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Deceptive OFFICIAL Jekyll Island Website

Posted by James Juo | Sep 13, 2023 | 0 Comments

A deceptive trademark cannot be registered on either the Principal or Supplemental registers. 15 U.S.C. § 1052(a); 15 U.S.C. § 1091.

Whether a trademark is deceptive is based on the identification of goods and/or services. See In re ALP of S. Beach Inc., 79 USPQ2d 1009, 1019 (TTAB 2006) (“Registrability of a mark is always considered in conjunction with the identified goods or services, for an applicant cannot obtain rights in a mark in the abstract, only in connection with specified goods or services.”). “It is well established that a mark may be found deceptive on the basis of a single deceptive term that is embedded in a larger mark.” In re White Jasmine LLC, 106 USPQ2d 1385, 1391 (TTAB 2013).

The Federal Circuit has established a three-part test for determining whether a mark is deceptive pursuant to Section 2(a):

  1. Is the term misdescriptive of the character, quality, function, composition or use of the goods or services?
  2. If so, are prospective purchasers likely to believe that the misdescription actually describes the goods or services?
  3. If so, is the misdescription likely to affect the decision to purchase?

Hoover Co. v. Royal Appliance Mfg. Co., 238 F.3d 1357, 57 USPQ2d 1720, 1723 (Fed. Cir. 2001) (citing In re Budge Mfg. Co., Inc., 857 F.2d 773, 8 USPQ2d 1259, 1269 (Fed. Cir. 1988)).

Not So OFFICIAL Website

Stratatomic LLC, owns a Supplemental Register registration for the standard-character mark THE OFFICIAL WEBSITE OF JEKYLL ISLAND in Class 35 for “promoting business and tourism in the Jekyll Island area” that was issued as U.S. Registration No. 6044377 on April 28, 2020.

Jekyll Island is a barrier island off the southeastern coast of Georgia that has been owned by the State of Georgia since 1947.

The Jekyll Island-State Park Authority petitioned to cancel this trademark registration for THE OFFICIAL WEBSITE OF JEKYLL ISLAND arguing, among other grounds, deceptiveness.

Stratatomic admitted that it was not affiliated with the State of Georgia or the Jekyll Island-State Park Authority. But Stratatomic argued that “it is not clear nor determinable what exactly ‘official' means nor who is in a position to define it or deem it so”; the word “is completely subjective and has several meanings and interpretations, [and] can be a noun or an adjective.”

The TTAB found this argument lacked merit. Jekyll Island-State Park Authority v. Stratatomic LLC, Cancellation No. 92074348 (TTAB Sept. 5, 2023).

[T]he fact that the word “official” has additional meanings in different contexts is not controlling. See In re Tapco Int'l Corp., 122 USPQ2d 1369, 1372 (TTAB 2017) (“[D]eceptiveness … is not considered in the abstract” but rather “must be determined in relation to the goods [or services] for which registration is sought. Therefore, the fact that a term may have different meanings in different contexts is not controlling.”).

            We find that the term “OFFICIAL” in Respondent's mark (THE OFFICIAL WEBSITE OF JEKYLL ISLAND) misdescribes the character of its website services because it connotes that such services are provided with official permission and/or are approved by the government or by someone in authority such as by Petitioner, “a legislatively-created state authority to oversee and manage Jekyll Island, a state park,” when in fact they are not.

***

            It is common knowledge that consumers are interested in the “official” or authorized version of things. Given that Jekyll Island is a state park run by a governmental authority (Petitioner), consumers naturally will want to get the “official” take on the rules and regulations concerning the island during their visit and island-sponsored events. Respondent's mark suggests that Respondent's website has the seal of government approval and thus may have accurate information (whether that, in fact, is true). We therefore find that the misdescription in Respondent's mark is likely to affect the purchasing decision of consumers to use Respondent's website services

Accordingly, the TTAB granted the petition for cancellation on the ground of deceptiveness under Section 2(a).

Thomas P. Howard, LLC is experienced in trademarks 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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