Alfwear Inc.

Trademark Trial and Appeal Board

Mar 9, 2021

88458657 (T.T.A.B. Mar. 9, 2021)

This Opinion is Not a
Precedent of the TTAB

Mailed: March 9, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Alfwear Inc.
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Serial No. 88458657
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Trent Baker of Baker IP PLLC,
for Alfwear Inc.
Tracy L. Fletcher, Trademark Examining Attorney, Law Office 115,
Daniel Brody, Managing Attorney.
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Before Taylor, Bergsman and Kuczma,
Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:
Alfwear Inc. (“Applicant”) seeks registration on the Principal Register of the
standard character mark KÜHL for “Waterproofing chemical compositions;
Waterproofing chemical compositions for articles of fabric; Waterproofing chemical
compositions for articles of leather; Leather-waterproofing chemicals; Textile-
waterproofing chemicals” in International Class 1.1

1 Application Serial No. 88458657 was filed on June 4, 2019, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s claimed date of first use of the
mark anywhere and in commerce of December 9, 2016. The English translation of KÜHL in
the mark is cool.
Serial No. 88458657
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The Trademark Examining Attorney has refused registration of Applicant’s mark
under Trademark Act Sections 1 and 45, 15 U.S.C. §§ 1051, 1127, on the basis that
the specimen does not show the applied-for mark in the drawing in use in commerce
with the goods identified in the application. See also 37 C.F.R. §§ 2.34(a)(1)(iv)
(requirement for one specimen showing how the applicant uses the mark), 2.56(a)
(requirement for specimen showing the mark as used on or in connection with the
goods); TMEP §§ 904, 904.07(a). The specimen of record is shown below:

After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board. Both Applicant and the Examining Attorney filed briefs.2 We
affirm the refusal to register.

2 The “FACTS” section of Applicant’s brief identifies the involved goods as “low voltage
electrical switches in the nature of automatic transfer switches for use in transferring the load
from primary source to standby or secondary sources in case of emergency for critical power
Serial No. 88458657
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I. Preliminary Matters
A. Evidentiary Issue
To support its argument that “the USPTO has allowed similar marks directed to
WAX products to be classified class 1,” Applicant, for the first time with its reply brief,
referenced two third-party registrations purportedly for, among other items,
“[w]aterproofing chemical compositions for articles of leather” and “[w]aterproofing
chemical compositions for articles of fabric” including embedded images of the
specimens submitted with the underlying applications for those registrations.3
Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d), provides that “[t]he record in the
application should be complete prior to the filing of an appeal” and that “[e]vidence
should not be filed with the Board after the filing of a notice of appeal.” See also In re
Midwest Gaming & Entm’t LLC, 106 USPQ2d 1163, 1165 n.3 (TTAB 2013) (new
evidence submitted with reply brief is “untimely and therefore not part of the record
for this case”); In re HSB Solomon Assocs. LLC, 102 USPQ2d 1269, 1274 (TTAB 2012)
(printouts submitted with reply brief not considered); In re Wada, 48 USPQ2d 1689
n.2 (TTAB 1998) (evidence submitted with reply brief not considered), aff’d, 194 F.3d
1297, 52 USPQ2d 1539 (Fed. Cir. 1999). This evidence is manifestly untimely.

