## Facts

- Berman Bros. Harlem Furniture Inc. (Berman) filed an intent-to-use application to register **FURNITURE MAKERS** for **“retail furniture store services, not including the manufacture of furniture.”**
- The USPTO examining attorney refused registration under **Lanham Act § 2(e)(1)** on the ground that **FURNITURE MAKERS** was **deceptively misdescriptive** of Berman’s services.
- Berman conceded it **did not manufacture furniture** and stated it sold furniture manufactured by others, often bearing the manufacturers’ trademarks and other identifying matter.
- Berman submitted a declaration from its secretary, Ronald Berman, stating that if unbranded or lesser-known furniture were sold, Berman would take steps to indicate it was not made by Berman, using phrases such as “custom made for …” or “designed and crafted for ….”
- The examining attorney relied on dictionary definitions of “furniture” and “maker” to show that the ordinary meaning of **FURNITURE MAKERS** is an entity that **makes/manufactures furniture**, not a retailer.
- Berman argued consumers would not be misled because furniture is expensive, buyers are careful, and manufacturer identification or other clarifying statements would prevent confusion.
- Berman appealed the final refusal to the Trademark Trial and Appeal Board (TTAB).

## Issues

1. Whether **FURNITURE MAKERS**, when used for **retail furniture store services by an entity that does not manufacture furniture**, is **deceptively misdescriptive** under **Lanham Act § 2(e)(1)** and therefore barred from registration on the Principal Register.

## Decision

- The TTAB applied the two-part test for deceptively misdescriptive marks under **§ 2(e)(1)** (misdescription; and whether prospective purchasers are likely to believe the misdescription).
- The TTAB found that **FURNITURE MAKERS misdescribes** Berman’s services because the term conveys that the business **makes/manufactures furniture**, while Berman’s identified services expressly exclude manufacturing.
- The TTAB found the misdescription was **deceptive** in the § 2(e)(1) sense because purchasers encountering the term in connection with Berman’s retail services would be likely to believe Berman is a furniture maker.
- The TTAB rejected Berman’s reliance on proposed clarifying statements and buyer care, concluding those assertions did not overcome the likely message communicated by the mark itself.
- The TTAB **affirmed** the examining attorney’s refusal to register the mark under **§ 2(e)(1)**.

## Legal Principles

- A mark is **deceptively misdescriptive** under **Lanham Act § 2(e)(1)** if (1) it **misdescribes** a characteristic or feature of the goods/services, and (2) prospective purchasers are **likely to believe** the misdescription.
- Dictionary definitions and ordinary meaning can be sufficient evidence to show how consumers will understand the words in a mark, including where a compound term has the same meaning that common usage would assign to it.
- When the proposed mark plainly conveys that the applicant provides a capability it does not have (here, **making/manufacturing furniture**), the mark can be misdescriptive as applied to the identified services.
- In an ex parte appeal, the TTAB evaluates registrability based on the application’s identification of goods/services and the record made during examination; applicant assurances about future marketing or disclaiming statements may not cure a misleading meaning conveyed by the mark itself.
- The fact that purchasers may exercise care due to price does not, by itself, eliminate the likelihood that consumers will believe a straightforward message communicated by the applied-for mark.

## Conclusion

In *In re Berman Bros. Harlem Furniture Inc.*, the TTAB held that **FURNITURE MAKERS** could not be registered for retail furniture store services where the applicant did not manufacture furniture, because the term misdescribed the nature of the applicant’s services and consumers were likely to accept that misdescription as true; the Board therefore affirmed the refusal under **Lanham Act § 2(e)(1)**.


In re Berman Bros. Harlem Furniture Inc., 26 U.S.P.Q.2d 1514 (1993)