The Board upheld a Section 2(a) deceptiveness refusal of the proposed mark SMART SUTURE for "bandages for surgical use for skin wounds having mechanical hooks that penetrate the skin on either side of the wound for attachment to the skin." The Board found that "sutures" and "bandages" are separate and distinct products, that the term SUTURE misdescribes the goods, that purchasers would believe the misdescription, and that the misdescription is material to the purchasing decision. In re BandGrip, Inc., Application Serial No. 88265665 (October 20, 2021) [not precedential] (Opinion by Judge Marc A. Bergsman).
Under Section 2(a), a mark must be refused registration as deceptive if:
- (1) it consists of or comprises a term that misdescribes the character, quality, function, composition, or use of the goods;
- (2) prospective purchasers are likely to believe that the misdescription actually describes the goods; and
- (3) the misdescription is likely to affect the purchasing decision of a significant or substantial portion of relevant consumers.
Furthermore, a mark may be deceptive even if only a portion of the mark is deceptive.
The AMERICAN HERITAGE DICTIONARY defines "suture" as, inter alia, "the fine thread or other material used surgically to close a wound or join tissues or the stitch so formed." The MERRIAM-WEBSTER DICTIONARY defines "bandage" as follows: 1) a strip of fabric used especially to cover, dress, and bind up wounds 2) a flexible strip or band used to cover, strengthen, or compress something." Internet evidence confirmed that sutures and bandages are separate and distinct products. There was minimal evidence "that anyone uses sutures to refer to bandages or vice versa."
Moreover, applicant's own website compares its product to sutures. In sum, "Applicant's product is 'a strip of fabric used especially to cover, dress, and bind up wounds,' not 'the fine thread or other material used surgically to close a wound or join tissue.'"
Applying the Section 2(a) deceptiveness test, the Board found that:
- (1) the mark SMART SUTURE consists of or contains a misdescription of the goods because a "suture" is not a "bandage."
- (2) Moreover, "because doctors, nurses and other caregivers use both sutures and bandages for wound care and they may use them together, Applicant's use of 'sutures' in its mark is not only false but is believable and would mislead consumers into thinking that the goods associated with the mark are sutures."
- (3) The record evidence convinced the Board that "the type of material used bind or close wounds is material to the purchasing decision of a significant portion of the relevant consumers."
All three prongs of the test having been met, the Board affirmed
the refusal to register.
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