Dolce Vita Footware, Inc. sought registration of the mark CLEAR for various bags, purses, wallets, and card cases – excluding transparent goods. The Examiner refused registration on the grounds that it is deceptively misdescriptive and on April 29, 2021 the Trademark Trial and Appeal Board (the “TTAB”) affirmed.
In its original registration, Dolce Vita identified the goods intended for the CLEAR mark to cover as “baggage tags; handbags; make-up bags sold empty; purses and wallets; tote bags; all purpose sport bags; all-purpose carrying bags; business card cases; clutches; coin purses; credit card cases;” and the Examiner refused registration on the ground that the applied-for mark is merely descriptive of the goods. The Examiner relied, in part, on the definition of “clear” as “transparent” and argued that the word “clear” is used by competitors to describe a feature of bags. In response, Dolce Vita explained that there are no transparent items in its CLEAR collection and ultimately amended its identification of the goods by adding the following limiting language: “all of the foregoing excluding transparent bags, purses, and clutches.” Dolce Vita argued that its use of CLEAR for non-transparent goods is completely arbitrary and it is unlikely that consumers would be fooled into thinking the bags are transparent because the consumers necessarily see that the goods are not transparent when purchasing them.
The Examiner maintained the refusal and Dolce Vita appealed to the TTAB. Upon appeal, the Examiner maintained that the proposed mark is deceptively misdescriptive of the identified goods because CLEAR means transparent and the public will believe that Dolce Vita provides transparent bags. The Examiner provided evidence of bags with transparent features designated as “clear” in websites such as Bloomingdale’s, Nordstrom, and Amazon.
A mark is considered deceptively misdescriptive if the mark both (a) misdescribes a quality, feature, function, or characteristic of the goods with which it is to be used and (b) reasonably prudent consumers would likely believe the misrepresentation. The TTAB found that consumers will likely perceive the word “clear” as describing a feature or attribute that Dolce Vita’s goods could plausibly have. Therefore, CLEAR misdescribes a feature or attribute of the goods satisfying the first component of the deceptively misdescriptive test. The TTAB also found that reasonably prudent consumers will likely not be aware that Dolce Vita has limited its identification to only non-transparent goods as any such restriction is not controlling of public perception. Furthermore, an applicant cannot avoid a finding of deceptive misdescriptiveness by excluding from its identification the very characteristic that its mark is misdescribing. The TTAB also noted that “[c]lear bags are having a moment again” due to heighted security measures at airports, stadiums, and other public facilities, and fashion brands have moved to capitalize on the trend. As a result, according to the TTAB, consumers seeing the proposed mark CLEAR for baggage tags, cases, and various other types of bags, are likely to believe that those goods contain transparent features even though they do not, satisfying the second element of the test.
The TTAB was not persuaded by the argument that consumers will not believe the misrepresentation because purchasers visually inspect the bags before purchase. The TTAB stated that upon visual inspection, consumers may understand that they do not include transparent attributes, but that does not negate their understanding before they inspect the goods. If the goods were promoted by word of mouth or without an image, the reasonable consumer would believe that the goods, promoted under the CLEAR mark, would feature transparent attributes.
According to the TTAB, both parts of the test were satisfied, and the mark CLEAR is considered deceptively misdescriptive for the intended goods. The refusal to register the proposed mark was affirmed.