SIKSILK refused trademark registration because clothing contained no silk. In re Monkey IP Limited

SIKSILK refused trademark registration because clothing contained no silk. In re Monkey IP Limited

A trademark is a something that a producer of a product uses to distinguish its products from competitors.  Trademark holders are granted the right to exclude others from placing the trademark on products not produced by the trademark holder.  Protection for a trademark begins merely by using a trademark in commerce.  A trademark can be registered in the United States to strengthen the rights associated with the trademark, however, registration is not a prerequisite to begin using a trademark .

The motivation behind trademark law is to protect consumers, not to reward producers.  Trademark law is intended to prevent consumer confusion and protect consumers from inferior quality products.  For that reason a trademark which is likely to deceive or trick consumers cannot be registered as a trademark.

Under Section 2(a) of the Trademark Act, an application to register a trademark must be refused if a mark consists of or comprises deceptive matter. 15 U.S.C. § 1052(a).  A deceptive mark cannot be registered on the Principal or Supplemental Register, and neither acquired distinctiveness nor a disclaimer of the deceptive matter can make it registrable.

The test for determining whether a trademark is deceptive has three factors:

(1) Is the term misdescriptive of the character, quality, function, composition or use of the goods?

(2) If so, are prospective purchasers likely to believe that the misdescription actually describes the goods?

(3) If so, is the misdescription likely to affect the purchasing decision of a significant portion of relevant consumers?

A trademark may be found deceptive on the basis of a single deceptive term that is embedded in a larger mark.  However, the deceptiveness of a single term can be negated by the impression of the whole trademark.  This means that whether a term is considered deceptive strongly depends on the evidence a trademark applicant presents during the trademark application process.  It is helpful to study case law to understand exactly when a trademark is consider deceptive.

In re Monkey IP Limited, Serial No. 88265123 (TTAB 2020) is an example of a case where a trademark which used slang was  refused registration because the USPTO found it deceptive.

The trademark in question is SIKSILK.  Monkey IP Limited filed a trademark application for clothing.   The term SIKSILK implies that the trademark would be used to brand clothing made of silk fiber, however the applicant acknowledged during the application examination that the clothing would probably not be made from silk.

The Trademark Examining Attorney has refused registration of the trademark under Section 2(a) of the Trademark Act, 15 U.S.C. § 1052(a), on the ground that it is deceptive when used in connection with the identified goods.  The applicant appealed the refusal to the Trademark Trial and Appeal Board.

On appeal  the applicant asserted that silk has an alternative slang meaning, i.e. “very good” therefore consumers would not be deceived into thinking that products were actually made of silk fiber.  To prove its point applicant submitted screen shots of several online dictionaries which gave alternative slang definitions for silk.  In its decision the TTAB explained that for a term to misdescribe goods, the term must be merely descriptive of a significant aspect of the goods which the goods could plausibly possess but in fact do not.

The TTAB noted that the definition of a word depends on how relevant purchasers define a word.  In the case of clothing the general public are relevant purchasers.  The applicant cannot limit relevant purchasers to a particular demographic who may be aware of the slang definitions of silk.  The TTAB did note that SIK is phonetically equivalent to SICK which is generally accepted as a slang term for “very good”.  However the combination of SIKSILK was not sufficient to prevent the mark from being perceived as the misdescriptive term SILK.

The TTAB affirmed the refusal because applicant failed to demonstrate that prospective purchasers would regard SIKSILK as conveying a double meaning.

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