installations in International Class 9.” Emphasis supplied. This recitation is obviously in
error. We have based this decision on the identification of goods listed in Office records and
otherwise discussed in the briefs.
3 Applicant did not submit copies of the third-party registrations or specimens with its reply
brief, nor as stated, was this evidence made of record during prosecution of the application.
Serial No. 88458657
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Moreover, by attempting to introduce new evidence with its reply brief, Applicant
has effectively shielded this material from review and rebuttal by the Examining
Attorney. In re Zanova, Inc., 59 USPQ2d 1300, 1302 (TTAB 2001). Accordingly, we
give this new evidence and corresponding arguments no further consideration.
B. Issue on Appeal
Although the Examining Attorney and Applicant ultimately argued their
respective positions regarding whether the specimen of record supports trademark
use of the mark on the identified goods, many of their arguments have
inappropriately focused on classification issues. We remind both Applicant and the
Examining Attorney that the International Classification System is for
administrative and searching purposes only, and whether Applicant’s goods are
properly classified in International Class 1 or International Class 4 does not
determine whether the specimen of record shows appropriate trademark use of the
applied-for mark KÜHL for Applicant’s goods as they are identified in the application.
Cf. In re Faucher Indus. Inc., 107 USPQ2d 1355, 1357 (TTAB 2013) (citing In re Tee-
Pak, Inc., 164 USPQ 88 (TTAB 1969) (“The sole purpose of classification is for internal
administration within the Patent Office”). Having said that, we acknowledge and
have considered the arguments and evidence, including references to the
International Class 1 and International Class 4 headings and the types of goods
covered by each, including the explanations and exclusions, to the extent they
Serial No. 88458657
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illuminate whether the specimen of record shows use in connection with the identified
goods.4
II. Applicable Law
Under Section 45 of the Trademark Act, 15 U.S.C. § 1127, a trademark is used in
commerce when “it is placed in any manner on the goods or their containers or the
displays associated therewith or on the tags or labels affixed thereto, or the nature of
the goods makes such placement impracticable, then on document associated with
the goods or their sale ....” Section 1(d)(1) of the Trademark Act, 15 U.S.C.
§ 1051(d)(1), requires an applicant to file a “specimen” or facsimile “of the mark as
used in commerce.” See also Trademark Rule 2.56(a), 37 C.F.R. § 2.56(a) (“An
application under section 1(a) of the Act … must include one specimen per class
showing the mark as actually used in commerce on or in connection with the goods or
services identified.”)
III. Arguments and Evidence
The Examining Attorney observes that the specimen of record is a color image of
a webpage screen capture showing the applied-for mark used on bars of wax for
waterproofing fabric clothing. She then argues that bars of wax for waterproofing

4 We would be remiss if we failed to note that the issues on appeal could have been clarified
if either Applicant or the Examining Attorney had engaged in a telephone conversation. As
demonstrated by the specimen of record, the goods for which Applicant seeks registration
clearly are waxes for waterproofing clothing. While we acknowledge that the identification
in the application was an acceptable identification as originally filed, and that Applicant
could not have amended its identification of goods to seek registration of waxes, an in-depth
discussion focusing on the identification as it relates to the specimens would have been
helpful.

Serial No. 88458657
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clothing are not waterproofing chemicals or chemical compositions and, therefore, the
specimen does not evidence use of the marks on the identified goods.5
The Examining Attorney primarily points to the TRADEMARK MANUAL OF
EXAMINING PROCEDURE (TMEP) Section 1401.02 (Oct. 2018), which sets outs the
various headings of international classes and general remarks, to support her
position. She particularly references the following:
CLASS 1 (Chemicals)
Chemicals for use in industry, science and photography, as
well as in agriculture, horticulture and forestry;
unprocessed artificial resins, unprocessed plastics; fire
extinguishing and fire prevention compositions; tempering
and soldering preparations; substances for tanning animal
skins and hides; adhesives for use in industry; putties and
other paste fillers; compost, manures, fertilizers; biological
preparations for use in industry and science.
Explanatory Note
Class 1 includes mainly chemical products for use in industry, science and
agriculture, including those which go to the making of products belonging to other
classes.
This Class includes, in particular:
sensitized paper;
tyre-repairing compositions;
salt for preserving other than for foodstuffs;
certain additives for use in the food industry, for example,
pectin, lecithin, enzymes and chemical preservatives;
certain ingredients for use in the manufacture of cosmetics
and pharmaceuticals, for example, vitamins, preservatives
and antioxidants;

