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A trademark that falsely suggests products are made of a specific type of material when they are not, can still be trademarked

A trademark that falsely suggests products are made of a specific type of material when they are not, can still be trademarked

Applicant applied to register HYDZ for “apparel not made of…animal hides, namely, sweatpants and sweatshirts for casual wear or for wear during exercise.” The TTAB over turned the Examiner’s refusal and allowed the trademark to be registered.

This cases touches on two interesting and related technical trademark issues.

FIRST: Descriptive marks cannot be registered without an evidentiary showing that the trademark had at some point become distinctive and began functioning as a trademark for the identified goods. In this case, the mark HYDZ was clearly treated as the equivalent of “animal hides.”

If the Applicant had not included the limitation “apparel not made of leather or other animal hides…” in the goods description, the application would almost certainly have been refused as descriptive.

SECOND. Misdescriptive marks cannot be registered in favor of public policy reasons and in an effort to protect the consuming public.

In this case, the trademark HYDZ suggests that the exercise clothes identified in the goods description are made out of leather, when indeed the goods are not. Ordinarily this would be problematic for the Applicant. However, in order for a trademark to be legally misdescriptive, prospective purchasers must be likely to believe that the misdescription actually describes the goods.

In this case, the Applicant successfully argued that workout clothes made of leather was simply too “gross” for consumers to believe that someone would actually sell clothes made of leather with the intention that the user would deliberately bring on a sweat while wearing the product.

Finally, the TTAB appears to recognize that workout clothes can be worn in a casual environment when not working out…and therefore simply treated the goods as workout clothes to be sweated in for the purpose of its analysis.

By Gary Nelson of Lewis Roca Rothgerber Christie

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