Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 TURTLE WAX, INC.
v.
BLUE CORAL, INC.
Cancellation No. 14,677
March 26, 1987
Baker & McKenzie for Turtle Wax, Inc.
Baker & Hostetler for Blue Coral, Inc.
Before Sams, Rice and Krugman
Members
Opinion by Krugman
Member
A petition has been filed by Turtle Wax Inc. to cancel a registration on the Supplemental Register for the designation WASHWAX for a concentrate to be diluted with water for the washing of automobiles leaving a wax-like coating. [FN1]
As grounds for cancellation, petitioner asserts that it is a direct competitor of respondent in the vehicle-care products field; that it manufactures, distributes and sells a variety of polishes, waxes, sealants and similar products for the care and preservation of finishes of vehicles, including preparations for washing and waxing automobile finishes and preparations which wax and wash simultaneously; that the mark sought to be cancelled is the common name for the goods, namely, a car-wash product which also waxes and that, consequently, the term WASHWAX is not capable of distinguishing respondent's goods.
Respondent, in its answer to the petition for cancellation, has denied the allegations therein.
The record consists of the pleadings, the file of respondent's registration, a number of respondent's answers (and exhibits) to interrogatories propounded by and relied on by petitioner, a number of excerpts taken from the NEXIS research database comprising articles from printed publications relied on by petitioner and testimony (and exhibits) taken by petitioner. Both parties have filed briefs on the case and petitioner has filed a reply brief. No oral hearing was requested.
Petitioner has established its standing by showing, through competent testimony and supporting documentary evidence, that it is a competitor of respondent in the car-care products field, manufacturing and selling a variety of car-care products, including products for washing cars, products for waxing cars and products which both wash and wax a car simultaneously. One such product called 'ZIP WAX CAR WASH,' states on the container that the product 'waxes as it washes.' Another of petitioner's products called 'EXCALIBUR CARNAUBA CAR WASH,' similarly states on the container that said product 'waxes as it washes.'
Petitioner has introduced a number of exhibits in connection with its testimony relative to third-party competitors in the car-care products field. One combination car-wash/car-wax product called 'TANNERY ONE-STEP WASH 'N WAX' states on the container that it 'waxes brilliantly with poly-silicones, as it washes.' Another such product is called 'PRO LIGHT TOUCH WASH & WAX.' Another such product is referred to as 'RAIN DANCE WASH & WAX CONCENTRATE.' Yet another such product is referred to as 'PREMIUM CAR WASH WITH WAX.' [FN2] A Volkswagen automobile catalogue refers to various car-cleaning products specially formulated for Volkswagen automobiles and notes that '. . . All purpose cleaner, car wash and wax, and touch-up paint keep it looking like new . . .'
*2 In addition, petitioner has pointed to respondent's specimens filed in connection with respondent's application to register and notes that the label indicates that respondent's product provides '36 WashWaxes.'
It is petitioner's position that the phrase 'wash and wax' is well known and commonly understood as a generic designation for the most basic type of maintenance that a car owner will undertake and that a car 'wash' and a car 'wax' are, similarly, generic words referring to products which perform washing and waxing functions. Petitioner argues that the designation involved herein is nothing more than the combination of two generic words, the combination of which is also generic, or at least highly descriptive of a combination 'wash' and 'wax' product. Petitioner contends that the record supports a conclusion that those in the car-care field use the terms 'wash and wax,' 'wash 'n wax' and 'wash & wax' as generic or common descriptive terms for the general class of products that perform both washing and waxing functions and that the term 'washwax' is the equivalent of these terms. Finally, petitioner maintains that even if the Board finds that 'washwax' is not the generic or common descriptive name of the goods, it is, nevertheless, so highly descriptive of them as to be incapable of indicating origin and, therefore, the registration should, in any event, be cancelled.
