Deceptive Trademark

By Lia Kopin-Green
/
August 24, 2022

What is a Deceptive Trademark?

Deceptive trademarks, or deceptively misdescriptive trademarks, are marks that contain a component that is likely to mislead consumers. Federal law explicitly prohibits the registration of a trademark that “consists of or comprises deceptive matter.” A mark can mislead a consumer about a product or service’s quality, origin, intended use, and other characteristics. Deceptive trademarks are not eligible for registration with the United States Patent and Trademark Office (USPTO). 

Key Takeaways

  • Deceptive trademarks, also known as deceptively misdescriptive trademarks, contain components that misdescribe the product or service and are likely to mislead consumers.
  • If a trademark is deceptive, the United States Patent and Trademark Office (USPTO) will not register it.
  • An intellectual property attorney can help determine if your trademark will be considered deceptive.

Identifying Deceptive Trademarks

In order to determine if a trademark is truly deceptive, the USPTO applies the following test:

  1. Does the trademark misdescribe something about the product or service?
  2. If so, is it likely that a purchaser will believe that the misdescription accurately describes the product/service?
  3. If so, will the misdescription affect the consumer’s purchasing decision?

If the answer is “yes” to all of these questions, your trademark will be rejected. 

The 3rd question is considered the most important prong of the deceptive trademark test. Although this is not an extensive list, the following factors are often taken into account when determining whether a misdescription would actually affect a customer's decision to purchase a product or service: 

  • Superior Quality: the product or service with the misdescriptive term are higher in quality than similar goods or services without misdescriptive terms.
  • Health Benefit: the misdescription establishes a health benefit.
  • Price Difference: evidence of a difference in price between the misdescriptive product or service and other similar products or services.
  • Enhanced Performance or Function: evidence that the misdescriptive product or service possesses enhanced performance or function
  • Religious Practice or Social Policy: failure to comply with criteria of a religious practice or social policy, leading to deceptiveness.

Deceptive Trademark Example

The following example will provide a better understanding of what constitutes a deceptive trademark.

Assume you want to register the word PINK as a trademark for your new ice cream manufacturing business, but the ice cream you sell is actually green in color. The trademark misdescribes your product, so the first prong is already fulfilled. The purchaser is likely to believe that the ice cream will be pink, so the second part of the test is satisfied as well. In regards to the third prong, a consumer may choose to buy your ice cream because it is pink, only to be disappointed when it turns out to be green. Therefore, the USPTO is likely to refuse registration of this trademark on the basis that it is deceptive.

Bottom Line

In order to prevent trademarks from misleading the public, the USPTO has strict guidelines in place. Maintaining compliance with these highly specific and technical laws and rules can be challenging, but it is crucial if you want to register your trademark. To avoid delays in registration due to rejections from the USPTO, it is highly advised to work alongside a skilled intellectual property attorney that will help you steer clear of deceptively misdescriptive language.

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