Jason H. Kasner
When choosing a new trademark or service mark, you need to be generally concerned with two things: (1) whether the new mark could be considered descriptive of the product or service it is intended for (i.e. descriptiveness); and (2) whether there are any trademarks or service marks in the marketplace so similar to the intended mark that consumers could be confused as to the source or origin of the goods or services (i.e. likelihood of confusion). While these considerations are critical, there are some other considerations that could also prevent registration of a new mark. For instance, what if the mark was not descriptive of the actual product or service it is intended for but descriptive of something else that the product or service lacks? In some cases, these ‘misdescriptions’ could be problematic and may even lead to a determination that the mark cannot be registered on the basis that it is deceptive under Section 2(a) of the Trademark Act.[1]
In a recent decision, the Trademark Trial and Appeal Board upheld a refusal to register the mark “P6 CHROME” for “dietary and nutritional supplements that do not contain chromium” in Class 5 (In re Woodbolt Distribution, LLC 2018 WL 1981349 (T.T.A.B. 2018)). The Board agreed with the Examining Attorney’s conclusion that the mark “misdescribes the goods as containing chromium, a substance some doctors say has health benefits” and confirmed the refusal to register under Section 2(a) of the Trademark Act. Despite arguing that the term “chrome” had multiple meanings not associated with chromium, per se, and that the term was intended to refer to the product’s metallic packaging, the Board determined that the presence of the term “chrome” would create consumer confusion and falsely suggest that the supplement contained chromium when, in fact, it did not.
The Board considered several factors, including dictionary definitions of the term “chrome,” the use of the term “chrome” (and variations thereof) in the marketplace for dietary supplements, whether consumers shopping for dietary supplements would believe that a product called P6 CHROME would contain chromium and finally, whether the misdescription would make the product more desirable to consumers. The Board determined that (i) the common definition of “chrome” can mean chromium; (ii) other competitors in the marketplace used the term “chrome” (or variations thereof) to market dietary supplements containing chromium (e.g. CHROME MATE, ULTRACHROME 500, AQUA CHROME); (iii) consumers were likely to believe a product called P6 CHROME contained chromium; and (iv) the suggestion that the product contained chromium did make the product more desirable to consumers of dietary supplements. The Board affirmed the refusal to register the mark P6 CHROME as deceptive under Section 2(a) of the Trademark Act.
Rejection on this basis is not common, but it is something that should be considered when contemplating a new mark. Look to your market – does the mark describe something consumers may want and expect the product (or service) to contain which it does not? If so, you may be inviting a deceptiveness challenge down the road. The resources spent trying to register a potentially deceptive mark may be better spent in selecting and developing a better, stronger mark. The time and resources lost in trying to argue around a deceptiveness objection is time lost building good will and market awareness for your brand if, ultimately, you must give up on a deceptive mark and choose an alternate brand. Relying on the expert guidance of a trademark attorney could prevent such an outcome. A good trademark attorney can help you avoid pitfalls at the early stages of the selecting and identifying a brand, saving your company resources and time, and allowing you to concentrate on building a strong brand from the outset.
[1] Section 2 of the Trademark Act states, in part, “No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—
(a) Consists of or comprises immoral, deceptive, or scandalous matter…”