More clarification on deceptive and deceptively misdescriptive trademarks.

In previous posts, I discussed deceptive and deceptively misdescriptive trademarks. (On Deceptive and Deceptively Misdescriptive Trade Names, Deceptive and Deceptively Misdescriptive Marks Clarified.) Trademark Examiners at the United States Patent and Trademark Office (USPTO) decide whether a mark is deceptive or deceptively misdescriptive. Deceptive marks can never be registered with the USPTO. Deceptively misdescriptive marks can be registered with the USPTO upon secondary meaning.

The line between deceptiveness and deceptive misdescriptiveness is thin. Different examiners can come up with different results when faced with the same marks. Examiners are taught to refuse registration on both grounds when they are unsure if a mark is deceptive or deceptively misdescriptive. The materiality of the misdescription is what separates a deceptive mark from a deceptively misdescriptive one. Materiality depends on how consumers value the characteristic of the good or service being misrepresented.

Examiners look at objective factors in determining materiality. Trademark Manual of Examining Procedure (TMEP) 1203.02(d) (2012). Material factors are those on which consumers objectively base their purchasing decisions. If a trade name suggests superior quality, health benefits, enhanced performance or function, or difference in price, it is deceptive. Id.

"Gold" in a trade name describing non-gold jewelry, is deceptive. TMEP 1203.02(a). Fake gold jewelry marketed as real gold jewelry suggests superior quality. "Hide," used in connection with synthetic fabric products, is also deceptive. Id. "Lamb" is deceptive when used in connection with fake lambskin vehicle seat covers. "Hide" and "Lamb" also suggest superior quality when connected with the goods in the two previous examples.

A mark in commerce today that might be deceptively misdescriptive is "Muscle Milk," the protein drink and powder. The mark misdescribes the goods to which it relates, because there is no milk in the product. If the misdescription is likely to lead consumers to believe that there is milk in the protein drinks, then it would be deceptively misdescriptive. "Muscle Milk" is not a deceptive trademark, because there is a federal registration on the mark. But if the deceptive misdescription of "Muscle Milk" was a material factor in consumers' decisions to purchase the drink, it would be deceptive.

The "Muscle Milk" mark was first used in commerce in 2001, and the applicant filed for federal registration in 2003. So, there was time for the mark to gain secondary meaning. It is also not deceptive because consumers do not base their decision to buy protein drinks on the presence or absence of milk in the product. "Milk" in the mark but not in the product does not suggest superior quality, or any other objective factor on which consumers base a purchasing decision. If it did suggest such an objective factor, then it would be a deceptive mark.