US Trade marks: Clarifying the test for deceptiveness

December 08 2017

The USPTO's Trademark Trial and Appeal Board (TTAB) issued a precedential decision in In re Tapco International Corporation in which it clarified the test for determining whether a mark is deceptive. The USPTO Examiner issued a refusal to register trade mark applications filed by Tapco for the marks KLEER ADHESIVES (covering plastic building products) and KLEER MOULDINGS and KLEER TRIMBOARD (each of which covered building materials made of wood) on the basis that such marks were deceptive and Tapco appealed such refusal to the TTAB.

Section 2(a) of the Trademark Act provides that an applied-for mark must be refused registration if it is deceptive of a feature or an ingredient of the identified goods. Since a claim of deceptiveness serves as an absolute bar to registration, an applicant cannot overcome such a refusal by claiming acquired distinctiveness. To determine whether a mark is deceptive, trade mark tribunals apply a three part test which requires that the following criteria are met: "(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; and (3) if so, is the misdescription likely to affect the purchasing decision of a significant portion of relevant consumers."

To support the refusal to register, the Examiner took the position that the term "KLEER" in the marks is the phonetic equivalent of "clear" which is misdescriptive of Tapco's adhesive products since such products are not transparent. The TTAB noted that it "is settled that the phonetic equivalent of a deceptive term is also deceptive." Tapco argued that the term "clear" has a variety of different meanings but the TTAB was not persuaded, holding that deceptiveness "is not considered in the abstract" and, instead, "must be determined in relation to the goods for which registration is sought." The TTAB held that the mere fact that a term may have different definitions in different contexts is not controlling.

With respect to the KLEER ADHESIVES mark, the TTAB agreed with the Examiner on the second and third prongs of the test. Specifically, the TTAB held that prospective purchasers were, in fact, likely to believe the misdescription in the applied-for mark because other manufacturers provide adhesives that were, in fact, clear. Similarly, since the record demonstrated that clear adhesives have important advantages over non-transparent adhesives, the TTAB found that whether an adhesive was clear would be material to a consumer's purchasing decision.

Therefore, the TTAB affirmed the refusal to register the KLEER ADHESIVES mark. The TTAB did, however, overturn the refusal to register the KLEER MOULDINGS and KLEER TRIMBOARD marks. The distinction made by the TTAB turned on the identification of goods covered by the three marks. Whereas the record showed that the term “Clear” has an understood meaning when used in connection with wood, it did not show how prospective customers would understand such term when used in connection with synthetic products.

This decision is instructional for parties seeking to register a mark – or a phonetic equivalent of a mark – that may be deceptive in certain contexts but not others.