International Flora Technologies, Ltd.v.Desert Whale Jojoba Company, Inc.

Trademark Trial and Appeal Board

Sep 17, 2008

No. 92045327 (T.T.A.B. Sep. 17, 2008)

Mailed: September 17, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

International Flora Technologies, Ltd.
v.
Desert Whale Jojoba Company, Inc.
_____

Cancellation No.
92045327
_____

Geoffrey S. Kercsmar of Kercsmar & Feltus PLLC for International
Flora Technologies, Ltd.

Dale F. Regelman of Quarles & Brady, LLP for Desert Whale Jojoba
Company, Inc.
______

Before Holtzman, Drost and Kuhlke, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

Petitioner, International Flora Technologies, Ltd., has
filed a petition to cancel a registration owned by Desert Whale
Jojoba Company, Inc. (respondent) for the standard character mark
OIL FREE JOJOBA on the Supplemental Register for "skin and body
soaps, essential oils for personal use, cosmetics, and hair
lotions, all containing one or more chemically modified jojoba
extracts" in Class 3.1 The word "JOJOBA" is disclaimed.

1 Registration No. 2945397; issued April 26, 2005.
THIS OPINION IS
NOT A PRECEDENT OF
THE TTAB
Cancellation No. 92045327
2
As its ground for cancellation, petitioner alleges that it
is the owner of Registration No. 1816554 for the mark FLORAESTERS
for "chemical compounds; namely, jojoba esters for use in the
manufacture of cosmetics and lubricants"; that petitioner is in
the business of supplying Jojoba oil and its extracts in cosmetic
ingredients to cosmetic and lubricant companies; that since at
least 1994, petitioner has continuously used the term "oil-free
Jojoba" as a generic term to describe its goods that comprise
chemically modified Jojoba extracts that are substantially oil-
free and thus, properly and generically referred to by the
cosmetic industry as "oil free Jojoba"; and that continued
registration of the mark would impair petitioner's rights to use
the term generically in connection with its own goods.2
Respondent filed an answer denying the salient allegations
of the petition.
The record includes the pleadings and the file of the
involved registration. In addition, petitioner submitted
notices of reliance, as well as the testimony, with exhibits, of
the following witnesses: Robert Kelley Dwyer, petitioner's vice
president sales; Robert Kleiman and David Ashley, both chemists

2 The petition also contains allegations of likelihood of confusion
with petitioner's FLORAESTERS mark, and earlier in this proceeding,
respondent filed a motion for summary judgment on that ground. The
Board, in an order issued February 9, 2007, found that such allegations
serve only to amplify petitioner's genericness claim, and they do not
set forth a separate ground for cancellation. The Board, in addition,
granted respondent's motion for summary judgment to the extent the
allegations did set forth a separate claim, finding no likelihood of
confusion as a matter of law.

Cancellation No. 92045327
3
with petitioner; and the expert testimony of Richard Randall
Wickett, Ph.D., president of R. Randall Wickett Consulting
Services and Professor of Pharmaceutics and Cosmetic Science at
the University of Cincinnati College of Pharmacy, in charge of
the graduate program in skin pharmaceutics and cosmetic science.
Respondent did not attend the depositions of petitioner's
witnesses, nor did respondent submit any evidence on its own
behalf.
Both parties have filed briefs.
We turn first to the evidentiary matters raised by
respondent in its brief.
Respondent's motion to strike certain statements in
petitioner's description of the record is denied. However, we
have accorded no evidentiary value or consideration to any
unsupported factual statements made by petitioner in its pleading
or in its brief.3 See TBMP §§ 704.06(a) and (b) (2d ed. rev.
2004).
Respondent's motion to strike exhibits C, D, E and F
attached to petitioner's main brief is denied. These exhibits
consist of portions of the complete transcripts of testimony
which had already been properly made of record by petitioner.

