A misdescriptive mark is a mark that could describe a characteristic of the goods/services, but actually doesn’t. For example, if your mark were “Lightest Lead” for pencils, but there is no lead in the pencils, then the mark is misdescriptive, because lead can be a characteristic of a pencil.
In In re Spina Technology Corp., Serial No. 85456039 (November 15, 2013) [not precedential], the Trademark Trial and Appeal Board decided that the applicant’s trademark, “Blazing Silks,” was descriptive of its goods/services: apparel.
Applicant argued “that the words SILK and SILKS do not have the same meaning or commercial impression, and that the mark
BLAZING SILKS is therefore not deceptive.” In this connection, applicant asserted that the term “silks” has come to identify the brightly colored garments of a horse jockey or harness driver. Although applicant conceded that horse racing jerseys did at one time contain silk, the term “silks” has taken on a meaning of its own separate and apart from an indication of the fabric silk.
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Applicant sums up its position as follows:
The applicant is using the term SILKS in its mark BLAZING SILKS to evoke the image of a horse race (and a play on the famous movie BLAZING SADDLES), and it is in that way in which the applicant’s mark would be perceived. The public, in viewing
applicant’s mark, will not be deceived into believing the goods contain silk; rather, they will understand the meaning of SILKS,
and will associate applicant’s mark with jockeys and horse racing, and not with the fabric “silk.”
(Applicant’s Brief, p. 3).
In support of its argument, applicant submitted dictionary definitions of “silks.”
However, The Court of Appeals for the Federal Circuit has articulated the following test for whether a mark consists of or comprises deceptive matter:
(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?
(3) If so, is the misdescription likely to affect a significant portion of the relevant consumers’ decision to purchase?
In re Spirits Int’l, N.V., 563 F.3d 1347, 90 USPQ2d 1489, 1493 (Fed. Cir. 2009); In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d
1259, 1260 (Fed. Cir. 1988), aff’g 8 USPQ2d 1790 (TTAB 1987).
In this case, the Trademark Trial and Appeal Board took “silks” to be at its simplest form: material and fabric, which could be used in the goods the mark represents. Therefore, this is a misdescriptive mark because the silk is not really used in the clothing.
Does your mark comply with the Lanham Act? Did you get a trademark search? Yes, you would love to “trademark your name“, but there is much more to the strength of a trademark and the due diligence needed in order to register a proposed trademark .