No shades of grey: TTAB finds 'white' deceptive for black tea | April 2013

In In re White Jasmine LLC (Serial No 77115548, March 5 2013) [precedential], the US Trademark Trial and Appeal Board (TTAB) has affirmed the examining attorney’s refusal to register the figurative mark WHITE JASMINE for “beverages made of tea; black tea; flavourings of tea; spice blends; spices” in Class 30 of the Nice Classification on the ground that 'white' is deceptive under Section 2(a) of the Trademark Act for the applicant's Class 30 goods since they do not contain white tea. The TTAB also affirmed the examining attorney’s requirement that the applicant disclaim the term 'white jasmine'.

Section 2(a) bars the registration of deceptive matter on either the Principal Register or the Supplemental Register. A mark may be found deceptive on the basis of a single deceptive term that is embedded in a larger mark, and neither a disclaimer of the deceptive matter nor a claim that the deceptive matter has acquired distinctiveness under Section 2(f) can obviate a refusal under Section 2(a). Thus, deceptiveness under Section 2(a) is an absolute bar to registration.

The test for determining whether a mark consists of, or comprises, deceptive matter under Section 2(a) is as follows:

(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 a significant portion of the relevant consumers' decision to purchase?

The examining attorney persuaded the TTAB that tea purchasers will clearly understand that, because white tea is a type of tea, the word 'white' in the term 'white jasmine' designates that the tea is white tea or at least contains white tea. The examining attorney supported these claims by submitting numerous examples of competitors’ use of the term 'white jasmine' as the name of their goods (eg, Choice Organic White Jasmine Tea, Argo White Jasmine Tea and White Jasmine Spring Bud). The TTAB found that, since the applicant indicated that its tea does not contain white tea leaves and that it sells black tea using the mark, the term 'white jasmine' misdescribes tea that is not white tea and, in this case, includes black tea.

The TTAB also found that, given the various types of teas (eg, black, green, white and oolong), their popularity and specific attributes, it is likely that customers of the applicant’s products would believe that the applicant’s tea is white tea when the applicant’s tea is not, and could be any of the various types of teas mentioned above.

Finally, the examining attorney submitted evidence which established that consumers perceive that white tea has desirable health benefits. Thus, the misdescription is material to consumers interested in purchasing or drinking white tea to obtain these health benefits, and is likely to induce such purchasers to buy or drink the tea.

Accordingly, the TTAB found that the word 'white' was deceptive within the meaning of Section 2(a).

Because the refusal as deceptive under Section 2(a) absolutely bars registration, the question of a disclaimer of a portion of the mark becomes moot. However, the TTAB still addressed the disclaimer issue and found that 'white jasmine' deceptively misdescriptive for the identified goods, and affirmed the disclaimer requirement on that ground.

Section 2(e)(1) prohibits registration of terms that are deceptively misdescriptive of the goods to which they are applied. The test for determining whether a term is deceptively misdescriptive involves a determination of:

l whether the matter sought to be registered misdescribes the goods; and l if so, whether anyone is likely to believe the misrepresentation.

The difference between deceptive marks under Section 2(a) discussed above and deceptively misdescriptive marks is that deceptive marks have the additional requirement that the misdescription have a material impact on a significant number of customers' purchasing decision.

Here, the TTAB found that WHITE JASMINE satisfies the test for being deceptively misdescriptive of the goods. However, unlike marks that are deceptive under Section 2(a), deceptively misdescriptive marks under Section 2(e)(1) may be registrable on the Supplemental Register or on the Principal Register with a showing of acquired distinctiveness.

The applicant submitted that it had acquired distinctiveness due to its continuous use of the mark for more than five years and also submitted evidence of its sales and promotional efforts. In considering the totality of the evidence submitted by the applicant, the TTAB determined that the evidence of sales and promotional efforts were not enough to indicate recognition of the term 'white jasmine' as a trademark. Therefore, the TTAB found that the applicant was unable to establish that its WHITE JASMINE mark had acquired distinctiveness, and therefore, affirmed the requirement that the applicant disclaim the term 'white jasmine'.

Susan Natland and Brigette Chaput, Knobbe Martens Olson & Bear LLP, Irvine

This article first appeared on WTR Daily, part of World Trademark Review, inApril 2013. For further information, please go to www.worldtrademarkreview.com.