3 Furthermore, we have not considered petitioner's alternative
pleadings and arguments in its brief concerning the descriptiveness of
respondent's mark and its lack of acquired distinctiveness. The
subject of this proceeding is a registration on the Supplemental
Register. Thus, descriptiveness and lack of acquired distinctiveness
are not in issue in this case.
Cancellation No. 92045327
4
However, we point out that petitioner's resubmission of this
material with its brief was duplicative and unnecessary.4
Respondent's motion to strike exhibits 2-7 attached to
petitioner's notice of reliance is granted. These exhibits,
which consist of printouts from respondent's website and the
websites of various third-parties, are not proper subject matter
for introduction by a notice of reliance. See Raccioppi v.
Apogee Inc., 47 USPQ2d 1368, 1370 (TTAB 1998). To the extent
that, as petitioner claims, these materials were identified and
introduced as exhibits during the testimony of Mr. Ashley, they
have been considered. We note that respondent did not object to
the introduction of this evidence during the testimony of Mr.
Ashley (respondent did not appear at the deposition) and,
thus, any objection to the sufficiency of the foundation for this
evidence is considered waived. See, e.g., Pass & Seymour, Inc.
v. Syrelec, 224 USPQ 845, 847 (TTAB 1984) (objection on grounds
of improper identification or authentication of exhibits waived
since defects could have been cured if made during the
deposition). Again, however, petitioner's resubmission of
evidence that was already of record was unnecessary and it
needlessly cluttered the record. See ITC Entertainment Group
Ltd. v. Nintendo of America Inc., 45 USPQ2d 2021, 2022-23 (TTAB

4 Moreover, petitioner should have at least used the same numbering
system in its brief to identify these exhibits as it used when
introducing the exhibits at trial.
Cancellation No. 92045327
5
1998) (submission of duplicative papers is a waste of time and
resources, and is a burden upon the Board).
Respondent's motion to strike petitioner's notice of
reliance on the 19 documents produced by respondent in response
to petitioner's document production requests is granted. As
stated in TBMP § 704.11 (2d ed. rev. 2004), "a party that has
obtained documents from another party under Fed. R. Civ. P. 34
may not make the produced documents of record by notice of
reliance alone, except to the extent that they are admissible by
notice of reliance under 37 CFR § 2.122(e) as official records;
or as printed publications, such as books and periodicals,
available to the general public in libraries or of general
circulation among members of the public or that segment of the
public which is relevant under an issue in the proceeding."
Petitioner contends that "many of these documents are self-
authenticating." However, it is not clear from the face of these
documents, and petitioner has not met its burden of
demonstrating, that the documents constitute printed publications
within the meaning of Trademark Rule 2.122(e). See TBMP
§704.08, supra. Moreover, we disagree with petitioner that
respondent's objection to this evidence is untimely. This is not
a deficiency that could have been cured if the objection had been
raised earlier. Cf. Colt Industries Operating Corp. v. Olivetti
Controllo Numerico S.p.A., 221 USPQ 73, 74 n.2 (TTAB 1983)
(objection that items submitted by notice of reliance were
Cancellation No. 92045327
6
neither official records nor printed publications raised in brief
sustained).
FACTS
Petitioner is a supplier of botanical products to the
cosmetics and personal care industry. The products provided by
petitioner include extracts derived from the jojoba plant.
Jojoba is a shrub that is native to the southwestern United
States and northern Mexico.5 The seed or "bean" of the plant
contains 50% oil. The oil, which is referred to alternatively as
a wax or ester, is used primarily in cosmetics and personal care
formulations. The oil is extracted from the seed and it may be
either further refined, or it may be converted through chemical
modification into various derivatives. One such chemical
modification removes the oil from the extract.
Petitioner sells its refined and chemically modified jojoba
extracts to manufacturers and formulators of cosmetics and
personal care products such as Revlon, Lancome and Estee Lauder.
These companies in turn use the jojoba as an ingredient in
manufacturing finished personal care and cosmetics products
including moisturizers, foundations, skin and hair care products,
soaps and sunscreens.

