United States: Deceptive Marks Always Start Off With Two Strikes Against Them

Applicant applied for the mark BLAZING SILKS for a variety of clothing products. Applicant also made clear that its products were not made from silk.

FIRST STRIKE: Had Applicant's products been made from silk, the USPTO would have deemed the word "silk" to be merely descriptive and would have required Applicant disclaim "silk" apart from the mark as shown. Note that Applicant could have secured a registration for BLAZING SILKS, but with "silks" disclaimed.

SECOND STRIKE: Because Applicant's clothing products are not made of silk, the Trademark Examiner alleged the mark was unregistrable because it was deceptive...deceptive because the clothes were not made of silk...and because inclusion of the word "silk" would deceptively cause consumers to conclude the products were indeed made from silk. Note that the non-deceptive "blazing" portion of the BLAZING SILKS does not save the registration...., a significant difference between a descriptiveness and deceptiveness refusal.

This case is interesting because it provides several examples of marks that are deceptive, on the one hand, and otherwise deceptive marks rendered registrable with only a slight change, on the other hand. Examples are:

WHITE JASMINE: deceptive for tea that did not include white tea.

SUPER SILK & SILKEASE: deceptive for clothing not made of silk.

ORGANIK: deceptive for clothing not made from cotton that is neither organically grown nor free of chemical processing/treatment.

TEXHYDE: deceptive for synthetic fabric.

However, when the connotation of marks, taken as a whole, stop short of deceiving consumers, the marks may be registrable. For example: COPY CALF for wallets and billfolds was found not to be deceptive because the mark was an obvious play on the expression "copycat."

Also, tweaking the otherwise deceptive mark BLAZING SILKS to BLAZING SILKY would have avoided a holding of deceptiveness because "silky" implies that a non-silk material none the less feels like silk.

Another example: while using GOLD in a mark for jewelry not made of gold would be deceptive, using the term GOLDEN would most likely escape a deceptiveness refusal because "golden" is generally understood to be gold-like, but not actual gold.

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