A deceptively misdescriptive trademark (as opposed to a deceptive trademark) is only eligible for registration with the United States Patent and Trademark Office (USPTO) on the Principal Register if it has acquired distinctiveness or “secondary meaning” in the minds of consumers. Otherwise, a deceptively misdescriptive trademark is only entitled to registration on the Supplemental Register. I encourage you to read my article titled “Supplemental Register vs. Principal Register – What is the Difference?” to learn more about the important distinctions between the two registers maintained by the USPTO.
Is My Trademark Deceptively Misdescriptive?
How do you figure out whether your trademark is deceptively misdescriptive or not? Well, the USPTO uses the following test to determine whether a trademark is deceptively misdescriptive:
- Does the trademark misdescribe something about the products or services recited in the trademark application?
- If so, is a purchaser likely to believe that the misdescription actually describes the products or services?
If the answer to both of these questions is “yes,” then the USPTO will refuse registration of your trademark on the Principal Register on the basis that it’s deceptively misdescriptive. If you file a trademark application seeking to register a deceptively misdescriptive trademark, the USPTO will issue a trademark office action explaining why it believes your mark is deceptively misdescriptive.
Here are Two Examples
Let’s pretend you want to register the word RED as a trademark for dish washing soap. However, your dish soap is actually blue in color. Would the USPTO find your trademark to be deceptively misdescriptive? Well, RED certainly misdescribes your products in that your dish soap is actually blue and not red. So, the first prong of the test is satisfied. With regard to the second prong, consumers are likely to believe that your dish soap is red because they are used to encountering dish soaps of all different colors, including the color red. Therefore, RED is a deceptively misdescriptive trademark when used in connection with the advertising and sale of dish soaps that aren’t red in color.
A second example of a deceptively misdescriptive trademark would be RIVERFRONT RESTAURANT for a restaurant that is not located along a river. Why? First, RIVERFRONT RESTAURANT misdescribes the services because it incorporates the word “riverfront” even though the restaurant isn’t located along a river. And, second, consumers are likely to believe that the restaurant is situated along a river because there are plenty of other eateries throughout the United States that are located close to rivers. So, RIVERFRONT RESTAURANT wouldn’t be entitled to registration on the Principal Register if it was used in connection with a restaurant located in a desert.
How Can I Overcome a Deceptively Misdescriptive Rejection?
If the trademark examining attorney refuses registration of your mark on the basis that it’s deceptively misdescriptive, you essentially have four options to attempt to overcome the rejection:
- If you strongly believe that your trademark isn’t deceptively misdescriptive, you may submit evidence and arguments to try to persuade the trademark examining attorney to withdraw the rejection. If successful, the trademark examining attorney will approve your application and your mark will be published for opposition.
- If your trademark has been in substantially continuous use for at least the past five years, you can make a claim of acquired distinctiveness. If the trademark examining attorney accepts your claim of acquired distinctiveness, your application will be approved and your mark will be published for opposition.
- If only a portion of your trademark is deceptively misdescriptive, you may be able to enter a disclaimer of that portion of your trademark. If the trademark examining attorney accepts the disclaimer, your application will be approved and your mark will be published for opposition.
- You may amend your trademark application to seek registration of your mark on the Supplemental Register. Please note that an application filed under Section 1(b) (intent to use) isn’t eligible for registration on the Supplemental Register until an acceptable Amendment to Allege Use is filed.
Questions About Deceptively Misdescriptive Trademarks?
I’m experienced US trademark attorney Morris Turek. If you’re concerned that the trademark you want to register may be considered deceptively misdescriptive, or if you’ve received an office action indicating that your trademark application is being rejected because your mark is deceptively misdescriptive, please contact me at your earliest convenience for your 100% free consultation. You can reach me at (314) 749-4059, via email at firstname.lastname@example.org, or by submitting the contact form located toward the bottom of this page. I look forward to speaking with you soon.
Related Article: What is a Geographically Deceptively Misdescriptive Trademark?