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It is usually advisable to choose a trademark with attractive connotations. However, if the trademark conveys plausible but wrong ideas about certain aspects of goods or services, it may be considered deceptive. The dividing line is not always obvious.

A trademark indicates the source of a product or service. Generally speaking, the most protected logo is a coined term (a fictitious word), an arbitrary term (a word not related to a product or service), or an implied term (a term that makes the product or service seem desirable) . These types of trademarks can be registered immediately.

If the applicant waives the use of the term as an exclusive right other than a trademark, even a descriptive term (word that conveys the direct concept of the composition, quality, characteristic, function, or feature of a product or service) can be registered or consumers can start Recognize that the "secondary meaning" in this term is the identification of the source of the product or service, as well as its descriptive connotation.

What if the term incorrectly describes some aspect of the product or service? If the incorrectly described term is clearly the case, it will be registered as if it were any word applied to the product or service. However, if the falseness of the misdescription is not obvious, the term will be regarded as a deceptive misdescription term, and if it has a secondary meaning as a source identification, it can still be registered.

However, a completely different category is deceptive terms (a deceptive misdescriptive term whose falseness will have a significant impact on consumers' purchasing decisions). In any case, such a term cannot be registered at all, even if it has been abandoned or claimed to have a secondary meaning. Its use may also violate the Federal Trade Commission's regulations for deceptive or misleading advertising.

How do you determine whether a term is a deceptive misdescription (registrable with secondary meaning) or deceptive (not registrable)?

To do this, you must enter the well-known mentality of ordinary consumers to decide whether deception will become the motivation for the decision to purchase a product or service. The irony is that the more convincing a deceptively mischaracterized trademark is, the less registrable it is.

BandGrip, Inc. submitted an application for intended use to register SMART SUTURE as a "surgical bandage for skin wounds with mechanical hooks that can penetrate the skin on both sides of the wound to attach to the skin." of the proposed product The photo shows that the product is indeed a bandage.

The examiner refused the registration on the grounds that the trademark was deceptive in terms of bandages. BandGrip appealed to the Trademark Trial and Appeal Board (TTAB). TTAB confirmed the rejection.

Evidence suggests that sutures and bandages are separate and distinct products. A dictionary defines "bandage" as "a piece of fabric specially used to cover, bandage, and bandage wounds." Another dictionary defines "suture thread" as "a thin thread or other material used to close a wound or connect tissue during an operation." BandGrip itself distinguishes its bandages from sutures in its advertising materials:

"Unlike the raised surfaces of staples and zippers and the "beards" associated with sutures, the smooth surface of the BandGrip micro-anchor closure will not stick to dressings or clothing."

Therefore, TTAB found that the term SMART SUTURE is a misdescription of bandages.

The next question is, will the buyer think that the product with the SMART SUTURE mark is a suture instead of a bandage, causing the mark to be regarded as a deceptive misdescription? Although one might think that the pictures on the product packaging can eliminate deception by clarifying that the product is a bandage rather than a suture, TTAB generally does not consider marketing materials and limits its analysis to the label itself and the service specified in the product or application. TTAB found that false descriptions are credible because sutures and bandages have a similar purpose (suturing wounds) and can be used together.

The final question is whether the credibility of this deceptive misdescriptive mark has a significant impact on the purchase decision. Although the record lacks direct evidence of consumer preferences and motivations, indirect evidence convinces TTAB that doctors, nurses, and other caregivers prefer stitching out of habits, needs, and training. Therefore, TTAB concluded that such misdescriptive markings can influence the purchase decision.

BandGrip undoubtedly believes that SMART SUTURE is a cleverly suggestive sign of bandages. However, TTAB confirmed that it refused to register SMART SUTURE on the grounds that the mark was deceptive when applied to bandages.

BandGrip, Inc., application number 88265665 (October 21, 2021)

Author's note: In 1808, Walter Scott wrote: "Oh, when we first practiced deception, the net we woven was really too complicated!"

However, in the field of trademarks, regardless of the marketing party's intentions, the focus of deception is the buyer's mentality.

If the trademark you choose contains or contains clever terms that may misdescribe your product or service, you need to consider the cleverness of the term, not whether its misdescription is obvious to consumers. If it is not, and if the term is important to a consumer's purchasing decision, you should probably reconsider your trademark.

These vague distinctions can make predictions difficult, but the consequences can be important.

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