Friday, April 19, 2024

TTAB Sustains 2(e)(1) Opposition, Finding WOOLWAX Merely Descriptive of Lubricants

The Board sustained this opposition to registration of the proposed mark WOOLWAX for "corrosion inhibitors in the nature of a coating; rust preventatives in the nature of a coating" and for  "all purpose lubricants," on the ground of mere descriptiveness under Section 2(e)(1). Applicant Kellsport sought registration under Section 2(f), thereby conceding that the mark is not inherently distinctive. To prove acquired distinctiveness, it relied on a declaration of at least five years of continuous and substantially exclusive use. Not good enough, said the Board. Eureka Chemical Company v. Kellsport Industries Inc., Opposition No. 91274117 (April 17, 2024) [not precedential] (Opinion by Judge Wendy B. Cohen).

The issues before the Board were two-fold: "whether Applicant’s proposed mark is so highly descriptive of the goods that Applicant is subject to a higher burden of proof to demonstrate acquired distinctiveness, and whether Applicant has met that burden."

Highly Descriptive?: Opposer Eureka Chemicals argued that wool wax, "the wax secreted by the sebaceous glands of sheep, is synonymous with lanolin and is highly descriptive of Applicant’s goods." In support, Eureka submitted third-party website excepts and online dictionary and encyclopedia definitions for woolwax and lanolin. One of the websites stated "Sheep’s wool is the source of one of the most useful natural lubricants, called woolwax or lanolin."

Applicant Kellsport's specimen of use described various applications for its WOOLWAX product; it states that "Almost anything that has a moving metal part can be lubricated and protected with Woolwax®." Its website states: "WOOLWAX® contains more raw woolwax (lanolin) than any competitive product," and "'Woolwax® is made from lanolin. Also known as wool grease, wool fat, woolwax. Lanolin comes from sheep’s wool.'"

As all this evidence shows, wool wax is at least highly descriptive. Consumers encountering the proposed mark WOOLWAX will clearly understand that, in the context of Applicant’s goods, the mark refers to coatings and lubricants made of wool wax.

Acquired Distinctiveness: The Board observed that "[w]hen proposed marks are highly descriptive, a statement of use for at least five years, or even longer, is generally insufficient to show acquired distinctiveness." The Board then looked to the Converse factors in determining whether Kellsport had cleared that high Section 2(f) hurdle.

Kellsport claimed use of the mark since 2013, but its evidence was questionable. In any case, "that length of time is not persuasive given the highly descriptive nature of WOOLWAX." Kellsport's evidence regarding advertising expenses were unaccompanied by any sample advertisements, and there was no evidence as to how often the advertisements appeared or how many consumer were exposed thereto.

In sum, there is no evidence regarding the impact or extent of the advertising or marketing efforts. Without further information as to the nature, kind, and extent of its advertising and marketing expenditures or context, Applicant’s statements are of little probative value.

Kellsport's evidence regarding its sales was vague Its sales and advertising figures, without any context in the trade, "are not so impressive as to support a finding" that WOOLWAX has acquired distinctiveness.

"Given the highly descriptive nature of Applicant’s proposed mark, Applicant is obliged to adduce a great deal more evidence to meet its burden of proof." And so, the Board sustained the opposition.

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TTABlogger comment: WYHA?  

Text Copyright John L. Welch 2024.


At 1:07 PM, Anonymous Anonymous said...

I am sensing a change at USPTO of accepting the five years of use. I see what appears to be an office wide increase in refusals demanding more evidence of distinctiveness than checking the five year box.


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