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
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
SUPER SILK & SILKEASE: deceptive for clothing not made of
ORGANIK: deceptive for clothing not made from cotton that is
neither organically grown nor free of chemical
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
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.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
Here is a technique for rapidly drafting claims, for a patent application. This is a brainstorming mechanism that works for one person, or two, or more, and uses a free-form drawing or diagram to both gather words and prompt writing.
The PTO launched the Post Prosecution Pilot Program, which affords patent applicants an attractive alternative to the procedures currently available for responding to "finally" rejected patent applications.
The second prong of the Alice test is commonly abbreviated as requiring an "inventive concept." Of course, that same nomenclature is used by many international patent laws as a synonym for nonobviousness.
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).