Deceptive, misdescriptive, etc. marks

For these marks, ask:

  1. Does the term misdescribe the goods;
  2. Do consumers have a reasonable belief in the misdescription; and
  3. Is the misdescription material to consumer purchasing decisions.
TYPE OF MARK EXAMPLE  THREE-PART ANALYSIS REGISTRABLE?
DECEPTIVE

Section 2(a)

 LOVEE LAMB (car seat covers)
  1. Misdescription
  2. Consumers believe the misdescription
  3. The misdescription is material to purchasing decisions
 Not registrable
NONDECEPTIVELY MISDESCRIPTIVE APPLE (PCs and MP3 players)
  1. Misdescription
  2. Consumers do not believe the misdescription
  3. The misdescription is not material to purchasing decisions
 Inherently distinctive (either arbitrary or suggestive)
DECEPTIVELY MISDESCRIPTIVE

Section 2(e)(1)

 GLASS WAX (glass cleaner that does not contain wax)
  1. Misdescription
  2. Consumers believe the misdescription
  3. The misdescription is not material to purchasing decisions
 Registrable with secondary meaning
PRIMARILY GEOGRAPHICALLY DECEPTIVELY MISDESCRIPTIVE (PGDM)

Section 2(e)(3)

 OLD HAVANA (for rum not made in Cuba) Per CAFED In re Cal. Innov., the mark is not PGDM unless the geographic misdescription is material to consumers – this treats 2(e)(3) PGDMs the same as 2(a) deceptiveness. So the test is:

  1. Geographic misdescription
  2. Consumers believe the geographic misdescription
  3. The geographic misdescription is material to purchasing decisions
 Registrable if secondary meaning existed before effective date of NAFTA (12/8/93).

Not registrable if no secondary meaning or if the secondary meaning was acquired after the effective date of NAFTA.

Here’s another way of conceptualizing the concepts. This “Coggle” flowchart gives the basic analytic steps for descriptive, midescriptive, and deceptive marks. It does not address “primarily geographic deceptively misdescriptive marks,” which require further consideration of Lanham Act section 2(e)(3) and the In re California Innovations case.

You can also see a full-screen version of the Coggle here.

Revised Sept. 12, 2022