The Board affirmed two refusals to register the mark EMDROPS for "dietary and nutritional supplements in liquid form which do not include effective microorganisms or efficient microbes," finding the mark to be deceptive under Section 2(a), and perforce deceptively misdescriptive under Section 2(e)(1). The Board concluded that "EM" describes goods that contain "effective microorganisms," which applicant's goods do not contain. In re Manpreet S. Wadhwa, Serial No. 86013037 (February 16, 2016) [not precedential].

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A mark is deceptive under Section 2(a) if (1) it consists of or contains a term that misdescribes the character, quality, function, composition, or use of the goods and/or services; (2) prospective purchasers are likely to believe that the misdescription actually describes the goods and/or services; and (3) the misdescription is likely to affect the purchasing decision of a significant portion of relevant consumers. A mark may be deemed deceptive even if the descriptive term is embedded in a larger mark.

The Board found that, given the generic nature of DROPS, consumers will perceive applicant's mark as a combination of the terms "EM" and "DROPS." Applicant did not argue otherwise, but he maintained that EM would be perceived as an abbreviation for "essential minerals" or "electrolyte minerals," which ingredients are present in applicant’s drops.

Examining Attorney Brin Anderson Desai submitted Internet evidence showing that the term "effective microorganisms" and its abbreviation EM were apparently coined by Professor Teruo Higa from the University of the Ryukyus in Okinawa, Japan, in connection with research regarding the alleged beneficial effects, on soil, of combinations of different microorganisms. He touted these "EM combinations" as beneficial in a wide range of unrelated fields. Several articles used the abbreviation EM in discussion microorganisms in the field of human health. In addition, other websites offer products that contain effective microorganisms, sometimes referring to them as "EM" or "probiotics."

In addition there are six third-party registrations for marks including the term EM for dietary supplements that include a disclaimer of EM or that have been registered under Section 2(f) [Five of the registrations are owned by Professor Higa's company].

Based on this evidence, the Board found that EM describes goods that contain effective microorganisms. Because applicant's goods to not contain effective microorganisms, the applied-for mark is misdescriptive of them.

Applicant argued that because EM is not commonly used with supplements, consumers will more likely view EM as meaning "essential minerals." Four third-party registrations from marks containing the term EM were deemed by the Board to have little probative value. In sum, applicant's evidence failed to convince the Board that supplements could not contain "essential microorganisms." Therefore, the Board concluded that consumers would believe the misdescription of applicant's goods.

Finally, the evidence showed that the health benefits of "essential microorganisms" have been touted in connection with the sale of dietary supplements.

Consumers are likely to believe that dietary and nutritional supplements that contain EM bestow unique health benefits to those who consume them. The greater marketability or desirability of the product is thus likely to induce prospective buyers to purchase the goods.

The Board concluded that the Office had made a prima facie case under Section 2(a), and applicant failed to overcome that showing.

The Board's findings under the first and second prongs of the deceptiveness test sufficed to support the refusal of the mark as deceptively misdescriptive under Section 2(e)(1) of the Act.

TTABlog comment: Note that a mark that is primarily deceptively misdescriptive is still eligible for registration via Section 2(f), but a deceptive mark is not.