Now you see it; now you don’t (Wait, yes you do!)

TTAB affirms refusal of ‘4D’ as merely descriptive and as deceptively misdescriptive for amusement park attraction

For those familiar with the ins-and-outs of trademark law, navigating a hall of mirrors can be an appropriate metaphor. For one self-described “amazing” company applying for a trademark, navigating the halls of the USPTO turned out to be anything but simple.

In late February, the Trademark Trial and Appeal Board (TTAB) affirmed the USPTO’s denial of a trademark for the descriptive phrase 4D to Amazing Mazes, owner and operator of a theme-park type attraction in San Antonio that bills itself as begin on "the cutting edge of mirror maze design." (Someone enjoyed writing that. I certainly did!)

4D is by now commonly accepted short-hand for four-dimensional. Most frequently, it's evoked in the context of the multiple dimensions theorized by today's particle physicists, themselves traders in the world of amazement who describe things like string theory, the Higgs boson, and parallel universes.

Amazing Mazes had applied to register 4D for "entertainment services in the nature of an amusement park attraction, namely, a themed area featuring mirror labyrinths with rotating mirrors therein.” Amazing Mazes entertainment involves a self-guided walk through a mirrored maze, though without any special effects such as water sprays, odors, shaking or sounds.

The USPTO’s examiner rejected the application, finding that 4D was either merely descriptive of those services or alternatively, that it was deceptively misdescriptive for those services. In a decision that itself seems not quite what it appears, the Trademark Trial and Appeal Board upheld the refusal not on one of these grounds, but on both.

Many readers will know that the USPTO refuses to register marks that it believes are merely descriptive: that is, if it immediately conveys knowledge of a quality, feature, function, or characteristic of the services with which it is used. Evidence that a term is merely descriptive may be obtained from any source, including dictionaries, newspapers or surveys.

Amazing Mazes argued that the mark it applied for was suggestive, not merely descriptive, because 4D was a “clever reference to an alternate reality or parallel universe.” But in denying Amazing Mazes’ appeal, the Board held that using the descriptor 4D was akin to saying “additional special effects” without reference to any particular special effect.

Interestingly, the Board appeared to give great weight to Amazing Mazes’ own use of 4D, quoting how its mazes include an “amusing 4D moving mirror maze experience.” The TTAB felt that this strongly supported the examiner’s contention that the mark was descriptive.

The Board also clarified a point that many applicants miss when arguing whether a proposed trademark is merely descriptive. A trademark does not have to tell a prospective consumer what the goods or services are. Instead, the issue is whether someone who knows what those goods or services are will understand the mark to convey information about them.

This is a key distinction. Often, clients tell me they want to apply for a descriptive sounding mark, and when I reply that I am concerned the mark will be refused as merely descriptive, they counter, “But just by reading the mark, you will not know what the goods are.”

That is not the test. The test is whether, if the viewer knows what the goods or services are, the mark tells that viewer something about those goods or services. This might seem a minor distinction, but it is the crux of most descriptiveness refusals. Thus, in the case of Amazing Mazes' 4D denial, the TTAB held that the term 4D would be understood by consumers that know they are going into a maze that the maze will include some additional special effect.

The second interesting point about this decision is that in addition to denying Amazing Mazes’ application on the basis of its mark being merely descriptive, the Board also denied it on the basis of its mark being deceptively misdescriptive. It seems logically inconsistent for a mark to be both: either one's mark is descriptive or it is deceptively misdescriptive.

How so both? Perhaps because of parallel universes! The TTAB began its discussion of this ground by explaining that the Lanham Act prohibits registration of trademarks that are deceptively misdescriptive of the services to which they are applied. A mark is considered deceptively misdescriptive if: (1) the mark misdescribes a quality, feature, function or characteristic of the services with which it is used; and (2) consumers would be likely to believe the misrepresentation. At the outset, the Board's opinion explains that for a mark to misdescribe services that mark must be merely descriptive of a significant aspect of the services which the services could plausibly possess but in fact do not.

Applying the law to the facts of this case, the TTAB goes down an intriguing path, explaining that the term 4D is a term of art in the entertainment field and requires special effects such as water sprays, odors, shaking or sounds, but that it does not encompass what Amazing Mazes provides, namely, rotating mirrors or special effects lighting. As such, the Board held that consumers encountering Amazing Mazes’ 4D mark will expect its mazes to include tactile or odor-generating functionalities and will be disappointed because Amazing Mazes’ mazes do not have those. (Not incidentally, Amazing Mazes believes that adding those types of effects could cause liability issues.)

But does not the argument that customers will expect some combination of small or tactile functionalities rest on the very same reasoning on which Amazing Mazes’ argued that its mark was not merely descriptive? Again, the reader is reminded we're in a hall of mirrors, and not everything is as it appears.

Or maybe quantum mechanics is the better metaphor: one opinion in two places at the same time? The TTAB sought to solve this logic maze by turning to the second prong of the deceptively misdescriptive test: namely, what consumers expect. The Board explains what it believes the typical consumer would expect, namely, that consumers are likely to believe that Amazing Mazes’ services will include some combination of small or other tactile functionalities and as such, Amazing Mazes’ mark will disappoint consumers when those things are not present. In effect, the Board uses the hypothetical consumer to find its way out of what appears to be a pretty tricky logical conundrum. In what some might view as logical sleight of hand, the Board has balanced these parallel arguments — in the same small space — or in a parallel universe.

Contributing Author

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Scott Slavick

Scott Slavick is a shareholder at Brinks Gilson & Lione, where his practice focuses primarily on trademark prosecution and trademark litigation. Scott maintains all aspects...

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