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INTA Bulletin

August 15, 2017 Vol. 72 No. 14 Back to Bulletin Main Page

UNITED STATES: “KLEER”-LY Deceptive? Only if the Application Fails the Deceptiveness Test

In a precedential decision demonstrating the application of the test for Section 2(a) deceptiveness, the Trademark Trial and Appeal Board (Board) affirmed in part and reversed in part an examining attorney’s refusal of three trademark applications for deceptiveness. In re Tapco International Corporation, 122 USPQ2d 1369 (TTAB Apr. 28, 2017).

Tapco International Corp. (the applicant) filed three applications seeking registration of the marks (1) KLEER ADHESIVES for “adhesives for the building construction industry” and other adhesives; (2) KLEER MOULDINGS for “non-metal interior and exterior architectural mouldings and finish trim made of synthetic and manmade materials” and similar goods; and (3) KLEER TRIMBOARD for “non-metal building products, namely, lumber made of manmade and synthetic materials” and similar goods, each in Class 19, with the applicant disclaiming “adhesives, mouldings, and trimboard.” The applicant claimed ownership in several other KLEER-related trademark registrations for various goods identifying “lumber” products and other “non-metal building products.”

The examining attorney refused registration for each application under Section 2(a), finding each mark deceptive. The Board, in reviewing the evidence and arguments submitted by the applicant and the examining attorney, applied the three-factor test for deceptiveness:
  1. Is the term misdescriptive of the character, quality, function, composition, or use of the goods?
  2. If so, are prospective purchasers likely to believe that the misdescription actually describes the goods?
  3. If so, is the misdescription likely to affect the purchasing decision of a significant portion of relevant consumers?
Additionally, the Board noted that the applicant’s claim of acquired distinctiveness could not be considered, since Section 2(a) “is an absolute bar to the registration of deceptive matter on either the Principal Register or the Supplemental Register.”

With regard to KLEER ADHESIVES, the Board found the mark failed the first factor since KLEER is “the phonetic equivalent of ‘clear’” and would be understood by purchasers as “clear.” The Board found the mark failed the second factor, because the examining attorney’s evidence showed that “other manufacturers provide clear adhesives in the construction industry,” and prospective consumers would be likely to believe the misdescription actually describes the goods identified. (In that regard, the Board rejected the applicant’s argument that its goods were targeted to construction professionals, noting no such limitation in the identification of goods.) Finally, the Board found that the mark failed the third factor, because clear adhesives have desirable advantages that provide an inducement to purchase such products. 

With regard to KLEER MOULDINGS and KLEER TRIMBOARD, however, the Board came to the opposite conclusion. While the Board found the examining attorney provided sufficient evidence to establish that the term “clear” as applied to wood products indicates that the wood “is free from knots or other defects,” the Board determined that the examining attorney had not provided evidence relating to the actual goods identified. Specifically, the Board held that no evidence established that KLEER would be misdescriptive of synthetic products, and thus “the record does not establish what prospective consumers are likely to understand when ‘clear’ is used on a different product, namely synthetic trim and mouldings.” Since these applications did not reach the third factor, the Board held that KLEER MOULDINGS and KLEER TRIMBOARD were not deceptive, reversing the examining attorney.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position. 
© 2017 International Trademark Association