Valvoline Licensing and Intellectual Property LLC

Trademark Trial and Appeal Board

Jan 27, 2020

87707717 (T.T.A.B. Jan. 27, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: January 27, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Valvoline Licensing and Intellectual Property LLC
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Serial No. 87707717
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Michael G. Frey of Wood Herron & Evans LLP,
for Valvoline Licensing and Intellectual Property LLC.
Cameron L. McBride, Trademark Examining Attorney, Law Office 106,
Mary Sparrow, Managing Attorney.
_____

Before Ritchie, Kuczma, and Larkin,
Administrative Trademark Judges.

Opinion by Larkin, Administrative Trademark Judge:
Valvoline Licensing and Intellectual Property LLC (“Applicant”) seeks
registration on the Principal Register of the proposed mark shown below (“EASY
POUR” disclaimed)

Serial No. 87707717
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for “automotive lubricants; automotive greases; motor oils” in International Class 4.1
The Trademark Examining Attorney has refused registration of Applicant’s mark
on two grounds. The first ground, under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), is that Applicant’s proposed mark so resembles the registered mark shown
below (“EASY POUR” disclaimed)

for “antifreeze; coolants for vehicle engines; windshield antifreeze fluids; windshield
deicer fluids” in International Class 1,2 as to be likely, when used on or in connection
with the goods identified in the application, to cause confusion, to cause mistake, or
to deceive.
The second ground, under Sections 1, 2, and 45 of the Trademark Act, 15 U.S.C.
§§ 1051, 1052, and 1127, is that Applicant’s proposed mark fails to function as a
trademark as it is used on Applicant’s specimens of use.

1 Application Serial No. 87707717 was filed on December 4, 2017 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based on Applicant’s claimed first use of the mark and
first use of the mark in commerce at least as early as September 28, 2017. Applicant describes
its proposed mark as “the words ‘EASY POUR’ in a stacked format adjacent to the spout of
an open oil bottle top, with a drop of liquid dripping out of the spout.” Color is not claimed as
a feature of the mark.
2 Registration No. 2626334 issued on September 24, 2002 and has been renewed. The
registrant describes its mark as “includ[ing] a graphic depiction of a partial container pouring
liquid.”
Serial No. 87707717
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When the Examining Attorney made the refusals final, Applicant appealed and
requested reconsideration, which was denied. Applicant and the Examining Attorney
have filed briefs.3 We affirm the failure-to-function refusal to register and because we
find that Applicant’s proposed mark does not function as one, we do not reach the
likelihood-of-confusion refusal.
I. Record on Appeal4
The record on appeal includes Applicant’s specimens of use, two of which are
reproduced below
5

3 Citations in this opinion to the briefs refer to TTABVUE, the Board’s online docketing
system. Turdin v. Tribolite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014). Specifically, the
number preceding TTABVUE corresponds to the docket entry number, and any numbers
following TTABVUE refer to the page number(s) of the docket entry where the cited materials
appear.
4 Citations in this opinion to the application record, including the request for reconsideration
and its denial, are to pages in the Trademark Status & Document Retrieval (“TSDR”)
database of the United States Patent and Trademark Office (“USPTO”).
5 December 4, 2017 Specimen of Use at TSDR 1.
Serial No. 87707717
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6
and the following additional materials:
• TSDR records regarding the cited registration, made of record by the
Examining Attorney;7
• Third-party registrations,8 and third-party webpages,9 which the Examining
Attorney offers to show that the involved goods are offered by the same
companies under the same marks, and other third-party webpages, which the

6 Id. at TSDR 3.
7 April 18, 2018 Office Action at TSDR 2-4.
8 Id. at TSDR 5-29.
9 November 8, 2018 Final Office Action at TSDR 2-7.
Serial No. 87707717
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Examining Attorney offers to show how the words EASY POUR have been
touted as product features in various industries,10
• Dictionary definitions of “easy” and “pour,” made of record by the Examining
Attorney;11
• An article entitled Off Brands: Understanding the terrible spelling and
punctuation in corporate names, by Matthew J.X. Malady, made of record by
Applicant;12
• The specimen of use submitted to obtain the cited registration, made of record
by Applicant;13 and
• Records from the USPTO’s Trademark Electronic Search System (“TESS”)
database regarding a third-party Supplemental Register registration of EASY
POUR for dietary supplements for pets, and a photograph of the products sold
under that mark, made of record by Applicant.14
II. Failure-to-Function Refusal
A. Applicable Law
“The Trademark Act is not an act to register mere words, but rather to register
trademarks. Before there can be registration, there must be a trademark, and unless
words have been so used they cannot qualify.” In re Bose Corp., 546 F.2d 893, 192

