The Board adhered to its standard test for deceptiveness under Section 2(a) in affirming a refusal of KLEER ADHESIVES for adhesives and mortar for use with PVC building materials, the products being "optically opaque, color-matched, or otherwise non-transparent." As to the marks KLEER MOULDINGS and KLEER TRIMBOARD for PVC building materials, however, the Board reversed the same refusals due to lack of evidence that the term KLEER (or its phonetic equivalent, "clear") has an understood meaning with regard to such synthetic products. In re Tapco International Corporation, Serial Nos. 86075950, 86078755, and 86079474 (April 28, 2017) [precedential] (Opinion by Judge Shaw).
Under Section 2(a) of the Trademark Act, registration must be refused if a term is deceptive of a feature or an ingredient of the identified goods. In re Budge, 857 F.2d 773, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988). The test for deceptiveness is whether all three of the following criteria are met:
(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? and (3) If so, is the misdescription likely to affect the purchasing decision of a significant portion of relevant consumers? Id.
KLEER ADHESIVES: The Board agreed with Examining Attorney Fred Carl III that KLEER is the phonetic equivalent of "clear," that "clear" means transparent, and that applicant's goods are not transparent. Consumers are likely to believe that the description of the goods as transparent because - as shown by web pages, new stories, and "how-to" articles - manufacturers provide clear adhesives for use in the construction industry.
Applicant Tapco argued that consumers are unlikely to believe that its adhesives are clear because they are sold only to "a sophisticated relevant consumer base of builders, contractors, sub-contractors, and other knowledgeable construction professionals." According to Tapco, these consumers "would be “savvy enough to realize that colormatched adhesives for use with the Applicant’s like-branded KLEER PVC building products are adhesives sold under the KLEER brand umbrella, as the term KLEER is viewed in the relevant industry as a house mark and known source identifier covering a wide variety of products. The Board pointed out, however, that the application at issue does not limit the channels of trade to only sophisticated consumers. Thus the Board must presume that applicant's goods are sold to all prospective consumers of such adhesives, including the average homeowner. Moreover, there was no evidence that consumers would view KLEER as having another meaning, and thus "there is nothing to suggest any industry custom or understanding that KLEER does not mean clear to building construction professionals."
The Board concluded that "prospective purchasers are likely to believe that the term KLEER describes Applicant’s adhesive products when, in fact, they are not clear."
The evidence demonstrated that clear adhesives have important and desirable advantages over non-transparent adhesives, and so the Board found that "a clear-drying finish would be material to the decision by consumers to purchase PVC adhesives." Although flavor, scent, and color would typically not be considered material, the desire of consumers for clear adhesives is more than a personal preference:
The record establishes that clear adhesives are objectively more useful than non-transparent adhesives because they provide a bond "that cannot be seen" or which can be used to join products of any color. This feature makes clear adhesives more desirable than other non-transparent adhesives.
And so the Board found KLEER ADHESIVES to be deceptive under Section 2(a).
KLEER MOULDINGS and KLEER TRIMBOARD: The Examining Attorney contended that the word KLEER in these two marks indicates that the goods are made from "clear wood," i.e., wood that is free from knots and other defects. Since applicant's goods are not made from wood that is free from knots or other defects, he maintained that the mark is misdescriptive of the goods. The Board construed construe the argument to be that consumers of applicant’s synthetics products will likely assume there is a similar distinction between synthetic building products that are clear of any defects and those that are not.
Although the USPTO's evidence established that "clear" has an understood meaning with respect to wood, there was no evidence that it has a similar meaning with respect to synthetic building materials: i.e., "there is no evidence in the record establishing a similar recognized distinction between clear and blemished synthetic building products."
The Board found no need to reach the third Budge factor, and it reversed the deceptiveness refusal as to these two marks.