From The Field

September 6, 2022

Trademarks, the Supreme Court held in its Two Pesos decision, “are often classified in categories of generally increasing distinctiveness: they may be (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful.” Suggestive, arbitrary, and fanciful marks all qualify for trademark protection. Generic marks do not qualify for protection, while those that are descriptive can only qualify if they have acquired distinctiveness. Accordingly, a trademark lawyer is frequently called on to argue that a trademark falls on the suggestive, and not descriptive, side of things, thus warranting registration on the United States Principal Register for trademarks.

There is another issue, however, that trademark lawyers need to navigate.  While it is true that a trademark cannot be descriptive of goods and services, it also can’t be deceptively misdescriptive either.  A recent decision by the Trademark Trial and Appeal Board affirming a refusal for SUPERSALT on the grounds of being merely descriptive reminded me of how some trademark applications walk a fine line between not being descriptive and avoiding being misdescriptive.   

This short story about MUSCLE MILK will explain:  

Fresh out of law school and a newly minted IP attorney, I would frequently look up trademarks on products I encountered.  One such product was “Muscle Milk”.  Intrigued, I looked up the trademark prosecution for one of the corresponding applications (Ser. No. 78254425).  (Years later, there are quite a number of related MUSCLE MILK marks on the Principal Register.)  The lessons I learned that day have stuck with me throughout my career.  

The goods covered by the MUSCLE MILK ’425 application were “nutritional bars, meal replacement bars; pre-mixed nutritional beverages, [and] pre-mixed liquid meal replacement beverages,” all in international class 5.  The Examiner had a few issues with this application, but what I found most interesting was that the Examiner wanted the application amended to limit the covered goods to those containing milk.  As the Examiner stated, “If an applicant uses the mark on goods other than those containing milk, the use would be deceptive or deceptively misdescriptive.”  On the flipside, the Examiner wanted the word “milk” disclaimed because the Examiner found this term to be descriptive of the goods, assuming that Muscle Milk took up the suggestion to amend the goods to include milk.

Muscle Milk’s product did not necessarily contain milk, so it had to very carefully thread the needle.  Muscle Milk made numerous arguments that the term “milk” is suggestive of the products covered in the application.  Specifically, it argued that “the term milk is used to suggest that Applicant’s products replicate mother’s milk in that they are natural,” and that the products “nourish, stimulate rapid tissue growth and repair, and promote fast recovery in a similar manner to mother’s milk nourishing a baby”.  Also, the term milk, Muscle Milk argued, suggests that the products are “healthy and nutritious”.  

Muscle Milk then focused on thirteen other trademark registrations where “milk” was not disclaimed even if milk was used in connection with the goods.  Doubling down on its argument, Muscle Milk went to the dictionary and pointed out that “milk” has at least ten definitions, including “to get something from, exploit” and “to milk a cow or other mammal”.  Pointing out that these definitions don’t describe its goods, Muscle Milk argued that its mark wasn’t descriptive.  

But if some of Muscle Milk’s products did not contain milk, then it still needed to show its mark wasn’t deceptively misdescriptive.  To do this, Muscle Milk first noted that a trademark is deceptively misdescriptive “only when prospective purchasers are ‘likely to believe that the misdescription actually describes the goods . . .  or services’”.  Restating its arguments for suggestiveness, Muscle Milk argued that even if its mark was misdescriptive, it wouldn’t be deceptively misdescriptive, because the term “milk” was only suggestive as used in connection with the trademark.  

The Examiner was persuaded by these arguments and allowed the application, which ultimately registered.  

Which brings us back to SUPERSALT (Ser. No. 88143498).  Unlike MUSCLE MILK, which may or may not have contained milk, “supersalt”, being applied for use in connection with dietary supplements, very much included salt.  However, was the salt “super”? 

The Examiner certainly thought so and refused the trademark application on the ground of being merely descriptive.  (Again, the prosecution was complicated and other issues are not being addressed here.)  Supersalt appealed the refusal but, in a recent decision, the Board affirmed the Examiner’s refusal to register the mark on the Primary Register (but permitted the mark to be registered on the Supplemental Register, where descriptive marks can be registered, albeit with reduced rights).  

On appeal, Supersalt argued that the term “super” can be suggestive, and thus, when combined with “salt” the term remains suggestive.  But the Board focused on the fact that the main ingredient was “Real Salt, a pink sea salt from an ancient deposit in Utah which is claimed to be superior to regular salt, as it contains +60 natural minerals”.  Thus, the Board found this “salt” to be “super” and affirmed the refusal.  Supersalt also tried to argue that, when the words are used together, they form a “unique and unitary commercial impression” that indicates to consumers that the term is being used as a source indicator.  The Board dispensed with that argument too, noting that the individual words “retain their descriptive meaning” even when combined into one word.  

What can we learn from these two trademarks?  First, if one of the terms in your mark refers to a component of your goods (i.e., “milk” or “salt”), you may be subject to a disclaimer requirement so long as the other term is suggestive.  However, as we saw with MUSCLE MILK, you can at times successfully push back if you can demonstrate that the term at issue is also suggestive.  Second, if both of the terms in your mark refer to components of your goods (i.e., “super” and “salt”), then the mark is in danger of being found merely descriptive.  Third, if one of the terms in your mark refers to something which is not present in your goods (i.e., “milk”), then you run the risk of your mark being found deceptively misdescriptive, unless you can demonstrate that the term doesn’t actually describe the goods – for example by being only suggestive.

Benjamin Charkow