The mark BLACK FLEECE for a line of clothing items that were "not made of fleece fabric" was deceptively misdescriptive and unregistrable, according to the Trademark Trial and Appeal Board. The mark owner also failed to present sufficient evidence that its BLACK FLEECE mark had acquired distinctiveness.

Deceptive Misdescription

A mark is deceptively misdescriptive if (1) the mark misdescribes the goods or service to which it applies and (2) consumers are likely to believe the misdescription. The mark owner acknowledged that the term "black fleece" was facially misdescriptive of apparel that was not made of black fleece, but it contended that consumers were not likely to believe the misrepresentation. However, if a mark immediately conveys information about a good or service that is false but plausible, it is misdescriptive. Because consumers plausibly could encounter clothing items of the type identified in the application that were made of black fleece --black fleece coats, dresses, gloves, jackets, pants, and skirts --customers were likely to believe that BLACK FLEECE misdescribed the identified goods, according to the Board.

Discerning Purchasers

The owner argued that potential purchasers of BLACK FLEECE clothing items would not believe they were made of black fleece material because they would associate the mark with a line of expensive clothing available through Brooks Brothers clothiers. In addition, they would recognize BLACK FLEECE and its "hanging sheep" logo as an upscale and contemporary take-off and counterpart to the owner's established GOLDEN FLEECE mark and collection.

The Board agreed that reasonably careful customers in Brooks Brothers stores who examined and purchased BLACK FLEECE clothing might not be deceived into believing that the items were made of fleece fabric. However, BLACK FLEECE items were available to anyone through catalogs and over the Internet. Catalogs and Internet postings might not necessarily describe or depict items in such detail as to prevent consumers from believing that the items were made of fleece, the Board observed. In addition, a reasonable consumer, upon hearing a radio advertisement or word-of-mouth promotion of applicant's goods, might expect the clothing items to be made of fleece materials.

Acquired Distinctiveness

The Board also ruled that the owner failed to provide sufficient evidence to prove that the BLACK FLEECE mark had acquired distinctiveness during its four years of use. The fact that the owner had used the BROOKS BROTHERS and GOLDEN FLEECE marks and a "hanging sheep" logo since the mid-1800s could not be used as evidence of acquired distinctiveness of its BLACK SHEEP mark. An applicant may "tack" its use of an earlier mark only if the marks are legally equivalent, the Board noted.

There was little evidence that consumers would associate BLACK FLEECE with the owner's GOLDEN FLEECE mark, in the Board's view. The opinions of fashion industry professionals did not establish the perceptions of consumers and the declarations of three purchasers constituted too small of a sample to carry any weight. While sales and advertising figures under the BLACK FLEECE mark demonstrated marketing impact, they did not prove that consumers recognized BLACK FLEECE as a source indicator. Similarly, data reflecting the number of website views and consumer impressions failed to establish that the BLACK FLEECE mark indicated source. The owner's proffered evidence fell short of showing that BLACK FLEECE has acquired distinctiveness, the Board concluded.

In re Retail Brand Alliance, Inc., TTAB, ¶61,895.