The test for deceptive misdescriptiveness of a trademark under Section 2(e)(1) of the Lanham Act has two parts. 15 U.S.C. § 1052(e)(1).

First, whether the matter sought to be registered misdescribes the goods or services. In order for a term to misdescribe goods or services, “the term must be merely descriptive, rather than suggestive, of a significant aspect of the goods or services which the goods or services plausibly possess but in fact do not.” In re Phillips-Van Heusen Corp., 63 USPQ2d 1047, 1051 (TTAB 2002); see also In re Shniberg, 79 USPQ2d 1309, 1312 (TTAB 2006).

Second, if the term misdescribes the goods or services, we must ask whether consumers are likely to believe the misrepresentation. In re White Jasmine LLC, 106 USPQ2d 1385, 1394 (TTAB 2013); In re Phillips-Van Heusen Corp., 63 USPQ2d at 1048; In re Quady Winery Inc., 221 USPQ 1213, 1214 (TTAB 1984). The U.S. Patent and Trademark Office (“USPTO”) has applied the reasonably prudent consumer test in assessing whether a mark determined to be misdescriptive also would deceive consumers. See R. J. Reynolds Tobacco Co. v. Brown & Williamson Tobacco Corp., 226 USPQ 169, 179 (TTAB 1985) (“the deception usually comes from the fact that the product on which the term in question is used contains a significant ingredient which is absent in the product in question but present in other products of the same kind”).

The Color Auburn for Faucets

The Trademark Trial and Appeal Board (“TTAB”) addressed whether the AUBURN mark was deceptively misdescriptive of faucets that are not the color “auburn.” In re Delta Faucet Co., Ser. No. 88814907 (TTAB May 4, 2022).

The undisputed dictionary definition of “auburn” was “a reddish-brown color” or “a moderate reddish brown to brown.”

The TTAB found that while the term “auburn” is plausibly merely descriptive of the color or finish of faucets, “none of the Internet evidence submitted by the Examining Attorney describes the color or finish of any of the faucets as ‘auburn.'” Instead, the faucets were described as “oil rubbed bronze,” “copper reddish brown,” or “reddish brown,” in the evidence of record. Also, while sinks were described as having the color “auburn” in the advertisements made of record, that color was not attributed to the faucets.

“[T]he evidence … does not show that the consuming public has been accustomed or exposed to seeing faucets for sale that are in an ‘auburn' finish.”

Thus, with respect to the critical question of consumer perception of “auburn” in relation to faucets, the TTAB found that reasonably prudent consumers would not believe that the applied-for AUBURN mark misdescribed faucets. See, e.g., Roux Labs. v. Clairol Inc., 427 F.2d 823 (CCPA 1970) (HAIR COLOR SO NATURAL ONLY HER HAIRDRESSER KNOWS FOR SURE not deceptively misdescriptive of hair coloring); In re Harrington, 219 USPQ 854 (TTAB 1983) (COLLEGE ACADEMY not deceptively misdescriptive of special summer learning programs for gifted grade-school children); Binney & Smith Inc. v. Magic Marker Indus., Inc., 222 USPQ 1003 (TTAB 1984) (LIQUID CRAYON not deceptively misdescriptive of marking pens which are not liquified crayons); In re Perfect Fit Indus., Inc., 223 USPQ 92 (TTAB 1984) (COTTAGE CRAFTS not deceptively misdescriptive of bedspreads, quilts and like products); In re Econoheat, 218 USPQ 381 (TTAB 1983) (SOLAR QUARTZ not deceptively misdescriptive of electric space heaters that heat by infrared light).

The trademark attorneys at Thomas P. Howard, LLC prosecute trademark applications before the USPTO and litigate trademarks nationwide including in Colorado.