When the U.S. Patent & Trademark Office reviews your trademark application, they are looking to make sure your trademark can be registered. If the Examining Attorney assigned to your application finds a problem with it, they will issue an office action. A good number of the posts on my blog are dedicated to the various reasons your application might be rejected. In this post, I want to talk about trademarks that are found to be deceptive. Deceptive trademarks cannot be registered with the USPTO, so you will want to know if your trademark has that issue before you file your application.
What Is a Deceptive Trademark?
A deceptive trademark is one that tricks consumers about the products/services with which it is used. It’s exactly what it sounds like: it tells consumers something about your products/services that is not true. The Trademark Office will not allow the registration of deceptive trademarks, not even on the Supplemental Register. So how do you know whether your trademark is deceptive? Well, like all of the best questions in the field of law, there is a test:
- Is the term misdescriptive of the character, quality, function, composition or use of the goods?
- If so, are prospective purchasers likely to believe that the misdescription actually describes the goods?
- If so, is the misdescription likely to affect a significant portion of the relevant consumers’ decision to purchase?
If all three of these items apply, then you have a deceptive trademark on your hands. Regardless of your intentions, the Trademark Office will reject your application if that is the case. Let’s break down these questions to give you a better understanding. Then we will look at a few examples, just to make things clearer.
The first question is really asking whether there is something your trademark says about your product that isn’t true. Note that there are several different ways that something your mark says about your product/services may not be true (e.g. what your product does, what it is made from, how it is used).
The second question is focused on consumer perception. Essentially, it asks whether consumers would believe the misrepresentation established in the first question. If you say something false about your product/service, but something so outrageous that no one would believe it, then your mark is not deceptive.
Finally, (and this part is key) the misrepresentation has to be likely to impact the decision whether or not to purchase the products/services for a “significant portion” of relevant consumers. If consumers are not influenced by the misrepresentation, then the mark is not deceptive. Instead, it may fall into a separate category called deceptively misdescriptive. But that is a different blog post for a different day.
Common Examples
We’ve looked at and parsed the legalese meaning of a deceptive trademark. But what does this look like in the real world, and why is it a rule? One of the most common examples of a deceptive mark is one that includes the word ORGANIC/ORGANICS for non-organic products. For example, if I use the trademark FANTABULOUS ORGANIC TOMATOES to market and sell tomatoes, they had better actually be organic. Otherwise, the trademark is deceptive because (1) ORGANIC misdescribes my products (in other words, they are not organic), (2) consumers would likely believe that my tomatoes are organic, and (3) they would likely be influenced by my use of the term ORGANIC in deciding whether to purchase my product or not. By calling my products ORGANIC TOMATOES, I am deceiving consumers.
Another example would be using the word GOLD in a trademark for jewelry products that do not actually contain gold where the consumer would believe otherwise. Along similar lines, using 10K in a trademark for gold jewelry that is not 10 karat gold would be deceptive. Finally, you could not register a trademark that contains the word LEATHER for products that are not actually made of leather.
Concerned About a Potential Deceptiveness Refusal?
If you think you might have a deceptive trademark on your hands, or if you have received an office action rejecting your trademark as deceptive, you should speak with an experienced trademark attorney. Feel free to call me at (480) 360-3499, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.
