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Posted by James Juo | Mar 17, 2023 | 0 Comments

A trademark is deceptive under Section 2(a) 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.

The test for deceptive misdescriptiveness refusal under Section 2(e)(1) is the same as the first two prongs of the deceptiveness test. See In re White Jasmine LLC, 106 USPQ2d 1385, 1395 (TTAB 2013).

Notably, a deceptive misdescriptiveness refusal under Section 2(e)(1) may be overcome by proof of acquired distinctiveness, but not a deceptiveness refusal under Section 2(a).

ROSE PETALS for Dietary Supplements

The TTAB recently found that the proposed mark ROSE PETALS for “Dietary supplements in capsule form not containing rose petals as an ingredient” was deceptive under Section 2(a) and, alternatively, deceptively misdescriptive under Section 2(e)(1). In re Intimate Science, Ser. No. 90123272 (TTAB Mar. 13, 2023).

The identified goods admittedly did not contain rose petals as an ingredient. Thus, there was no dispute that the ROSE PETALS mark misdescribed the goods under the first prong of the deceptive and deceptively misdescriptive tests.

As to the second prong of the deceptive and deceptively misdescriptive tests, however, the applicant argued that consumers would not take the reference literally because “rose petals conjure the image of decoration or romance.” Internet search results showed that rose petals are commonly used as decorations at weddings and the like. But the TTAB noted that the relevant meaning of rose petals was in the context of applied-for goods, and not in the abstract. See In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259, 1261 (Fed. Cir. 1988) (where goods of the type at issue “can be and are made from” the material at issue, this creates an inference that the second prong of the deceptiveness test is satisfied).

Instead, the TTAB relied on website evidence of dietary supplements containing rose petals.

Given consumer exposure to rose petal supplements as shown in the record, supplement consumers would take a reference to ROSE PETALS for supplements literally and believe that Applicant's “ROSE PETALS” supplements contain that ingredient when, according to Applicant's identification of goods, they do not.

As for materiality under the third prong of the deceptiveness test, the TTAB held that “whether a supplement contains rose petals would be material to the purchasing decision of a material portion of the relevant consumers” because of the perceived health benefits. See In re Miracle Tuesday, LLC, 695 F.3d 1339, 104 USPQ2d 1330, 1334 (Fed. Cir. 2012) (the test for materiality incorporates a requirement that a significant portion of the relevant consumers be deceived); In re E5 LLC, 103 USPQ2d 1578, 1583 (TTAB 2012) (materiality established based on “important and desirable health benefits” of copper as a supplement ingredient).

The trademark attorneys at Thomas P. Howard, LLC enforce trademarks or defend against infringement nationwide including in Colorado.

About the Author

James Juo

James Juo is an experienced intellectual property attorney. He has successfully litigated various intellectual property disputes involving patents, trademarks, copyrights, and trade secrets. He also has counseled clients on the scope and validity of patent and trademark rights.


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