What is a Deceptive Trademark for Purposes of Trademark Registration?

Deceptive Trademark

A deceptive trademark (as opposed to a deceptively misdescriptive trademark) is not eligible for registration with the United States Patent and Trademark Office (USPTO) under any circumstances.  The Lanham Act (which is the law that governs federal trademark registration) specifically prohibits the registration of a trademark that “consists of or comprises deceptive matter.”  This means that the USPTO is legally obligated to refuse registration of your trademark if it determines that your mark is wholly deceptive or includes a deceptive term.

Is My Trademark a Deceptive Trademark?

How do you know if your trademark is deceptive?  Well, the USPTO uses the following test to determine whether a trademark consists of or comprises deceptive matter:

  1.   Does the trademark misdescribe something about the product/service?
  2.   If so, is a purchaser likely to believe that the misdescription actually describes the product/service?
  3.   If so, is the misdescription likely to affect a purchaser’s decision to buy the product/service?

If the answer to each of these questions is “yes,” then the USPTO will refuse registration of your trademark on the basis that it’s deceptive.  If you file a trademark application seeking to register a deceptive trademark, you’ll receive a trademark office action explaining why the USPTO believes that your trademark is deceptive and ineligible for registration.

Deceptive Trademark Examples

Let’s say that you want to register the name SHOOTING STAR ORGANIC as a trademark for dietary supplements.  However, your dietary supplements are not organic.  Would the USPTO find your trademark to be deceptive?  Well, SHOOTING STAR ORGANIC clearly misdescribes your products in that it comprises the word “organic” but your supplements are not organic.  So, the first prong of the test is satisfied.  As for the second prong, consumers are likely to believe that your dietary supplements are organic because consumers are used to encountering a wide variety of supplements sold by various companies that are, in fact, organic and are labeled as such.  With regard to the third prong, the misdescription of your dietary supplements as “organic” is likely to affect a consumer’s decision to buy your supplements because a significant number of consumers specifically seek out organic dietary supplements when shopping for supplements.  Therefore, SHOOTING STAR ORGANIC is a deceptive trademark when used in connection with the advertising and sale of dietary supplements that aren’t organic.

Another example of a deceptive trademark would be TREEHOUSE VEGAN RESTAURANT for a restaurant that doesn’t primarily serve vegan food.  Why?  First, TREEHOUSE VEGAN RESTAURANT misdescribes the services because it comprises the word “vegan” even though the restaurant doesn’t primarily offer vegan dishes.  Second, consumers are likely to believe that the restaurant primarily serves vegan food because there are many other restaurants that are, in fact, vegan and publicly advertise themselves as providing vegan food.  Finally, the misdescription of the restaurant as “vegan” is likely to affect a consumer’s decision to eat at the restaurant because many individuals prefer and seek out vegan food for health and environmental reasons.  So, TREEHOUSE VEGAN RESTAURANT would not be entitled to registration if it was used in connection with a non-vegan restaurant.

Questions About Deceptiveness?

I’m US trademark attorney Morris Turek.  If you’re wondering whether the name you want to register constitutes a deceptive trademark, or if you’ve received an office action indicating that your trademark is being refused registration on the basis that it’s deceptive, please don’t hesitate to contact me right away for your complimentary consultation.  You can call me at (314) 749-4059, send me an email at morris@yourtrademarkattorney.com, or fill out the contact form located near the bottom of this page.  I look forward to speaking with you soon.