What is deceptive or deceptively misdescriptive?
Marks which are deceptive cannot be protected as trademarks and cannot be federally registered. Marks which are deceptively misdescriptive, however, cannot be protected or federally registered until they acquire secondary meaning.
A deceptive mark is one which mischaracterizes or misleads consumers about the related goods and services. This occurs where (i) the mark improperly describes some character, quality, function or use of the goods and services; and (ii) consumers are likely to believe the improper description and rely upon that improper description in making a purchasing choice. Alternatively, courts have found marks to be deceptive simply when the owner had an active intent to deceive the public .
Deceptively misdescriptive marks, on the other hand, are marks which simply misdescribe some character, quality, function or use of the goods and services. The difference here is that a mark is deceptively misdescriptive simply by improperly describing some aspect of the goods or services, but to be a deceptive mark, there must also be either: (i) an intent to deceive by the mark’s owner; or (ii) a likelihood that purchasers will rely on the misdescription. As such, once a deceptively misdescriptive mark has acquired secondary meaning, the Patent and Trademark Office will allow it to be registered (because the acquired secondary meaning establishes that the public will not be and has not actually been deceived).