Trademark Act Section 2(a) bars registration of a mark that “consists of or comprises ... deceptive ... matter.” 15 U.S.C. § 1052(a); see also In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259, 1262 (Fed. Cir. 1988) (“it is too well established for argument that a mark which includes deceptive matter is barred from registration and cannot acquire distinctiveness.”); R. Neumann & Co. v. Overseas Shipments, Inc., 326 F.2d 786, 140 USPQ 276, 278-79 (CCPA 1964); In re White Jasmine LLC, 106 USPQ2d 1385, 1391 (TTAB 2013); In re E5 LLC, 103 USPQ2d 1578, 1584 (TTAB 2012). 

The test for determining whether a mark is deceptive under Section 2(a) sets forth three requirements: 

1. 1. Does the mark consist of or comprise a term that misdescribes the character, quality, function, composition,
      or use of the goods?
   2. Are prospective purchasers likely to believe that the misdescription actually describes the goods? and
   3. Is the misdescription likely to affect the purchasing decision of a significant or substantial portion of relevant
      consumers?

Budge, 8 USPQ2d at 1260; see also In re Spirits Int'l, N.V., 563 F.3d 1347, 90 USPQ2d 1489, 1493, 1495 (Fed. Cir. 2009); In re Tapco Int'l Corp., 122 USPQ2d 1369, 1371 (TTAB 2017).

“Misdescriptiveness of a term may be negated by its meaning in the context of the whole mark inasmuch as the combination is seen together and makes a unitary impression.” Budge, 8 USPQ2d at 1261 (emphasis added); see also In re Simmons, Inc., 192 USPQ 331, 333 (TTAB 1976) (WHITE SABLE for “brushes used for artistic painting” held not deceptive because the “characteristic color of sable fur is black” and thus white sable must come from a fictitious animal that cannot deceptively represent brush hair from a real animal); A. F. Gallun & Sons Corp. v. Aristocrat Leather Prods., Inc., 135 USPQ 459, 460 (TTAB 1962) (holding COPY CALF, for wallets and billfolds of synthetic and plastic material made to simulate leather, not deceptive, noting that the mark, as an obvious play on the expression “copy cat,” suggested to purchasers that the goods were imitations of items made of calf skin); see also In re Sharky's Drygoods Co., 23 USPQ2d 1061, 1062 (TTAB 1992) (reversing refusal under Section 2(a) to register PARIS BEACH CLUB because in context, PARIS is part of an incongruous and humorous phrase, and would not be understood as the geographic origin of the goods).

The TTAB recently reversed a Section 2(a) refusal of a composite mark for "LEATHER MAN LTD. * ESSEX, CT" in an oval shape with an image of a sailing ship, for "Belts; Belts for clothing; Belts made of leather; Belts made out of cloth; Belts of textile; Fabric belts; Leather belts; Waist belts.” In re Brockway Ferry Corp DBA Leather Man Ltd., Ser. No. 90127025 (Sept. 3, 2024). The Examining Attorney had refused registration because “Leather” might be misdescriptive of the items in the identified goods that are not made of leather. But this this not consider the context of "Leather Man" in connection with "Essex, CT."

The TTAB noted that the origin story of the applied-for "LEATHER MAN LTD. * ESSEX, CT" mark calls to mind by the legend of the “old Leather [M]an, … a vagabond [who] was famous for the leather suit of clothes he wore” and who became "well-known" in the neighboring villages and towns of Essex, Connecticut. 

     When we consider the mark as a whole, the term “Leather” does not take on its ordinary meaning, but rather is used to evoke the imagery of the legend of the Leather Man indigenous to the Essex region of Connecticut. In other words, the “[m]isdescriptiveness of [the word leather] [is] negated by its meaning in the context of the whole mark” because the combination of “Leather Man,” along with the geographic location of “Essex, CT” and a sailing motif creates an entirely different “unitary impression.” Budge, 8 USPQ2d at 1261 (citing A.F. Gallun & Sons, 135 USPQ at 460). The Examining Attorney has improperly taken the word “Leather” out of context of the entire mark. The mark conveys the impression of a person, not a product component, by combining the words “Leather” and “Man.” We therefore find that “Leather” in Applicant's composite mark is not deceptively misdescriptive, and the applied-for mark, taken as a whole, is not deceptive under Section 2(a). The refusal to register Applicant's mark is under Section 2(a) is therefore reversed.

The TTAB also reversed a Section 2(d) refusal of an existing registration for a composite mark consisting of "LEATHER MAN" next to an image of a squatting man making leather from rawhide, for “Clothing made in whole or part of leather, namely, coats, jackets, belts, shoes, skirts, and ties.” 

     The goods are in-part identical, meaning that the second DuPont factor strongly favors a likelihood of confusion. Because the goods are in-part identical and unrestricted as to trade channels and consumers classes, we can rely on the presumption that these identical goods travel in the same ordinary trade and
distribution channels and will be marketed to the same potential consumers. As a result, the third DuPont factor also favors a likelihood of confusion. The first DuPont factor, however, weighs against finding a likelihood of confusion due to the differences in the marks in connotation and commercial impression. This is the case even though the goods are in-part identical.

In particular, the cited mark is entirely devoid of any hint or reference to the folklore legend of Leather man in Essex. "When confronted with Applicant's and Registrant's marks, prospective consumers will glean different meanings."

Accordingly, the TTAB found that the dissimilarity of the marks in meaning and commercial impression is so great such that confusion is unlikely.