WD-40 Manufacturing Company

Trademark Trial and Appeal Board

Mar 28, 2008

No. 78817703 (T.T.A.B. Mar. 28, 2008)

Mailed:
March 28, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re WD-40 Manufacturing Company
________

Serial Nos. 78817680, 78817703 and 78826409
_______

Kathleen A. Pasulka of Procopio Cory Hargreaves & Savitch
LLP for WD-40 Manufacturing Company.

Lana H. Pham, Trademark Examining Attorney, Law Office 115
(Tomas V. Vlcek, Managing Attorney).
_______

Before Seeherman, Zervas and Bergsman, Administrative
Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:

On February 17, 2006, WD-40 Manufacturing Company
(“applicant”) filed two applications for registration on
the Principal Register under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), one for the mark NO-RUST SHIELD
(application Serial No. 78817680), and one for the mark
WD-40 NO-RUST SHIELD (application Serial No. 78817703).
Both marks are in standard character form and both
applications recite “lubricating oil and penetrating oil”
THIS OPINION IS NOT A
PRECEDENT OF THE
T.T.A.B.
Ser Nos. 78817680, 78817703 and 78826409
2
in International Class 4 in their identifications of goods.
On March 1, 2006, applicant filed a third application
(Serial No. 78826409) for registration on the Principal
Register under Section 1(b) for the mark

also for “lubricating oil and pentrating oil.” Applicant
has entered a disclaimer of “NO-RUST” in application Serial
No. 78817680 and a disclaimer of “NO RUST” in the remaining
applications.
Registration of all three marks has been refused under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), in
view of Registration No. 2072686 (renewed August 8, 2007)
for the mark RUST SHIELD (in typed form), with RUST
disclaimed, for “kitchen and bathroom liquid for consumers,
namely a hand-applied coating used in the home on enamel
and porcelain sinks, tubs, and shower enclosures to prevent
water rust stain development.” Registration of the two
marks containing the term WD-40 has also been refused under
Trademark Rule 2.36, 37 C.F.R. § 2.36, in view of
applicant’s failure to claim ownership of Registration
No. 0670503 for the mark WD-40 (in typed form, second
renewal on September 10, 1998) for “rust prevention and
Ser Nos. 78817680, 78817703 and 78826409
3
corrosion control, protective and decorative coatings.”
Applicant has, however, in response to the Examining
Attorney’s requirement, claimed ownership of two other
registrations, namely, Registration No. 1007258 for the
mark WD-40 in typed form for “lubricating oil and
penetrating oil” and Registration No. 3010487 for the mark

for “lubricating oil and penetrating oil.”1
After the refusals were made final, applicant filed
appeals to the Board. The Board consolidated proceedings
for purposes of briefing after applicant filed its brief in
each case; the examining attorney then filed her brief. As
discussed below, the refusals to register under Section
2(d) and the requirements under Trademark Rule 2.36 are
reversed.

1 In her final Office action in connection with the NO-RUST
SHIELD mark, the examining attorney also made final her
requirement that applicant provide additional product information
about its goods pursuant to Trademark Rule 2.61(b), 27 C.F.R.
2.61(b). However, in her brief, the examining attorney did not
address this requirement. We therefore consider the examining
attorney to have withdrawn her requirement for additional
information in the NO-RUST SHIELD application.
Ser Nos. 78817680, 78817703 and 78826409
4
Before addressing the merits of the refusals, we
consider one preliminary matter, i.e., the examining
attorney’s submission of an entry for “WD-40” from
wikipedia.org. Because of the nature of Wikipedia as a
collaborative online encyclopedia, a Wikipedia article at
any given time may contain significant misinformation.
Accordingly, “the Board will consider evidence taken from
Wikipedia so long as the non-offering party has an
opportunity to rebut that evidence by submitting other
evidence that may call into question the accuracy of the
particular Wikipedia information.” In Re IP Carrier
Consulting Group, 84 USPQ2d 1028 (TTAB 2007). In the
present case, the examining attorney submitted the
Wikipedia entry with her denial of applicant's request for
reconsideration. Inasmuch as applicant did not have an
opportunity to rebut the Wikipedia evidence, we accord it
no probative value.2
Likelihood of Confusion
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the facts in