5 6 TTABVUE 4.
Serial No. 88458657
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certain filtering materials, for example, mineral
substances, vegetable substances and ceramic materials in
particulate form.
This Class does not include, in particular:
raw natural resins (Cl. 2), semi-processed resins (Cl. 17);
chemical preparations for medical or veterinary purposes
(Cl. 5);
fungicides, herbicides and preparations for destroying
vermin (Cl. 5);
adhesives for stationery or household purposes (Cl. 16);
salt for preserving foodstuffs (Cl. 30);
straw mulch (Cl. 31).
CLASS 4 (Lubricants and fuels)
Industrial oils and greases, wax; lubricants; dust absorbing, wetting and binding
compositions; fuels and illuminants; candles and wicks for lighting.
Explanatory Note
Class 4 includes mainly industrial oils and greases, fuels and illuminants.
This Class includes, in particular:
oils for the preservation of masonry or of leather
raw wax, industrial wax;
electrical energy;
motor fuels, biofuels;
non-chemical additives for fuel;
wood for use as fuel.
This Class does not include, in particular:
certain special industrial oils and greases, for example, oils
for tanning leather (Cl. 1), oils for the preservation of wood,
anti-rust oils and greases (Cl. 2), essential oils (Cl. 3);
massage candles for cosmetic purposes (Cl. 3) and
medicated massage candles (Cl. 5);
Serial No. 88458657
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certain special waxes, for example, grafting wax for trees
(Cl. 1), tailors’ wax, polishing wax, depilatory wax (Cl. 3),
dental wax (Cl. 5), sealing wax (Cl. 16).
The Examining Attorney also refers to criteria that the USPTO and applicants
should apply if they cannot classify a product without the aid of the List of Classes.
Id.
(a) A finished product is in principle classified according
to its function or purpose. If the function or purpose of a
finished product is not mentioned in any class heading, the
finished product is classified by analogy with other
comparable finished products, indicated in the
Alphabetical List. If none is found, other subsidiary
criteria, such as that of the material of which the product
is made or its mode of operation, are applied.
(b) A finished product which is a multipurpose composite
object (e.g., clocks incorporating radios) may be classified
in all classes that correspond to any of its functions or
intended purposes. If those functions or purposes are not
mentioned in any class heading, other criteria, indicated
under (a), above, are to be applied.
(c) Raw materials, unworked or semi-worked, are in
principle classified according to the material of which they
consist.
(d) Goods intended to form part of another product are in
principle classified in the same class as that product only
in cases where the same type of goods cannot normally be
used for another purpose. In all other cases, the criterion
indicated under (a), above, applies.
(e) When a product, whether finished or not, is classified
according to the material of which it is made, and it is made
of different materials, the product is in principle classified
according to the material which predominates.
(f) Cases adapted to the product they are intended to
contain are in principle classified in the same class as the
product.
Serial No. 88458657
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In traversing the refusal, Applicant argues that:
[T]he specimen shows a solid chemical product which is
appropriately classified in class 001 for the following
reasons. Animal wax is composed of multiple chemicals
including myricyl palmitate ( see - https://en.wikipedia.org/
wiki/Wax#Animal_waxes). Chemicals may be present in
natural and organic materials in addition to synthetic
materials. Since animal wax includes chemicals (myricyl
palmitate) and is used for “waterproofing” it should be
allowed as a good under class 001.
Applicant brief.6 As support, Applicant included the following excerpt from Wikipedia
discussing “animal waxes.”7

