The ‘Deceptively Misdescriptiveness’ Rejection
Deceptively Misdescriptiveness – There are many reasons your trademark application may be denied. One of the more unique reasons is something called “deceptively misdescriptiveness.” Your first question is probably “what does that even mean?” A mark is considered deceptively misdescriptive if it describes an ingredient, quality, characteristic, function, or feature of the goods and or services and the description conveyed by the mark is both false and plausible. Trademark Manual of Examining Procedure §1209.04. For example, the mark “Pink Fur” would be considered deceptively misdescriptive of the goods if the goods sold are a line of hair care products, which are neither pink, nor contain any fur.
When the US Patent and Trademark Office (“USPTO”) considers whether a mark is deceptively misdescriptive, it applies a two-part test. First, the USPTO examiner looks at whether the mark misdescribes an ingredient, characteristic, quality, function, feature, composition, or use of the goods and/or services. Second, if they find that the first part is true, then the USPTO examiner asks whether consumers would be likely to believe the misrepresentation. In short, they consider first if the mark is descriptive of some element or part of the goods or services, and if so, whether such a mark would be misrepresentative of the goods or services being sold. So “Pink Fur” would be descriptive, but it would be misrepresentative of the goods if the products sold are hair care products and would be denied registration under this two-part test.
In sum, if your goods do not contain what the mark alleges they contain, then your mark might misdescribe the goods: i.e. deceptively misdescriptiveness. And if consumers are likely to believe the misdescription and think that the mark is descriptive of the product or service they are purchasing, then your mark will be deemed deceptively misdescriptive and your trademark application will be denied.
So, what can you do if the examining attorney denies your trademark application for “deceptively misdescriptiveness”? According to the US Patent and Trademark Office, marks that have been refused registration due to deceptive misdescriptiveness pursuant to Trademark Act Section 2(e)(1) may be registerable on the Principal Register under Section 2(f) by showing the mark has acquired distinctiveness, or the mark may be registerable on the Supplemental Register.
Registration on the Supplemental Register is limited to marks that are in use in the United States and does not require any distinctiveness. If the examining attorney at the USPTO believes that the mark has the potential to identify the source of the goods or services with the applicant, they may offer to allow the applicant to amend the application to the Supplemental Register rather than the Principal Register. Most importantly, it is a means of protecting your mark while distinctiveness is acquired. However, registration on the Supplemental Register does not automatically make distinctive marks eligible for registration, nor does it achieve incontestability or give prima facie evidence of ownership and use.
Nonetheless, if you think that your mark is not “deceptively misdescriptive,” you can still try to fight the refusal letter. Even though the application has been refused, you may also respond to the refusal by submitting evidence and arguments in support of the mark’s registration. Evidence includes a statement explaining whether the goods are or will contain, consist of, or be comprised of the characteristic that is allegedly misdescriptive, a sample of advertisements or promotional materials featuring the goods and/or a photograph of the identified goods, or samples of advertisements or promotional materials and a photograph of the identified goods, and a written statement describing, in detail, the nature, purpose, and channels of trade of the goods. Please note that merely stating that information about the goods or services is available on the applicant’s website is insufficient.
If you are successful in showing that your mark is not deceptively misdescriptive, either through evidence supporting your mark’s registration or through evidence of acquired distinctiveness, your mark will likely be registered on the Principal Register. If you are not successful, then you may consider registration on the Supplemental Register, or reapplying for registration once your mark has acquired distinctiveness.
No matter how you wish to proceed, we recommend you consult an attorney to best assess your options in moving forward as each situation is unique and what may apply to one situation may not apply to yours. Our office has handled many office actions, including one for deceptively misdescriptive rejections, most often when the applicant has used another non-attorney service for the initial submission. Feel free to contact us for any of your questions on correspondence from the USPTO, your trademark application, or other business and intellectual property matters.
There are many reasons your trademark application may be denied. One of the more unique reasons is something called “deceptively misdescriptiveness.” Your first question is probably “what does that even mean?” A mark is considered deceptively misdescriptive if it describes an ingredient, quality, characteristic, function, or feature of the goods and or services and the description conveyed by the mark is both false and plausible. Trademark Manual of Examining Procedure §1209.04. For example, the mark “Pink Fur” would be considered deceptively misdescriptive of the goods if the goods sold are a line of hair care products, which are neither pink, nor contain any fur.
When the US Patent and Trademark Office (“USPTO”) considers whether a mark is deceptively misdescriptive, it applies a two-part test. First, the USPTO examiner looks at whether the mark misdescribes an ingredient, characteristic, quality, function, feature, composition, or use of the goods and/or services. Second, if they find that the first part is true, then the USPTO examiner asks whether consumers would be likely to believe the misrepresentation. In short, they consider first if the mark is descriptive of some element or part of the goods or services, and if so, whether such a mark would be misrepresentative of the goods or services being sold. So “Pink Fur” would be descriptive, but it would be misrepresentative of the goods if the products sold are hair care products and would be denied registration under this two-part test.
In sum, if your goods do not contain what the mark alleges they contain, then your mark might misdescribe the goods. And if consumers are likely to believe the misdescription and think that the mark is descriptive of the product or service they are purchasing, then your mark will be deemed deceptively misdescriptive and your trademark application will be denied.
So, what can you do if the examining attorney denies your trademark application for “deceptively misdescriptiveness”? According to the US Patent and Trademark Office, marks that have been refused registration due to deceptive misdescriptiveness pursuant to Trademark Act Section 2(e)(1) may be registerable on the Principal Register under Section 2(f) by showing the mark has acquired distinctiveness, or the mark may be registerable on the Supplemental Register.