2 While the opportunity to request remand to submit new evidence
is available to an applicant, the evidentiary record in an
application should be complete prior to the filing of an ex parte
appeal to the Board. Trademark Rule 2.142(d). Thus, in view of
the inherent limitations of Wikipedia entries, examining
attorneys should submit these entries prior to a request for
reconsideration.
Ser Nos. 78817680, 78817703 and 78826409
5
evidence that are relevant to the factors bearing on the
likelihood of confusion issue (the du Pont factors). See
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003); In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
We turn first to a consideration of the strength of
the cited registration, since that factor plays a
significant role in our analysis in this case.
Registrant’s mark is RUST SHIELD for “kitchen and bathroom
liquid for consumers, namely a hand-applied coating used in
the home on enamel and porcelain sinks, tubs, and shower
enclosures to prevent water rust stain development.”
Registrant has recognized that RUST is a descriptive term
and has disclaimed it. See In re Pollio Dairy Products
Corp., 8 UPSQ2d 2012 (TTAB 1988); In re Ampco Foods, Inc.,
227 USPQ 331 (TTAB 1985). “Shield” is defined in relevant
part in The American Heritage Dictionary of the English
Language (4th ed.) as “a thing that provides protection.”
See definition submitted by the examining attorney with the
final Office action. Registrant’s goods as identified in
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the identification of goods function to prevent rust
stains; the goods hence function as a shield against rust
stains. Accordingly, registrant’s mark is highly
suggestive of its goods, and therefore the registration is
entitled to only a very limited scope of protection. This
du Pont factor favors applicant.
With that in mind, we turn to a consideration of the
goods. The examining attorney has argued that both
lubricants and coatings have similar characteristics. The
only support the examining attorney has submitted for this
position is a “News Story” from thomasnet.com regarding a
lubricating oil. The article is entitled “Lubricating Oil
delivers dry protective coating” and depicts a product with
the designation “Lube-It All.” While the article states
that the product “instantly forms a dry coating that
penetrates fine scratches and gaps” and that it
“lubricate[s] all metal surfaces to prevent rust and
corrosion,” it also states that the product is for use on
metal, plastic and electrical materials and for automotive
and heavy-duty surfaces. Because respondent’s
identification specifically limits use of respondent’s
coating to enamel and porcelain sinks, tubs and shower
enclosures, the article has little probative value. There
is hence no compelling evidence to support the examining
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attorney’s contention that lubricating oil and coatings
(presumably including registrant’s coating) have similar
characteristics.
The examining attorney also argues that both
registrant’s and applicant's goods are used to prevent
rust. This is not correct; registrant’s goods are used to
prevent the development of rust stains, which are not
actually rust, due to water on enamel and porcelain sinks,
tubs and shower enclosures, rather than the development of
rust per se. In addition, nothing in the record indicates
that enamel and porcelain kitchen and bathroom fixtures
rust.
Further, the examining attorney relies on several
third-party registrations which she contends recite both
coatings and lubricating and/or penetrating oil in their
identifications of goods. Third-party registrations that
individually cover a number of different goods and that are
based on use in commerce serve to suggest that the listed
goods are of a type which may emanate from a single source.
See In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB
1993). She listed the following third-party registrations
in her brief and, because we presume that she listed those
she felt were most probative, we have concentrated our
discussion on them:
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Registration No. 1556372 for, inter alia,
penetrating oil and lubricants for machinery and
non-machinery applications (Int. Cl. 4); and
polyurethane wood and metal finish coatings,
corrosion resistant coatings (Int. Cl. 2);

Registration No. 1141941 for, inter alia,
corrosion resistant coating (Int. Cl. 2); and
penetrating oil and lubricants for machinery and
other non-machinery applications (Int. Cl. 4);

Registration No. 1603246, for, inter alia, epoxy
antiskid coating, epoxy patching and resurface
preparations for concrete and masonry, floor
coating compositions, namely, concrete and
terrazzo sealing and curing compositions, high
gloss metal floor finishing composition, stainless
steel rust and corrosion proof coating, and
general purpose coating for industrial and
automotive devices (Inc. Cl. 2); and “petroleum
based products for use on equipment and roads,
namely, … multipurpose grease, [and] penetrating
oil” (Int. Cl. 4); and

Registration No. 2439049 for, inter alia,
preservatives against rust and oxidation in the
nature of a coating (Int. Cl. 2); and all
purpose penetrating oils (Int. Cl. 4).