10 Id. at TSDR 8-11.
11 April 18, 2018 Office Action at TSDR 30-31.
12 October 17, 2018 Response to Office Action at TSDR 10-13.
13 April 18, 2019 Request for Reconsideration at TSDR 16.
14 Id. at 17-19.
Serial No. 87707717
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USPQ 213, 214 (CCPA 1976). The “law pronounced in the Bose case is just as
applicable to pictures and illustrations as it is to words: [The] Trademark Act is for
the registration, not the creation, of trademarks.” In re Keep A Breast Found., 123
USPQ2d 1869, 1879 (TTAB 2017) (citing In re Int’l Spike, Inc., 196 USPQ 447, 449
(TTAB 1977)).
Sections 1, 2, and 45 of the Trademark Act provide the statutory basis for refusal
to register subject matter that fails to function as a trademark. Id. Section 45 of the
Trademark Act defines a “trademark” as any “word, name, symbol, or device, or any
combination thereof—(1) used by a person . . . to identify and distinguish his or her
goods . . . from those manufactured or sold by others, and to indicate the source of the
goods, even if that source is unknown.” 15 U.S.C. § 1127. The USPTO “is statutorily
constrained to register matter on the Principal Register only if it functions as a
mark.” Keep A Breast Found., 123 USPQ2d at 1879. “[N]ot every designation adopted
with the intention that it performs a trademark function and even labelled as a
trademark necessarily accomplishes that purpose . . . .” Id. (quoting Am. Velcro, Inc.
v. Charles Mayer Studios, Inc., 177 USPQ 149, 154 (TTAB 1973)).
“[T]he central question in determining whether Applicant’s proposed mark
functions as a [trademark] is the commercial impression it makes on the relevant
public (e.g., whether the term sought to be registered would be perceived as
identifying the source of the [goods]).” Id. (citing In re Aerospace Optico, Inc., 78
USPQ2d 1881, 1882 (TTAB 2006)). “To make this determination we look to the
specimens and other evidence of record showing how the designation is actually used
Serial No. 87707717
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in the marketplace.” Id. (quoting In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (TTAB
2010)).
B. Arguments From Applicant and the Examining Attorney
1. The Basis for the Failure-to-Function Refusal
The Examining Attorney contends that Applicant’s proposed mark fails to
function as one because “it simply touts the benefits of selecting Applicant’s goods
over other goods, and [ ] does not have any source-identifying function.” 9 TTABVUE
19. He clarifies “that it is the way that the mark is used on the specimen of record
that creates the issue, rather than anything inherent as to the nature of the mark.”
Id.
2. Applicant’s Arguments
Applicant offers multiple arguments in support of its position that the proposed
mark functions as one. First, Applicant “perceives no appreciable or legally
significant difference between the way its mark appears on its products and the
manner in which the cited mark PRESTONE E-Z POUR and Design is used on the
specimens of record associated with that registration.” 7 TTABVUE 19. Applicant
focuses on the similar positioning of the claimed marks on the respective products:
Serial No. 87707717
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Id. at 20. Applicant states that both “marks appear on the bottles in which the goods
are contained,” and that both marks “are located near the top of the container, near
– but not adjacent to – the spout through which the goods are poured.” Id. at 19.
Applicant argues that “[a]s this manner of use was sufficient to function as a
trademark in the Prestone case, Applicant sees no reason why its similar use does
not also function as a mark.” Id. at 20.
Second, Applicant “maintains that its composite mark would be perceived by
consumers as a source identifier.” Id. Applicant argues that the “composite mark,
consisting of both the words and illustrative elements . . . is not purely informational”
because it “presents this information in a unique manner that is exclusive to
Applicant.” Id. Applicant notes that the claimed mark “appears on a number of
different products offered by the Applicant,” and claims that “consumers seeing these
various types of motor oil in the stores will recognize the composite mark on the
different products as another indication that all originate from a common source.” Id.
Serial No. 87707717
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Third, Applicant argues that its claimed mark is set off from other material on its
packaging and is eye-catching, and is thus likely to be noticed by consumers, citing
the Board’s non-precedential decision in In re The Language Workshop of
Children/Cercle Franco Americain, Inc., 2003 WL 21996100 (TTAB August 14, 2003).
Id. at 21. Applicant devotes considerable attention to the third-party examples of use
of “Easy Pour” made of record by the Examining Attorney and reproduced below:

Id. Applicant argues that its use is “far more analogous to that employed by Prestone”
than it is to these examples because while its proposed mark and the Prestone mark
appear on the respective packages, they “are not directly linked to the package spouts
through which the product would be poured,” id., and “where the wording does not
appear next to the feature, the link is not as intuitive.” Id. at 22. Applicant also argues
that its proposed mark “contains a design element and is a composite whole, rather
than simply informational wording,” and that “[n]o other wording appears with EASY
POUR to give the terms any clear context or to link the terms to a particular product
feature.” Id.
Serial No. 87707717
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Fourth, Applicant relies on Supplemental Register Registration No. 5211139 for
the mark EASY POUR for dietary supplements for pets,15 which Applicant contends
issued based on the specimen of use shown below:

