New York Trademark Attorney Blog
Yes there are differences between a refusal issued on deceptive grounds and one issued because the mark is deceptively misdescriptive. Under the Trademark Act, Section 2(a) a mark cannot register on either the Principal or the Supplemental Register if it is held to be deceptive. An example would be a mark that falsely describes the material content of a product. The following marks were held to be deceptive TEXHYDE AND SOFTHIDE for synthetic fabrics and imitation leather material. See Intex Plastics Corporation, 215 U.S.P.Q. 1045 1982 WL 52076 (TTAB 1982). Compare this finding with A.F. Gallun & Sons Corp., where it was held that the trademark COPY CALF was not deceptive for billfolds and wallets even though it was not made of leather because it was found to be a play on words. The rationale was that consumers would understand COPY CALF to be a pun related to the phrase copy cat insinuating the goods were made of imitation material.
The Federal Circuit has enunciated a test utilized to determine if matter is deceptive and thus not registrable at the United States Patent & Trademark Office:
(1) Is the term misdescriptive of the character, quality, function, composition or use of the goods?
(2) If it is misdescriptive, then would a potential consumer likely believe that the misdescription actually describes the goods?
To prove this prong of the test an Examining Attorney could produce evidence that consumers regularly encounter goods or services containing the characteristic alleged in the mark. For example, in a case where the mark was LOVEE LAMB for seat covers and the seat covers were not made of lambskin, the Examiner provided evidence that seat covers can be and sometimes are made of lambskin. In that case, the Examiner concluded that the mark LOVEE LAMB was deceptive for seat covers.