We do not find these registrations particularly probative
because they do not specify that the coatings are used in
connection with enamel or porcelain to prevent rust stains
or generally in connection with the same type of goods
specified in registrant’s registration.3

3 For the same reason, applicant's registrations (for dissimilar
marks) on which the examining attorney relies have little
probative value; they do not specify the nature or use of the
recited coatings. Additionally, the examining attorney’s
argument that the present goods are related because applicant's
website shows that applicant produces a variety of goods is not
well taken. The webpages of record from the website do not show
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We turn next to a consideration of the marks. We
acknowledge that the differences between RUST SHIELD and
NO-RUST SHIELD are minor. However, in this case where the
registered mark must be accorded limited protection in view
of its highly suggestive nature, and because of the
differences in the goods, even the limited differences in
the marks are enough to avoid a likelihood of confusion.
Additionally, applicant’s inclusion of its house mark WD-40
in two of its marks further distances these two marks from
the cited mark. As applicant has pointed out, the Board
has found in the past that confusion is not likely when a
house mark has been added to a highly suggestive registered
mark. Specifically, in Knight Textile Corp. v. Jones
Investment Co., Inc., 75 USPQ 1313 (2005), involving the
mark NORTON MCNAUGHTON ESSENTIALS, the Board stated:
[W]e find that purchasers are able to distinguish
among various ESSENTIAL marks by looking to other
elements of the marks. In this case, that other
element is the presence of applicant's house mark
NORTON MCNAUGHTON. We find that ESSENTIALS is a
highly suggestive term as applied to clothing,
and that applicant's addition of its house mark
NORTON MCNAUGHTON renders the two marks
sufficiently distinguishable, when viewed in
their entireties, that confusion is not likely to
occur. (Case citations omitted).

any goods similar to registrant’s coating for preventing rust
stain development.
Ser Nos. 78817680, 78817703 and 78826409
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Id. at 1316. We believe that the same holds true here, and
that the addition of applicant's house mark renders
applicant's mark sufficiently distinguishable from the
cited mark when the marks are viewed in their entireties.
Thus, the du Pont factor regarding the similarity or
dissimilarity of the marks is resolved in applicant's
favor.
In view of the foregoing, and because of the weakness
of RUST SHIELD and the limited scope of protection to which
the cited registration is entitled, we find that the
examining attorney has not met her burden of establishing
prima facie that there is a likelihood that applicant's
mark for the goods recited in its application will be
confused with registrant’s mark for the goods set forth in
its registration. The Section 2(d) refusals for each of
the three applications involved in this appeal are
reversed.
Claim of Ownership of Registration
Trademark Rule 2.36 provides that “[p]rior
registrations of the same or similar marks owned by the
applicant should be identified in the application.” In
response to the requirement by the examining attorney in
the first Office action that applicant submit a claim of
ownership of three registrations, applicant claimed two of
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the registrations. Even though the examining attorney
repeated her requirement for a claim of ownership of the
third registration in each of the two actions she issued
following the first Office action, applicant did not
address this requirement in any of the papers it filed,
including in its appeal brief.
TMEP § 812 addresses Rule 2.36. It explains that
“[t]he rule does not precisely define when an applicant
should claim ownership of prior registration(s)”; and that
“[t]he main purpose of the rule is to provide the examining
attorney with information necessary for proper
examination.” The examining attorney did not specify in
making and repeating her requirement why the claim of
ownership of the specific registration was necessary for
proper examination. Although in her brief she mentions
that “[n]ormally, identification of a registration is
necessary because the registration would, if not owned by
the applicant, be a basis for refusal under §2(d) of the
Act,” she did not offer this explanation in any of her
Office actions and did not explain why a Section 2(d)
refusal would issue for the third registration when
applicant had claimed ownership of the other two
registrations. Nor did she give any other explanation as
to why the claim of ownership of that registration would
Ser Nos. 78817680, 78817703 and 78826409
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provide any necessary information for examination. Because
it was the burden of the examining attorney to explain why
she required the claim of ownership for this particular
registration and she did not do so, we find that applicant
sufficiently complied with the requirement for a claim of
ownership by listing the two registrations, and reverse her
requirement for a claim of ownership under Rule 2.36.
Decision: The refusals of registration in application
Serial Nos. 78817680, 78817703 and 78826409 under Section
2(d), and the requirements under Trademark Rule 2.36 in
application Serial Nos. 78817703 and 78826409, are all
reversed.