Going From Merely Descriptive to Deceptively Misdescriptive

Section 2(e)(1) of the Lanham Act, 15 U.S.C. § 1052(e)(1), prohibits registration on the Principal Register of designations that are deceptively misdescriptive of the goods or services to which they are applied, absent a showing of acquired distinctiveness under Section 2(f). See In re Hinton, 116 USPQ2d 1051, 1051-52 (TTAB 2015) (finding “THCTea” deceptively misdescriptive of “tea-based beverages” not containing THC); In re Shniberg, 79 USPQ2d 1309, 1312 (TTAB 2006) (finding “SEPTEMBER 11, 2001” deceptively misdescriptive of history books and entertainment services not pertaining to the events of September 11, 2001).

A term is considered deceptively misdescriptive if (1) the term misdescribes a quality, feature, function, or characteristic of the goods or services with which it is used; and (2) consumers would be likely to believe the misrepresentation. In re Dolce Vita Footwear, Inc., 2021 USPQ2d 479, at *9 (TTAB 2021) (citations omitted); Hinton, 116 USPQ2d at 1052.

“As to the first part of the test, a mark is misdescriptive when it is merely descriptive, rather than suggestive, of a significant aspect of the [services] . . . which the [services] . . . plausibly possess but in fact do not.” Dolce Vita Footwear, 2021 USPQ2d 479, at *9 (citation omitted); Hinton, 116 USPQ2d at 1052); In re Phillips-Van Heusen, 63 USPQ2d 1047, 1051 (TTAB 2005).

Cue-Based Fitness Services

For the CUESZ mark in connection with “Real time personal fitness training services including performance, nutritional, medical restorative and mindfulness personal fitness training and further including conditioning and recovery strategies therefor to individual clients,” the trademark application was initially refused for being merely descriptive of those services. In re Mark Beveridge, Ser. No. 90647376 (TTAB Jan. 17, 2024). In response, the following representation was made: “The Applicant has no intention to provide prompting or reminders from the instructor/trainer, now or in the future.” Then the application was refused for being deceptively misdescriptive.

The evidence of record included a promotional video by the applicant that pronounced the mark as “cues.” The record also included a number of Internet references showing that fitness trainers use “cues” or “cuing” such as “reminder[s], prompting, hint[s], or suggestion[s]” as part of fitness training.

The TTAB found it “plausible that that physical fitness training services could feature cues,” which would render “cues” merely descriptive for personal fitness training services. “Because Applicant represents that his training services do not involve cues, the misspelled term CUESZ misdescribes Applicant’s services under the first factor of the test.”

For the second prong, the TTAB held that it was satisfied because the uncontroverted evidence of record demonstrates that consumers are accustomed to encountering cues in personal fitness training and conditioning, and thus would likely believe that Applicant’s fitness services would “feature corrective exercise cues.”

Accordingly, the TTAB affirmed the refusal to register the CUESZ mark for being deceptively misdescriptive.

 

Thomas P. Howard, LLC is experienced in trademarks nationwide including in Colorado.