USPTO refuses trademark application for CLEAR because products are not transparent. IN RE: DOLCE VITA

USPTO refuses trademark application for CLEAR because products are not transparent. IN RE: DOLCE VITA

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: DOLCE VITA FOOTWEAR, INC., Serial No. 88554722 (TTAB 2021) is an example of a trademark application which was denied because it was found to be deceptively misdescriptive of the products to which the trademark was applied.

In 2019 the applicant sought to register CLEAR as a trademark for products such as: “baggage tags; handbags; make-up bags sold empty; purses and wallets; tote bags; all-purpose sport bags; all-purpose carrying bags; business card cases; clutches; coin purses; credit card cases.”  During the registration process the applicant had a telephone conference with the examining attorney.  In the conference the applicant explained that the trademark was not descriptive because none of the products sold using the CLEAR trademark are transparent, and that consumers would not think their were buying a transparent product because the consumers would see the product at the time of purchase.

The Trademark Examining Attorney refused registration of Applicant’s mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the grounds that it is deceptively misdescriptive or, in the alternative, merely descriptive, of Applicant’s identified goods.  Applicant then appealed to the Trademark Trial and Appeal Board.

The TTAB found that Applicant’s restriction of its identification of goods to non-transparent or non-clear goods is sufficient to show (and in fact conclusively establishes) that the proposed CLEAR mark misdescribes a feature or attribute of the goods in that Applicant’s identified goods do not possess the characteristic of being “clear.”  The TTAB also found that consumers seeing the trademark CLEAR for baggage tags, cases, and various types of bags, are likely to believe that those goods are clear or transparent even though they are not.  The TTAB was not persuaded by Applicant’s argument that consumers would not be decived because they could inspect the goods at time of sale.  Because the products could be promoted by word of mouth, newspapers or social media, without pictures, pre-sale deception was likely.  Based on these findings the TTAB affirmed the refusal to register the trademark.

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