New York Trademark Attorney Blog
In two recent precedential decisions of the Trademark Trial and Appeal Board (the “Board”), it was determined that the proposed trademark CLEAR for footwear, lingerie, and other related clothing items and for purses and other types of handbags was deceptively misdescriptive of the goods. See In re Dolce Vita Footwear, Inc., 2021 USPQ2d 478 (TTAB 2021) [precedential] and In re Dolce Vita Footwear, Inc., 2021 USPQ2d 479 (TTAB 2021) [precedential]. See our webpage entitled, Trademark Application Refusal Based On Descriptiveness and Deceptiveness, for more details on deceptively misdescriptive refusals. It should be noted that the Examining Attorney first refused the application based on the grounds of the mark being merely descriptive of the goods. Once the Applicant raised the issue that its goods did not have features that could be described as clear or transparent, the Examining Attorney then refused the application on the alternative ground that the proposed mark is deceptively descriptive of the goods. In the final office action, both 2(e)1 refusals were maintained, and the id was amended to exclude “transparent goods”. The Applicant filed an appeal.
It is important to keep in mind that the Examining Attorney’s primary objective is to protect the public from confusion or deception. Based on use of Dolce Vita Footwear Inc.’s (Applicant’s) proposed trademark CLEAR for apparel, bags, and footwear the Examining Attorney argued that the public will believe that the branded goods are transparent or clear. The determination that the mark is misdescriptive is based on evidence showing it is common in the fashion industry to have clear footwear, clothing, and bags even though Applicant amended the id to exclude transparent goods.
The Examining Attorney submitted definitions for the term “Clear”, screenshots from the Applicant’s website showing descriptive use of the word “Clear”, and webpages from competitors’ websites in the fashion industry. These screenshots demonstrated use of the term “Clear” in conjunction with features such as transparent straps or heels on footwear or features of lingerie, skirts, dresses or bags. For the second prong of the test, the “reasonably prudent consumer” test is applied.
Under trademark law, a mark is deceptively misdescriptive if it: (1) misdescribes a characteristic, feature, function or quality of the goods or services and (2) consumers would be likely to believe the misrepresentation. See In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988). Regarding the first prong of the test, a trademark is misdescriptive if it could be merely descriptive of the goods based on other goods in the industry possessing the feature named in the mark, but the goods do not have this feature. See In re Hinton, 116 USPQ2d 1051, 1052 (TTAB 2015) (citing In re Shniberg, 79 USPQ2d 1309, 1312 (TTAB 2006). The Board held that the dictionary definition of “Clear” and the third-party website evidence convinced it that consumers will perceive the mark CLEAR as describing a feature of the footwear, clothing, or bags such as transparent or “clear,” accents. Applicant’s restriction of the id to exclude transparent goods could not avoid a finding of deceptively misdescriptive. Moreover, consumers would not be aware of the restricted identification, and the restriction would not control public perception.
The Applicant did not submit evidence to prove there were alternate meanings for the term “Clear”. Applicant argued that upon inspection, a consumer could visibly see the goods did not have clear elements, but the Board was not persuaded by this line of reasoning. The Board countered by stating that this logic does not negate the consumers’ understanding before they inspect the goods, or if they encountered the mark by word of mouth, in social media or in print without an image of the goods. In the end, the Board affirmed both refusals for footwear, lingerie, related apparel items, various types of bags and business cards and credit card cases on the grounds that the mark was deceptively descriptive under Section 2(e)(1) of the Trademark Act. For more information on this topic see our webpage entitled, Common Grounds For Refusal Of A Trademark. If you still have inquiries, please contact the firm for a courtesy consultation.