Section 2(a) Deceptiveness for Class 5 Goods (or other Classes)

Have you received a rejection on your trademark filing for deceptiveness?  We may be able to help.  Below is an excerpt of how the USPTO evaluates deceptiveness.

Potential deceptiveness under Trademark Act Section 2(a) frequently arises in connection with goods in International Class 5 (e.g., pharmaceuticals) because the nature of the goods often makes their composition or characteristics material to the average consumer’s decision to purchase. See, e.g., Bayer Aktiegesellschaft v. Stamatios Mouratidis, Opposition No. 91185473 (May 21, 2010) (not citable as precedent) (holding the mark ORGANIC ASPIRIN deceptive for “dietary supplements for human consumption,” where the supplements did not contain aspirin).  The class includes medicines, bandages, supplements, and other products used to treat diseases or conditions and/or promote health.  As indicated in Trademark Manual of Examining Procedure (TMEP) §1203.02(d)(i), a perceived health benefit from an ingredient or feature generally supports a presumption that the ingredient or feature is material to a consumer purchasing decision.

In re Budge Mfg. Co. Inc., 857 F.2d 773, 775, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988), aff’g 8 USPQ2d 1790 (TTAB 1987).  The first prong of the Budge test is met if the ingredient/attribute at issue is not or will not be present in the applicant’s goods.  This can be established by applicant’s own statements in the record or by extrinsic evidence from applicant’s website or elsewhere.  Misdescriptiveness related to an ingredient/attribute named in the mark must be considered regardless of whether the mark or portion of the mark that refers to the ingredient/attribute is unitary with other matter.  The unitariness exception to a disclaimer requirement does not apply to Section 2(a) deceptiveness.  For example, in the mark OMEGABLUE for “Medicinal plant extracts for pharmaceutical and medical use, namely, for the treatment of cardiovascular system diseases,” OMEGA, the shortened form of the name of the beneficial fatty acid Omega-3, must still be treated as potentially deceptive even though the mark is unitary.  Thus, as long as the mark still conveys the commercial impression of a reference to the ingredient/attribute, potential deceptiveness must be considered.

Do you think you have a good argument or do you want to discuss your options?  If you think we might be able to help, contact us today!