5 "Jojoba" is defined in Webster's New World College Dictionary (Third
Edition 1996) as "an evergreen desert shrub...of the box family, found
in Mexico and the SE U.S. with a seed (jojoba bean) containing an
odorless, colorless liquid wax (jojoba oil) used in cosmetics,
lubricants, etc." Notice of Reliance, Exh. 8.
Cancellation No. 92045327
7
Petitioner's jojoba products are offered under a series of
"FLORAESTERS" trademarks. Marks for the jojoba products that do
not contain oil include FLORAESTERS with certain number
designations such as 15, 20, 30 and 60. Marks such as
FLORAESTERS "jojoba oil golden" are used for petitioner's jojoba
products which do contain oil. (Dwyer Dep., p. 53.)
STANDING
Petitioner's witnesses, including Mr. Dwyer and Mr. Ashley,
state that the parties are competitors as they both supply jojoba
extracts to the cosmetics industry. (Dwyer Dep., pp. 26, 32;
Ashley Dep., p. 37.) As a competitor of respondent in the
industry, petitioner has standing, or a real interest, in
challenging respondent's right to maintain its registration of
the term OIL FREE JOJOBA on the ground that the term is generic
for respondent's goods. See Eastman Kodak Co. v. Bell & Howell
Document Management Products Co., 23 USPQ2d 1878 (TTAB 1992),
aff'd 994 F.2d 1569, 26 USPQ2d 1912 (Fed. Cir. 1993). Respondent
has presented no argument or evidence to the contrary.
GENERICNESS
The test for determining whether a mark is generic involves
a two-step inquiry. First, what is the genus (category or class)
of goods or services at issue? Second, is the term sought to be
registered understood by the relevant public primarily to refer
to that genus (category or class) of goods or services? H.
Cancellation No. 92045327
8
Marvin Ginn Corporation v. International Association of Fire
Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986)).
It is petitioner's burden to demonstrate that OIL FREE
JOJOBA is generic by a preponderance of the evidence. See Magic
Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551, 1554 (Fed.
Cir. 1991); and Zimmerman v. National Association of Realtors, 70
USPQ2d 1425 (TTAB 2004).
1. The genus of respondent's goods and
the relevant public for the goods

Cancellation of a mark is permitted when a "registered mark
becomes the generic name for the goods or services ... for which
it is registered.” Section 14(3) of the Trademark Act. "Thus, a
proper genericness inquiry focuses on the description of the
[goods or] services set forth in the certificate of
registration." Magic Wand Inc., supra at 1552 citing Octocom
Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990).
Petitioner contends, pointing to the information on
respondent's website, that the genus or class of goods at issue
is "jojoba that has been modified to be free of oil." (Brief, p.
8.) Petitioner relies on In re Reed Elsevier Properties Inc.,
482 F.3d 1376, 82 USPQ2d 1378, 1380 (Fed. Cir. 2007) to support
its position that the Board may investigate beyond the four
corners of the registration to determine the genus.
We disagree with petitioner's definition of the genus of
goods at issue. We find instead that the genus is properly
Cancellation No. 92045327
9
described, as respondent contends, by the identification of
goods, namely "skin and body soaps, essential oils for personal
use, cosmetics, and hair lotions, all containing one or more
chemically modified jojoba extracts." That is, the genus of the
goods is finished cosmetics that contain jojoba, not the jojoba
component itself. Petitioner may look to extrinsic evidence,
such as the information on respondent's website, for context and
to understand the meaning of terms in an identification of goods
or services. See Reed Elsevier Properties, supra at 1380 citing
In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420 (Fed. Cir.
2005) (examining the subject website in order to understand the
meaning of terms for which coverage was sought and thereby define
the genus of covered services). However, petitioner may not rely
on the website information to limit the scope of the
identification, or to show that the goods identified are
different from those as actually used. This would be contrary to
well established law, stated above, that "a proper genericness
inquiry focuses on the description of [goods or] services set
forth in the certificate of registration."
We must next determine the relevant public for respondent's
goods. Petitioner argues that the relevant purchasers for "oil-
free jojoba" products are cosmetic formulators and their
designated buyers. Respondent agrees with petitioner, although
respondent contends that petitioner has offered no evidence that
Cancellation No. 92045327
10
OIL FREE JOJOBA is understood by the relevant public to refer to
respondent's goods.
Both parties have incorrectly defined the relevant public.
It is clear that the cosmetics industry is the relevant class of
purchasers for petitioner's goods. However, as we noted, the
question of whether the mark is generic requires consideration of
the mark in relation to the goods identified in the registration.
Respondent's products, as identified, are ordinary consumer
goods. Based on the registration, the mark is applied to the
finished cosmetic and personal care products that contain a
particular component, not to the component itself. Thus, the
relevant purchasers for registrant's goods are ordinary members
of the general public. See Zimmerman v. National Association of
Realtors, supra at 1429 ("When dealing with ordinary consumer
goods or services, the test for genericness is the term's meaning
to consumers, not necessarily the professionals in the trade.")
2. The meaning of OIL FREE JOJOBA to
the relevant public