Applicant argues that the “existence of this registration demonstrates that the
Trademark Office has already found that the phrase EASY POUR standing alone,
when used on product packaging with a spout, can function as a mark.” Id. at 23.
Applicant further argues that “it is apparent that this type of use constitutes
trademark use, or (stated another way) that a mark used in this manner functions as
a trademark,” id. at 24, because the mark “appears as a ‘tag’ that is ‘removed from’
other material on the label, and is ‘eye-catching.’” Id.
Finally, Applicant argues that the USPTO’s “treatment of the Prestone and
[Supplemental Register] marks should cast some doubt as to whether Applicant’s

15 April 18, 2019 Request for Reconsideration at TSDR 17-19.
Serial No. 87707717
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mark fails to function as a mark,” and that any such doubt should be resolved in its
favor. Id. at 24.
3. The Examining Attorney’s Arguments
The Examining Attorney argues that Applicant’s bases for traversing the refusal
to register are unavailing. He first argues that the Supplemental Register
registration of EASY POUR does not bind him or the Board because each application
must be considered on its own merits and because “trademark rights are not static,
and eligibility for registration must be determined on the basis of the facts and
evidence in the record at the time registration is sought, which includes during
examination and any related appeal.” 9 TTABVUE 13.
The Examining Attorney next rejects Applicant’s argument “that the composite
mark will be perceived as a source-identifier because it is presented in a manner that
is exclusive to Applicant and it is set off from other material on the product label”
because “whether a designation functions as a mark depends on the commercial
impression it makes on the relevant public,” id. at 14, and “as shown in the pieces of
evidence, consumers are used to seeing this type of designation appear near the top
of a bottle or packaging, and the mark in this case is not necessarily any larger or
more dominant than any of the wording or designs on the labels.” Id. at 15.
The Examining Attorney concludes that “the way that the mark is being used on
the goods does not function as a source-identifier, and will only be seen as touting a
feature of the goods, as seen in the submitted specimens and the evidence of record.”
Id.
Serial No. 87707717
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C. Analysis of Failure-to-Function Refusal
Applicant “recognizes that the Trademark Office is not bound by past decisions
regarding registration, and that the registration of these other marks does not
mandate registration of its own mark,” 7 TTABVUE 23, but nevertheless relies
heavily on the fact that the USPTO issued the cited Principal Register registration
for antifreeze, coolants for vehicle engines, windshield antifreeze fluids, and
windshield deicer fluids, and the Supplemental Register registration of EASY POUR
for dietary supplements for pets. Applicant’s reliance on these registrations is
misplaced for two reasons.
First and foremost, as Applicant acknowledges, it “is axiomatic that we must
decide each case on its own merits,” In re United Trademark Holdings, Inc., 122
USPQ2d 1796, 1800 (TTAB 2017), and the registrability decisions reflected in the
issuance of the two registrations, which involved different marks on different records,
do not obligate the USPTO to issue a registration of Applicant’s proposed mark if the
record here shows that the mark is not eligible for registration. See, e.g., In re
Omniome, Inc., 2020 BL 3222, *10 (TTAB 2020) and cases cited therein.
Second, these registrations are materially different from the registration that
Applicant seeks. The issuance of the Principal Register registration of the cited
composite mark for various automotive fluids, which includes the PRESTONE house
mark, a design, and the phrase E-Z POUR, tells us nothing about whether Applicant’s
proposed mark functions as a mark. As a condition to issuance of the cited
registration, the USPTO required a disclaimer of the words EASY POUR (the
Serial No. 87707717
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phonetic equivalent of E-Z POUR in the cited mark), which indicates that the USPTO
found, and the registrant acknowledged, that E-Z POUR and its equivalent EASY
POUR are not source-identifying subject matter. There is nothing in the record to
suggest that the USPTO would have issued a registration of the cited mark if it did
not contain what Applicant describes as “the prominent and distinctive house mark
PRESTONE,” 7 TTABVUE 16, and Applicant does not seek registration of a
composite mark that includes its VALVOLINE house mark, which is not at issue
here.
The existence of the Supplemental Register registration of EASY POUR similarly
tells us nothing about whether Applicant’s proposed mark functions as one. The
issuance of this registration establishes only, as Applicant puts it, that on the basis
of the record in that case, the USPTO “found that the phrase EASY POUR standing
alone, when used on product packaging with a spout, can function as a mark.” 7
TTABVUE 23 (emphasis in original). Applicant does not seek registration on the
Supplemental Register because it claims that its proposed mark “can function as a
mark,” id., but instead seeks registration on the Principal Register because it claims
that its proposed mark does function as a mark.
Applicant’s several arguments regarding the placement and prominence of the
proposed mark on its specimens are also unpersuasive. It is well-settled that in “every
case, the question is not whether the mark has been associated with the goods by a
particular mode or manner, but whether the matter sought to be registered performs
the function of a trademark by signifying to purchasers the source of the goods sold
Serial No. 87707717
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or offered for sale.” In re Paramount Pictures Corp., 213 USPQ 1111, 1115 (TTAB
1982). “[A]s Applicant has admitted through its disclaimer, the wording EASY POUR
is descriptive and informational in nature.” 7 TTABVUE 22.16 Applicant’s specimens
all identify the source of the goods through the prominent display of Applicant’s
VALVOLINE house mark and stylized “V” mark in a central position within an oval
design, as shown again below:

16 Applicant’s attempt to distinguish its use of the words EASY POUR from the third-party
uses of “easy pour” on the ground that those uses “all show the terminology ‘easy pour’ in
very close proximity to the package spouts,” and because its use is “not directly linked to the
package spouts through which the product would be poured,” 7 TTABVUE 21-22, is specious.
Although the words EASY POUR do not appear on Applicant’s package as close to the actual
package spout as they do on the third-party packages, they appear in the proposed mark
right next to a depiction of the spout in use.
Serial No. 87707717
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Like the word “NEW” to the upper left of Applicant’s word and letter marks, the
proposed mark is positioned to the upper right of those marks, near the bottle handle,
which, like the spout shown in the proposed mark, is a package feature that comes
into play when lubricants are poured from the package.
Applicant’s reliance on the non-precedential decision in In re The Language
Workshop of Children is similarly unavailing. Non-precedential decisions are not
binding on the Board, In re Procter & Gamble Co., 105 USPQ2d 1119, 1120-21 (TTAB
2012), but the cited case is readily distinguishable in any event. As shown below, the
display of the claimed mark in that case was more central and prominent than the
display of the proposed mark here, and the claimed mark was denominated as such
by an accompanying trademark symbol that signaled to consumers that the applicant
claimed proprietary rights in the words “For Tots™”:

As discussed above, Applicant’s proposed mark is set off from the center of the
package and, unlike the VALVOLINE and V marks that occupy the center, it is
Serial No. 87707717
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unaccompanied by any indication that would signal to consumers that Applicant also
claims that the proposed mark is proprietary to it.
We also find unpersuasive Applicant’s argument that “[n]o other wording appears
with EASY POUR to give the terms any clear context or to link the terms to a
particular product feature.” 7 TTABVUE 22. No such verbal context or link is needed.
Applicant acknowledges that “[u]se of the products is accomplished by pouring goods
out of the bottles,” id. at 11, and that “the wording EASY POUR is descriptive and
informational in nature.” Id. at 22. The wording could not plausibly be understood to
mean anything other than that Applicant’s package makes it easy to pour the
identified lubricants that are contained within. In addition, as noted above, the
design element in the proposed mark, which Applicant describes as “the spout of an
open oil bottle top, with a drop of liquid dripping out of the spout,”17 visually
illustrates one of the product features that contributes to the ease with which
lubricants can be poured, and thus visually “link[s] the terms to a particular product
feature.” Id.

Applicant’s specimens include the shelf talker depicted below:

17 December 4, 2017 Application at TSDR 1.
Serial No. 87707717
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18
This specimen states that it is “INTRODUCING VALVOLINE’S NEW EASY POUR
DESIGN” and displays four particular features of the “new easy pour design.” The
text accompanying the pictures is blurry and hard to read, but one feature is the
“Easy-Pull Tab” and another appears to the “Precision Pour Spout.” A third feature
also appears to involve the portion of Applicant’s packaging shown in the applied-for
mark. This specimen removes any doubt that the words “EASY POUR” and the spout
design that comprise the proposed mark do nothing more than communicate that the

18 Applicant’s December 4, 2017 Specimen of Use at TSDR 1.
Serial No. 87707717
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VALVOLINE packages on which they appear make it easy to pour Applicant’s
lubricants from the packages. We agree with the Examining Attorney that
Applicant’s proposed mark “will only be seen as touting a feature of [the] goods, as
seen in the submitted specimens and the evidence of record.” 9 TTABVUE 15.
The proposed mark fails to function as a mark on the specimens of record and it
is thus ineligible for registration on the Principal Register. Accordingly, we need not
reach the likelihood-of-confusion ground for refusal.
Decision: The failure-to-function refusal to register is affirmed.