The Board affirmed alternative refusals of the mark É, in the form shown below, for "dietary and nutritional supplements," finding it to be deceptive under Section 2(a), or alternatively, deceptively misdescriptive under Section 2(e)(1). In re Gulf Coast Pharmacy, Inc., Serial No. 86506207 (August 3, 2016) [not precedential).
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Section 2(a) Deceptiveness: A mark is deceptive if (1) it consists of or contains a term that misdescribes the character, quality, function, composition, or use of the goods; (2) prospective purchasers are likely to believe that the misdescription actually describes the goods; and (3) the misdescription is likely to affect the purchasing decision of a significant portion of relevant consumers.
Examining Attorney John Lincoski maintained that (1) consumers would understand the letter E to indicate that the goods contain Vitamin E when, in fact, they do not; (2) because Vitamin E is a well-known dietary and nutritional supplement prospective purchasers likely would believe the misdescription; and (3) because Vitamin E has been widely touted as having numerous health benefits, the misrepresentation would be likely to materially affect consumers’ decisions to purchase the goods.
Applicant argued that the mark is a stylized "É" design that would be seen simply as a logo, and that producers who include Vitamin E in a product would want to clearly indicate same and would not use a logo like applicant's.
There was no question that the letter "E" is widely used in the industry to refer to Vitamin E or to products containing same. Dictionary and website evidence showed that Vitamin E is a common ingredient in nutritional supplements.
Applicant admitted that its product does not contain Vitamin E. Therefore, the Board found, applicant's mark misdescribes the goods.
The Board did not agree that applicant's mark is so highly stylized that consumers would not believe that the supplements actually contain or comprise vitamin E. The evidence included other similar products bearing an "E" in various forms.
Finally, the evidence showed that Vitamin E is associated with significant health benefits, and therefore its presence or absence as an ingredient would be relevant to the decision of consumers to purchase Applicant’s supplements.
All three prongs of the Section 2(a) test having been met, the Board affirmed the refusal to register on the ground of deceptiveness.
Section 2(e)(1) Deceptive Misdescriptiveness: The test for determining whether a term is deceptively misdescriptive involves a determination of (1) whether the matter sought to be registered misdescribes the goods and, if so, (2) whether anyone is likely to believe the misrepresentation. The Board already found that those prongs were met as part of the Section 2(a) deceptiveness test, and therefore it affirmed the alternative refusal under Section 2(e)(1).