Evidence of the relevant public's understanding of a term
may be obtained from "any competent source...including purchaser
testimony, consumer surveys, dictionary definitions, trade
journals, newspapers and other publications." In re Dial-A-
Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1810
(Fed. Cir. 2001). See also In re Reed Elsevier Properties Inc.,
supra at 1381 (Fed. Cir. 2007) (third-party websites are
Cancellation No. 92045327
11
competent sources to show what the relevant public would
understand a term to mean").
We turn first to the meaning of "oil-free" to consumers.
Mr. Dwyer states that a cosmetics company, for example, Lancome,
would want to make claims about its product that has a "consumer-
perceived" benefit. (Dwyer Dep., p. 14.) As Mr. Dwyer explains,
Lancome would give its formulator instructions on the claims the
company wants to make about its finished product, and the
formulator would then identify raw materials that could function
in such a way to cause the effect on the skin that could be
claimed. One of the claims given to the formulator, according to
Mr. Dwyer, could be to develop an "oil-free" product. (Dwyer
Dep., pp. 17-18, stating that "one of the ways you can become a
better supplier is by knowing what the formulators are looking
for.")
According to Dr. Wickett, an expert in cosmetics claims
support, the designation "oil-free" is critical in the cosmetic
industry; and a claim on the label that a cosmetic product or
ingredient is "oil-free" would enhance the product's
marketability and its desirability to the consuming public.
(Wickett Dep., pp. 28, 36-37.) He states that consumers believe
that oil applied to their skin could contribute to acne problems,
and that oil-free products may be considered noncomedogenic, less
greasy and better for the skin. (Wickett Dep., pp. 25-26.)
Cancellation No. 92045327
12
Dr. Wickett and Mr. Dwyer confirm, as described in the
articles below, that "oil-free" is beneficial to the skin, or is
at least perceived that way by consumers, and that the term "oil-
free" would appear on a product label:
● Oil Free Cosmetics
The best types of cosmetics to use for oily or acne
prone skin, are either oil-free cosmetics or non-
comedogenic cosmetics.

Oil-free cosmetics mean products that contain little
or no ingredients such as isopropyl myristate,
isopropyl esters, oleic acid, stearic acid,
petrolatum and lanolin...
The label on the cosmetic should state that it is
oil-free.
www.skincareguide.com (Exh. 9)
● CAREFAIR.com
Oil Free Cosmetics
The rule stands: the best types of cosmetics to use
for acne skin are oil free cosmetics. ... Always
check with the product label to see if it is oil
free. ...
www.carefair.com (Exh. 10)
The record shows that cosmetics and personal care products
are promoted to consumers as oil-free, or as having certain oil-
free ingredients. The following are examples:
● BOBBI BROWN
VITAMIN ENRICHED FACE BASE
For All Skin Types
Bobbi recommends using Vitamin Enriched Face Base as
the first step to prepare skin for the smoothest
makeup application. Rich in feel, but never greasy,
this advanced oil-free, face formula, with Shea
Butter, instantly hydrates, softens, and cushions
skin. ...
www.bobbibrowncosmetics.com (Exh. 17)

● St. Ives Apricot Scrub Oil Free
Invigorating For All Skin Types
www.amazon.com (Exh. 19)

Cancellation No. 92045327
13
● Mill Creek - OIL-FREE BOTANICAL MOIST
Product Description
Oil-Free Moisturizer is a rich, light body lotion to
help replenish and revive dry, flaky, and
undernourished skin
www.amazon.com (Exh. 20)

● SPA SALON IDUN
Idun Signature Facial
Relax while enjoying a luxurious hydrosol therapy
treatment customized for you and your precious skin.
Thirsty skin is drenched in oil-free botanical
essences of cucumber, cranberry, citrus and
pomegranate, while the facial massage leaves the skin
silky-smooth, glowing and feeling firmer and vibrant.
www.idunspasalon.com (Exh. 22)

● GLYCOLIC GEL YOUTH SERUM
This powerful 15% Glycolic Acid Gel increases the
rate of dead skin exfoliation while fighting
bacteria. Repeated use will decrease oiliness and
aid in the reduction of blemishes. Aloe Vera Gel and
Hyaluronic Acid provide oil-free hydration,
increasing the skin's moisture content. ...
www.bestfaceandbody.com (Exh. 24)

