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BASIC ANALYSIS OF Nongeographic MISDESCRIPTIVE and DECEPTIVE MARKS
By…
BASIC ANALYSIS OF Nongeographic MISDESCRIPTIVE and DECEPTIVE MARKS By Professor Nathenson
STEP 1: DESCRIPTIVE OR MISDESCRIPTIVE.
Does a term about the character, quality, function, composition, or use of goods describe or misdescribe the goods?
MISDESCRIPTIVE.
MOVE ON TO STEP 2: REASONABLE BELIEF.
Are prospective purchasers likely to believe the misdescription applies to the goods?
YES, CONSUMERS ARE LIKELY TO BELIEVE THE MISDESCRIPTION
Then the term is deceptively misdescriptive and the analysis continues.
MOVE ON TO STEP 3: MATERIALITY.
Is the misdescription likely to affect a significant portion of the relevant consumers' decision to purchase?
YES. THEN THE DECEPTIVELY MISDESCRIPTIVE TERM IS ALSO DECEPTIVE AND BARRED FROM PROTECTION.
Ex. LOVEE LAMB for car seat covers that are not made out of lambskin.
See Lanham Act section 2(a)
NO, THE MISDESCRIPTION IS NOT MATERIAL TO CONSUMER PURCHASE DECISIONS.
Then the deceptively misdescriptive term is protectable, but only upon a showing of secondary meaning. The law treats it similarly to merely descriptive marks.
Ex. GLASS WAX for glass cleaner that doesn't contain wax.
See Lanham Act section 2(e)(1)
See also the sidebar to the left.
NO, CONSUMERS ARE NOT LIKELY TO BELIEVE THE MISDESCRIPTION.
Then the term is nondeceptively misdescriptive.
Some such marks may be arbitrary or suggestive and therefore inherently distinctive.
Ex. APPLE for computers that aren't made out of apples. (Arbitrary.)
Ex. COPPERTONE for suntan lotion that doesn't actually turn you into copper has been held to be suggestive. But in this framework, one might conclude that it is a nondeceptively misdescriptive mark that suggests the nature of the product (Suggestive).*
DESCRIPTIVE:
The mark is protectable upon a showing of secondary meaning.
Ex. SHARP for televisions with sharp images.
See Lanham Act section 2(e)(1)
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SIDEBAR: This Coggle does not consider the bar in Lanham Act section 2(e)(3) on deceptively misdescriptive marks that are also primarily geographic.