What You Need to Know About Deceptively Misdescriptive Trademarks

The Trademark Trial and Appeal Board (TTAB) recently decided the case of Gruma, S.A.B. de C.V. and Azteca Milling, L.P. v Instamasa Sociedad Anonima, 2017 WL 3102595. The TTAB is an administrative board that deals with issues arising out of the United States Patent and Trademark Office (USPTO). The TTAB oversees opposition, cancellation, interference and concurrent use hearings. The TTAB also hears appeals for trademark application rejections from USPTO Trademark Examining Attorneys.

Background on Deceptively Misdescriptive Trademarks 

Instamasa Sociedad Anonima (ISA) submitted an application for trademark registration of the mark “INSTA MASA.” ISA sought to register this mark under International Class 30, a category that includes “flour and preparations made from cereals, namely, tortillas, tamales, arepas.” ISA sought to register the INSTA MASA mark for “dry corn flour product,” sometimes referred to as “masa.” ISA submitted a disclaimer with their trademark application. That disclaimer explained that ISA was only using MASA in connection with the larger mark of INSTA MASA. Otherwise, ISA was not seeking to register MASA on its own. 

Gruma, S.A.B. de C.V. (Gruma) is a large umbrella of companies focusing on “tortillas and corn masa flours.” Gruma handles U.S. customers through its subsidiary Azteca Milling, L.P. (Azteca). Gruma and Azteca sell “corn masa flour” under the trademark MASECA in International Class 30. Gruma and Azteca market this product in the U.S. market as “MASECA Instant Masa Corn Flour.”

Both Gruma and Azteca opposed ISA’s requested registration of INSTA MASA under 15 U.S.C. 1052 of the Trademark Act. Gruma and Azteca argued that the INSTA MASA mark was “merely descriptive of [ISA]’s goods.” In the alternative, Gruma and Azteca contended that INSTA MASA was “deceptively misdescriptive” as applied to “non-instant masa flour products” and similar goods lacking “flour or dough.” Gruma and Azteca also produced evidence that “masa” is a commonly used in the U.S. market to refer to corn flour.

ISA countered that in the Costa Rican market “masa” means “dough” and does not refer to the corn flour. From ISA’s standpoint, a consumer must add water to corn flour to make “masa.” ISA also explained that their use of “insta” is not an abbreviation for “instant.” Finally, ISA only sells products in Costa Rica, not in the U.S. market.

The TTAB agreed to hear this dispute and render a final decision.

Legal Analysis of the Trademark Law Example 

The TTAB first explored the descriptive requirement of trademark law. Under 15 U.S.C. 1052(e)(1), trademark protection is not appropriate when a mark is “merely descriptive or deceptively misdescriptive” of the product in question. Essentially, this means that a mark cannot simply describe the product or service offered. Alternatively, the mark cannot deceive the general public by providing a description unrelated to the product or service offered.

The TTAB then explored the disclaimer requirement. Under 15 U.S.C. 1052(e)(1), trademark protection is not appropriate when a mark is “merely descriptive.” But under 15 U.S.C. 1056, if only one part of a mark is descriptive, then the applicant can disclaim ownership of that part.

The TTAB also highlighted the difference between “merely descriptive” and “suggestive” marks. A merely descriptive mark is not suitable for trademark protection because it “conveys an immediate idea of the ingredients, qualities or characteristics of the goods.” A suggestive mark is suitable for trademark protection, however, because it “requires imagination, thought and perception to reach a conclusion as to the nature of the goods.”

In the present context, the TTAB first addressed ISA’s use of MASA in their requested mark. While agreeing that “masa” was merely descriptive, the TTAB also highlighted that ISA submitted a disclaimer. In so doing, ISA admitted to the “merely descriptive nature of that term,” while also surrendering any “exclusive right” to the word “masa.”

Then the TTAB turned to ISA’s use of INSTA in their requested mark. Based on the record, the TTAB did not reason that INSTA referred to “instant.” Rather, ISA’s use of INSTA was consistent with the concept that the product was “readily available.”

Considering the disclaimer of MASA and marketing use of INSTA, the TTAB determined that the INSTA MASA mark was suggestive, not merely descriptive. For the same reasons, the INSTA MASA mark was not deceptively misdescriptive either.

Overall, the TTAB denied Gruma and Azteca’s opposition, confirming that INSTA MASA was neither merely descriptive nor deceptively misdescriptive.

Do You Need Legal Advice from an Experienced Trademark Attorney? 

Navigating the ins and outs of trademarks can be a challenge. There are various legal regulations and considerations at play, which can make it difficult to understand the proper course of action. But a knowledgeable trademark attorney can make all of the difference, helping you avoid pitfalls and resolve any issues that might arise.

If you have a legal issue you need help with, the attorneys at Whitcomb, Selinsky Law PC would love to share their expertise with you. Please call (303) 543-1958.

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