Registration on the Supplemental Register is limited to marks that are in use in the United States and does not require any distinctiveness. If the examining attorney at the USPTO believes that the mark has the potential to identify the source of the goods or services with the applicant, they may offer to allow the applicant to amend the application to the Supplemental Register rather than the Principal Register. Most importantly, it is a means of protecting your mark while distinctiveness is acquired. However, registration on the Supplemental Register does not automatically make distinctive marks eligible for registration, nor does it achieve incontestability or give prima facie evidence of ownership and use.
Nonetheless, if you think that your mark is not “deceptively misdescriptive,” you can still try to fight the refusal letter. Even though the application has been refused, you may also respond to the refusal by submitting evidence and arguments in support of the mark’s registration. Evidence includes a statement explaining whether the goods are or will contain, consist of, or be comprised of the characteristic that is allegedly misdescriptive, a sample of advertisements or promotional materials featuring the goods and/or a photograph of the identified goods, or samples of advertisements or promotional materials and a photograph of the identified goods, and a written statement describing, in detail, the nature, purpose, and channels of trade of the goods. Please note that merely stating that information about the goods or services is available on the applicant’s website is insufficient.
If you are successful in showing that your mark is not deceptively misdescriptive, either through evidence supporting your mark’s registration or through evidence of acquired distinctiveness, your mark will likely be registered on the Principal Register. If you are not successful, then you may consider registration on the Supplemental Register, or reapplying for registration once your mark has acquired distinctiveness.
No matter how you wish to proceed, we recommend you consult an attorney to best assess your options in moving forward as each situation is unique and what may apply to one situation may not apply to yours. Our office has handled many office actions, including one for deceptively misdescriptive rejections, most often when the applicant has used another non-attorney service for the initial submission. Feel free to contact us for any of your questions on correspondence from the USPTO, your trademark application, or other business and intellectual property matters.
There are many reasons your trademark application may be denied. One of the more unique reasons is something called “deceptively misdescriptiveness.” Your first question is probably “what does that even mean?” A mark is considered deceptively misdescriptive if it describes an ingredient, quality, characteristic, function, or feature of the goods and or services and the description conveyed by the mark is both false and plausible. Trademark Manual of Examining Procedure §1209.04. For example, the mark “Pink Fur” would be considered deceptively misdescriptive of the goods if the goods sold are a line of hair care products, which are neither pink, nor contain any fur.
When the US Patent and Trademark Office (“USPTO”) considers whether a mark is deceptively misdescriptive, it applies a two-part test. First, the USPTO examiner looks at whether the mark misdescribes an ingredient, characteristic, quality, function, feature, composition, or use of the goods and/or services. Second, if they find that the first part is true, then the USPTO examiner asks whether consumers would be likely to believe the misrepresentation. In short, they consider first if the mark is descriptive of some element or part of the goods or services, and if so, whether such a mark would be misrepresentative of the goods or services being sold. So “Pink Fur” would be descriptive, but it would be misrepresentative of the goods if the products sold are hair care products and would be denied registration under this two-part test.
In sum, if your goods do not contain what the mark alleges they contain, then your mark might misdescribe the goods. And if consumers are likely to believe the misdescription and think that the mark is descriptive of the product or service they are purchasing, then your mark will be deemed deceptively misdescriptive and your trademark application will be denied.
So, what can you do if the examining attorney denies your trademark application for “deceptively misdescriptiveness”? According to the US Patent and Trademark Office, marks that have been refused registration due to deceptive misdescriptiveness pursuant to Trademark Act Section 2(e)(1) may be registerable on the Principal Register under Section 2(f) by showing the mark has acquired distinctiveness, or the mark may be registerable on the Supplemental Register.
Registration on the Supplemental Register is limited to marks that are in use in the United States and does not require any distinctiveness. If the examining attorney at the USPTO believes that the mark has the potential to identify the source of the goods or services with the applicant, they may offer to allow the applicant to amend the application to the Supplemental Register rather than the Principal Register. Most importantly, it is a means of protecting your mark while distinctiveness is acquired. However, registration on the Supplemental Register does not automatically make distinctive marks eligible for registration, nor does it achieve incontestability or give prima facie evidence of ownership and use.
Nonetheless, if you think that your mark is not “deceptively misdescriptive,” you can still try to fight the refusal letter. Even though the application has been refused, you may also respond to the refusal by submitting evidence and arguments in support of the mark’s registration. Evidence includes a statement explaining whether the goods are or will contain, consist of, or be comprised of the characteristic that is allegedly misdescriptive, a sample of advertisements or promotional materials featuring the goods and/or a photograph of the identified goods, or samples of advertisements or promotional materials and a photograph of the identified goods, and a written statement describing, in detail, the nature, purpose, and channels of trade of the goods. Please note that merely stating that information about the goods or services is available on the applicant’s website is insufficient.
If you are successful in showing that your mark is not deceptively misdescriptive, either through evidence supporting your mark’s registration or through evidence of acquired distinctiveness, your mark will likely be registered on the Principal Register. If you are not successful, then you may consider registration on the Supplemental Register, or reapplying for registration once your mark has acquired distinctiveness.
Consult an Attoreny Today
No matter how you wish to proceed, we recommend you consult an attorney to best assess your options in moving forward as each situation is unique and what may apply to one situation may not apply to yours. Our office has handled many office actions, including one for deceptively misdescriptive rejections, most often when the applicant has used another non-attorney service for the initial submission. Feel free to call us at (714) 942-2225, or if after hours, contact us via email for any of your questions on correspondence from the USPTO, your trademark application, or other business and intellectual property matters.
