CAUTION: Bad Trademarks

Trademarks that are determined to be deceptive are not protected and may not be registered. Like deceptive marks, deceptively misdescriptive marks tend to mislead consumers as to the underlying product. However, deceptively misdescriptive marks do not meet the requirements of a deceptive mark as there is not a bad intent or reliance by purchasers upon the misdescription. Trademarks that are determined to be deceptively misdescriptive may be registered on the Principal Register upon a showing of secondary meaning or distinctiveness.

If you are interested in registering a Mark which may be descriptive or deceptive, please contact one of our Trademark Attorney’s to review whether the Mark would qualify for registration by the USPTO.

Deceptive Trademarks

These marks cannot be registered as trademarks because they mischaracterized or mislead consumers as to the underlying product. Deceptive trademarks are those that would likely mislead the public as to the nature and qualities of the product.

Test for Determining if Mark is Deceptive

The usual test for determining whether or not a mark is deceptive is:

Whether the mark misdescribes the character, quality, function, composition, or use of the underlying product.

If yes, then whether the prospective purchasers are likely to believe that the misdescription actually describes the goods.

If yes, then whether purchasers are likely to rely upon the misdescription in making their purchasing decision.
Some courts have simply looked for an intent to deceive, instead of applying the above test.

Example of a Deceptive Trademark

The trademark BreathAsure was determined to be deceptive because it conveyed the literally false message that fresh breath was assured by using the product. Deception was found because an essential and material element was misrepresented, was distinctly false, and was the very element upon which the customer would reasonably rely in purchasing the product over another product.

Deceptively Misdescriptive Trademarks

If a mark is misleading but does not qualify for being a deceptive mark because either the mark’s owner had no bad intent or there is not likely to be any reliance by purchasers on the misleading description then the mark is a deceptively misdescriptive mark. A deceptively misdescriptive mark conveys an immediate false idea of an ingredient, quality, characteristic, function, or feature of the goods or services with which it is used. Prospective purchasers that encounter the mark, as used on or in connection with the goods or services in question, would be likely to believe the misrepresentation. Deceptively misdescriptive marks are unregisterable unless there is a showing of secondary meaning or acquired distinctiveness.

Test for Deceptive Misdescriptiveness

The following test is used to determine whether or not a trademark is deceptively misdescriptive:

The mark is misdescriptive of the goods or services in relation to which it is used,

Consumers would be likely to believe the misdescription, and

The misdescription would likely affect consumers’ decision to buy the goods or services.

If the misdescription represented by the mark is material to the decision to purchase the goods or utilize the services then registration of the mark will be barred.

Examples of Deceptively Misdescriptive Trademarks

The use of Pheromone on a line of perfumes was found to be deceptively misdescriptive because plaintiff admittedly did not know or care whether or not its perfumes actually contained pheromones, which are organic substances that allegedly attract other members of the same species. Plaintiff’s use of Pheromone for five years was found to be insufficient to acquire secondary meaning and protection was denied.

The trademark Super Silk was refused registration on the ground that the mark was deceptively misdescriptive of the applicant’s goods, which were dress shirts and sport shirts made of silk-like fabric. It was determined that consumers would likely believe that applicant’s products were made from silk. The deception caused by the mark was not mitigated by the applicant’s labels on the goods at issue that identified the synthetic nature of the fiber from which the goods were made.

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