We also take judicial notice of the following definitions:8

“Chemical” is defined as:
1 : of, relating to, used in, or produced by chemistry or the phenomena of chemistry
2 a : acting or operated or produced by chemicals
// a chemical fire extinguisher

b : detectable by chemical means9

6 4 TTABVUE 4. During prosecution, Applicant further argued that “[i]t is well known that
certain chemicals may be solid at room temperature such as a wax and heated to a liquid at
higher temperatures. Chemicals are not required to be shown in a liquid form to meet the
accepted definition of a chemical. Applicant’s January 24, 2020 Response; TSDR 4.
7 Applicant’s January 24, 2020 Response; TSDR 6.
8 The Board may take judicial notice of dictionary definitions, including online dictionaries
which exist in printed format. See In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB
2014); In re CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB 2002).
9 merriam-webster.com/dictionary/chemical, retrieved March 2, 2021.
Serial No. 88458657
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adj. 1. Of or relating to chemistry.
2. of or relating to the properties or actions of chemicals.10

“Composition” is defined as:

2 c : the qualitative and quantitative makeup of a chemical compound
// the chemical composition of a polymer

4 : a product of mixing or combining various elements or ingredients
// a composition of rubber and cork

“Wax” is defined as:
2 : any of various substances resembling the wax of bees: such as
a : any of numerous substances of plant or animal origin that differ from
fats in being greasy, harder, and more brittle and in containing
principally compounds of high molecular weight (such as fatty acids,
alcohols, and saturated hydrocarbons)

b : a solid substance (such as ozokerite or paraffin wax) of mineral origin
consisting usually of hydrocarbons of high molecular weight11

n. 1. a. Any of various natural, oily or greasy heat-sensitive substances,
consisting of hydrocarbons or esters of fatty acids that are insoluble in
water but soluble in nonpolar organic solvents.

b. Beeswax.12
IV. Discussion
As pointed out by the Examining Attorney, Applicant’s specimen of record clearly
identifies the goods that Applicant uses its mark on or in connection with as “WAX.”
Particularly, a “WATERPROOFING WAX FOR MAXIMUM WATER
REPELLENCY,” and not a waterproofing chemical or chemical composition for

10 Ahdictionary.com/word/search.html?q=chemical, retrieved March 2, 2021.
11 merriam-webster.com/dictionary/wax, retrieved March 2, 2021.
12 Ahdictionary.com/word/search.html?q=wax, retrieved March 2, 2021.
Serial No. 88458657
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fabrics and leather. Indeed, the specimen further states: “Keep your clot[hes] water
repellant with “KÜHL® Waterproof Wax ma[de] from an exclusive 100% natural
blend of beeswa[x] and plant based ingredients. No oils, petroleum [or] silicone, so
your clothes stay as natural as you.”
We are not persuaded by Applicant’s contention that its specimen suffices because
it shows use of the mark in connection with a solid chemical product, namely “animal
wax [of which its goods are comprised being] composed of multiple chemicals
including myricyl palmitate.” Although, as Applicant observes, most everything in
nature can be reduced to base chemical elements, the natural chemical composition
of Applicant’s wax is not the type of chemical compositions contemplated by the Office
and referenced in the definitions of record, i.e., produced by chemistry or the
phenomena of chemistry” or “acting or operated or produced by chemicals.” Rather,
Applicant’s specimen plainly shows use of the applied-for mark on or in connection
with a 100% natural or raw wax that is used to “creat[e] a waterproof layer on fabric
textile, and/or clothing.”13 Based on the above-referenced dictionary definitions and
paragraph (c) of the classification criteria listed above, such substance is considered
an unworked or semi-worked raw material product and not “waterproofing chemical
compositions; waterproofing chemical compositions for articles of fabric;
waterproofing chemical compositions for articles of leather; leather-waterproofing
chemicals; [or] textile-waterproofing chemicals,” which are the goods for which
Applicant seek to register the KÜHL mark. That Applicant’s product is in “solid” form

13 4 TTABVUE 4.
Serial No. 88458657
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does not affect our finding. The specimen therefore is not sufficient to support use of
the applied-for mark in connection with the identified goods.
Decision: The refusal to register Applicant’s mark under Sections 1 and 45 of the
Trademark Act on the ground that Applicant has not submitted an acceptable
specimen of use for its identified goods is affirmed.