Respondent, on the other hand, argues that petitioner has not met its burden to show the incapability of respondent's registered mark to function as an indication of origin. Respondent contends that the opinion testimony of petitioner's witnesses as to the genericness of WASHWAX is of little evidentiary value; that the NEXIS excerpts made of record by petitioner, while showing third-party use of the 'phrase wash and wax,' do not show use of the term washwax; that, moreover, the NEXIS articles do not show use of 'wash and wax' in connection with a product but, rather, the phrase refers to a service in which a customer takes his car to a business establishment and the car is cleaned and polished. Respondent readily concedes the descriptive nature of the registered designation WASHWAX but argues that there has been no showing that consumers use said term generically or perceive said term as a generic designation, and that respondent has succeeded in combining two descriptive components into single unitary mark capable of indicating origin.
It is clear that a mark registered on the Supplemental Register need not function as an indicium of origin or be used as an indicium of origin. What is required is that such a mark be capable of distinguishing the goods or services. The mere possibility of trademark significance, no matter how remote, may not be disregarded if it could be possible, under certain circumstances, that the mark possess the capacity to distinguish one's goods. See 1 J. McCarthy, Trademarks and Unfair Competition, § 19:8(B) (2nd. ed. 1984). Terms that are precluded from registration on the Supplemental Register include generic designations, apt descriptive and common descriptive terminology for the goods in question and, if they can be differentiated from the foregoing, terms that are so highly descriptive of the goods as to be devoid of the capability of denoting origin in any one particular party in the trade. See: In re Dennison Manufacturing Co., 229 USPQ 141 (TTAB 1986) and cases cited therein.
*3 In the present case, there is no question that the term WASHWAX merely describes applicant's product as one that performs both the function of washing and waxing. Respondent does not dispute this but correctly notes that mere descriptiveness is not a fatal defect to marks on the Supplemental Register.
Looking at the record, we agree with respondent that the opinion testimony as to the generic nature of the mark sought to be cancelled is entitled to no probative value. The question of whether WASHWAX is generic and, therefore, incapable of indicating origin, is the ultimate issue to be determined and the Board is charged with deciding this issue based on the record presented. What the record does show is that a 'car wash' is a generic designation for products used to wash cars and, similarly, a 'car wax' is a generic designation for products used to wax cars. Petitioner has shown that it uses these terms generically in their ordinary sense in connection with petitioner's car-washing and car-waxing products. Petitioner has further shown that third parties also use these terms in their ordinary generic sense in connection with car-washing and waxing products. Moreover, the record shows significant third-party use of terms quite similar to the term sought to be registered, such as 'wash and wax,' 'wash 'n wax' and 'wash & wax' in connection with car-care products which simultaneously wash and wax an automobile. We agree with petitioner that while there is no evidence of any third-party use of the generic designations 'wash' and 'wax' written together as one term 'WASHWAX,' the combination of these generic terms into one term does not alter the character of the individual components and the commercial impression engendered by the designation 'WASHWAX,' as applied to a combination car-wash and car-wax product, is that of its individual generic elements. Reinforcing this commercial impression is applicant's own generic usage evidenced in the specimens of record indicating that the product provides '36 WashWaxes.' Thus, applicant's contention that the combination of the two terms into one somehow creates a distinctive combination capable of performing a source indicating function is belied by applicant's own treatment of the term in a generic, nonsource-indicating manner.
We conclude, therefore, that the genus of goods in issue in this case comprises a product which simultaneously washes and waxes a vehicle; that the record shows that the generic or common descriptive name for such a product is a 'wash and wax' product and that the term 'WASHWAX' is simply too similar to and indistinguishable from the generic designation to have the capacity to perform a trademark function, especially where, as here, registrant itself uses the term in a generic manner. Contrast: H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986).
Decision: The petition for cancellation is granted and Registration No. 1,281,049 will be cancelled in due course.
J. D. Sams
J. E. Rice
G. D. Krugman
Members, Trademark Trial and Appeal Board
FN1. Registration No. 1,281,049 issued June 5, 1984.
FN2. Petitioner's testimony is that this product is not currently in use. Therefore, this exhibit is not entitled to any probative value.