAST REGISTRY for lodging reservation services.

If a merely descriptive mark is refused on the Principal Register, then the applicant may be able to transfer it to the Supplemental Register, if the mark was filed on a use basis. However, if a trademark application is filed under Section 1(b) of the Trademark Act (intent-to-use), then it is not a candidate for an amendment to the Supplemental Register, until the applicant files an Allegation of Use meeting the requirements of 37 C.F.R. §2.76(b). To fully understand the benefits of owning a trademark registration on the Principal Register compared to the Supplemental Register, see our web page entitled Filing Your Trademark On The Principal Register And The Supplemental Register. If an applicant files an acceptable Statement of Use and amends to the Supplemental Register, the effective filing date of the application will be the date the Allegation of Use was filed. You can find more information related to this point in theTMEP in §§ 816.02 and 1102.03.

If one of the terms in the trademark is merely descriptive for one of the products or services, then an Examiner may require a disclaimer. Additional information related to disclaimers can be found in the TMEP in §1213. A disclaimer is a statement that the applicant is not asserting an exclusive right to use the disclaimed element of the mark, but instead is asserting rights in the composite mark. A disclaimer will appear on the Certificate of Registration, but a trademark owner is not required to include it in the marketing or advertising materials. The purpose of the disclaimer is to allow the application to mature to a registration, and to avoid creating a false impression of the extent of the applicant’s rights with regard to the disclaimed portion of the trademark.

Another reason for refusing a trademark application is if the mark is deceptively misdescriptive of the goods or services. See TMEP §1209.04. First it must be determined that the mark misdescribes the goods. Then, the question to ask is anyone likely to believe the misrepresentation. If a trademark immediately communicates an idea regarding a characteristic, function, purpose, quality, use, feature, or an ingredient and the idea is false, but plausible, then the mark is deceptively misdescriptive.

If this is the case, it will be refused under Section 2(e)(1) of the Trademark Act. This type of mark may still register on the Principal Register, if there is a showing of acquired distinctiveness (under §2(f) of the Trademark Act) or it could register on the Supplemental Register. However, if the misdescription is material to the decision to purchase the goods or to use the services, the trademark will be considered deceptive under §2(a) of the Trademark Act. A deceptive trademark cannot register on the Principal Register or the Supplemental Register. Only experienced trademark counsel will be able to identify these types of subtle distinctions. If you have questions regarding a trademark, call the Law Offices of Nikki Siesel PLLC where you will be able to have a courtesy consultation with an experienced trademark attorney.