Trademarks that are merely deceptively misdescriptive of the goods or services of the trademark applicant, the mark can only be registered if secondary meaning under Section 2(f) of the Lanham Act.
Section 2(e)(1) of the Lanham Act prohibits trademark registration to marks that are “merely … deceptively misdescriptive” when used in connection with the applied for goods and/or services. The only way a deceptively misdescriptive mark can be registered on the principal trademark register is if the trademark owner can show the mark has acquired secondary meaning under Section 2(f) of the Lanham Act.
Test for Merely Deceptively Misdescriptive Trademarks
When a trademark owner applies for a trademark registration, the Examining Attorney will issue an Office Action against the application if he or she concludes the mark is deceptively misdescriptive when used with the applied for goods and/or services. The test of whether a mark is deceptively misdescriptive is:
Is the term misdescriptive of the character, quality, function, composition or use of the goods or services?
If so, are prospective purchasers likely to believe that the misdescription actually describes the goods or services?
If so, is the misdescription likely to affect the decision to purchase?
If the question to the first answer is yes, but to the second answer is no, then the trademark will likely be viewed as arbitrary or suggestive. For example, APPLE is misdescriptive when used to sell computers, but no reasonable consumer actually think APPLE is being used to describe the products sold by Apple, Inc. In other words, in order for a trademark to be, prospective purchasers must believe the the misdescriptive elements of the mark actually describe the goods or services.
Although it is debatable that the APPLE logo is misdescriptive for computers, no purchaser would buy that computer expecting to open the box and find a dozen apples.
If the answer to the first and second question is yes, then the mark will be considered merely deceptively descriptive and under Section 2(e)(1) the mark cannot be registered on the principal trademark register. However, if the trademark owner can show the mark has acquired secondary meaning, as outlined by Section 2(f).
The trademark application for THCTea for “tea beverages” was found to be deceptively misdescriptive because the tea did no contain THC, or tetrahydrocannabinol (the substance that gives marijuana users the euphoric high).
If the answer to all three questions is “yes,” then the mark will be considered deceptive. Even if a deceptive mark acquired secondary meaning under Section 2(f), the deceptive mark still cannot be registered. Section 2(f) cannot save trademark considered deceptive.
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