The USPTO issued a trifusal(TM) for the proposed mark CAVIAR & CASHMERE for “non medicated skin care and related personal care and cosmetic products,” finding the mark to be deceptive under Section 2(a), or alternatively, not registrable under Sections 2(e)(1) and 6(a) without disclaimer of the deceptively misdescriptive term CAVIAR. Applicant, pointing to the Board’s CANINE CAVIAR decision (TTABlogged here), contended that consumers will not believe that the goods actually contain caviar, but rather will see the phrase as indicating superiority and luxury. How do you think this came out? In re Chase Investments, Inc., Serial No. 88042209 (February 11, 2021) [not precedential] (Opinion by Judge Michael B. Adlin).

 

Section 2(a) Deceptiveness: Section 2(a), in pertinent part, bars registration of a mark that is deceptive as to the goods or a feature or ingredient thereof. Specifically, a mark is deceptive when:

(1) it 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 substantial portion of consumers.

Examining Attorney Christina M. Sobral submitted “evidence from a number of sources, showing that caviar is perceived as having benefits for the skin, and that many skin care products include caviar as an ingredient.” Here search of Sephora’s website for “caviar” yielded 68 skincare and related products, and the same search of Ultra Beauty’s website yielded 72.

Applicant admitted that its products do not contain caviar, but it pointed out that the word caviar means not only the salted roe of a sturgeon or other large fish, but also “something considered the best of its kind.” Applicant also noted several registrations for mark containing the word “caviar,” including MYOXY CAVIAR for skin care creams and lotions.

According to applicant, caviar is seldom if ever used in skin care products, and in any case CAVIAR & CASHMERE is : (1) a double entendre, suggesting “the chic, luxuriousness of cashmere and caviar; caviar;” (2) incongruous, because caviar “is not a common ingredient in skin care; care;” and (3) unitary, because it “has 6 syllables and appears in a pleasing symmetrical structure both portions beginning with ‘CA’ and relating to luxury goods.”

The Board found that a many skin care products contain caviar and, since applicant’s products do not, the term CAVIAR is misdescriptive of them.

We recognize that both “caviar” and “cashmere” are luxury goods, and that because they do not appear to have anything in common, the proposed mark CAVIAR & CASHMERE in its entirety could convey, at least in the abstract, “a feeling of superiority and luxury.” Nonetheless, because our task is not to consider the mark in the abstract, but in the context of skincare goods (which according to the record often include caviar), we find that at least one meaning of the proposed mark is misdescriptive.

Moreover, even if CAVIAR & CASHMERE conveys “a feeling of superiority and luxury” to some consumers, that may reinforce the message that the products contain caviar, a luxury good used in skincare products.

As to the double entendre and unitary marks arguments, the Board was unmoved. As to the former argument, “even if the proposed mark calls to mind the chic, luxuriousness of cashmere and caviar, consumers would still immediately misunderstand the nature of Applicant’s goods and assume they contain caviar when they do not.” As to the latter, there was no evidence that the alliteration creates a commercial impression that is more than merely misdescriptive.

Because caviar is a fairly common ingredient in skincare products, consumers would believe that “caviar” identifies an ingredient in Applicant’s goods. In other words, consumers are likely to believe the misdescription. This contrasts with the CANINE CAVIAR case, where the evidence showed that caviar is almost never used in pet food.

Finally, because the evidence established that caviar is perceived as beneficial for the skin, “the misdescription would make the product or service more appealing or desirable to prospective purchasers.” Therefore, the misdescription is likely to affect the purchasing decision

The three prongs of the deceptiveness test having been met, the Board affirmed the Section 2(a) refusal.

Deceptive Misdescriptiveness and Disclaimer: Because the word “caviar” is misdescriptive of the goods, the Board affirmed the refusals to register under Sections 2(e)(1) and 6(a) in the absence of a disclaimer of CAVIAR.

Read comments and post your comment here.

TTABlogger comment: What would you call it if the Board issued six refusals? Here is a case where the Board affirmed five refusals (or a “quintfusal”?)

Text Copyright John L. Welch 2021.