● netnutri.com
Hydroderm Intense Oil-Free Facial Moisturizer
www.netnutri.com (Exh. 25)

● eVitamins
Aloe and Green Tea Oil Free Moisturizer by Alba
Botanica
Product Description
Certified organic aloe vera, green tea antioxidants
and oil-free humectants absorb instantly to replenish
essential nutrients and protect skin against
dehydration for a soft, healthy, luminous complexion.
www.evitamins.com (Exh. 26)

Respondent's own promotional materials tout its jojoba
products as being "oil free" (emphasis added):
Oil free products
Functional benefits/oil free
Product Name: Description:
Jojoba Esters 15 Liquid jojoba wax esters
derived from the
Cancellation No. 92045327
14
interesterification of
jojoba oil. For OIL
FREE formulations

OFJ™ Spheres Oil Free Jojoba® Spheres
with the same desirable
properties as their Jojoba
Wax counterpart, but without
the oil name. These spheres
are idea[l] for Oil Free
skin and facial cleansers.6
www.desertwhale.com (Exh. 29)

In addition, the record includes evidence that extracts from
other plants, such as "aloe vera" and "shea," which like jojoba,
are used as ingredients in cosmetics, are characterized and
promoted as "oil-free." The following are examples (emphasis
added):7
● The spa happenings
Your monthly e-newsletter from The Spa - Los Gatos
Products Available by Chef Yossi at The Spa - Los
Gatos
Chef's Lotion A fast-absorbing, oil free Shea butter
hand moisturizer specifically designed to re-hydrate
over-washed hands ...
www.thespaoflosgatos.com (Exh. 16)

6 On an archival version of this same webpage (Exh. 28), this product
was described as: "OFJâ„¢ Spheres - Jojoba Esters spheres for Oil Free,
gentle exfoliation."

7 Aloe vera and shea are plants that contain oil which is extracted and
used in cosmetics. We take judicial notice of the following
definitions. "Shea" is defined as, "(noun) "1. a tropical African
sapotaceous tree, Butyrospermum parkii, with oily seeds. 2. shea
butter: the white butter-like fat obtained from the seeds of this plant
and used as food, to make soaps, etc." Collins English Dictionary
(2000). "Aloe vera" is defined as, "(noun) 1. any of a species of aloe
with thick fleshy leaves from which an oil is obtained: Aloe vera.
2. an extract from the leaves of aloe vera that is used in cosmetic
preparations." The Penguin English Dictionary (2000). Both
definitions were obtained from the website www.credoreference.com. The
Board may take judicial notice of dictionaries, including online
dictionaries which exist in printed format. See In re
CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB 2002).
Cancellation No. 92045327
15

EVERYTHING BUT THE KITCHEN STINK
... There's also an oil-free shea butter lotion to
moisturize over-cleansed skin...and wet-nappish wipes
for those shellfish feasts that leave you with that
no-so-fresh feeling.
www.dailycandy.com (Exh. 15)

● VEVELLE INTERNATIONAL
The MagicClear Acne System
STEP-3 Oil-Free Aloe Vera Moisture Lotion
Oil-Free moisturizer. Protects the skin, helps heal,
with a special Aloe Vera that comes from a particular
Aloe Plant known for its more potent properties...
www.acnedoctor.com (Exh. 21)

● VERABELLA (Exh. 23)
Products Cleansers
Product Name and Description
Chamomile Cleansing Lotion A gentle oil-free Aloe
Vera based cleanser designed to cleanse skin
thoroughly. ...
www.verabella.com (Exh. 23)

● BORN CLEAR LIGHT MOISTURIZER
Lemon Bioflavonoid, Watercress extract and Sage
extract balance oil and help to revitalize and purify
oily, problematic and combination skin. ... This oil-
free, Aloe Vera Gel-based moisturizer contains
antibacterial ingredients to heal and condition.
www.bestfaceandbody.com (Exh. 24)

The record shows, through the testimony of Mr. Dwyer and
petitioner's other testimony and evidence that the properties of
jojoba make it a desirable ingredient in cosmetics and personal
care products. It is known as a safe, nonirritating ingredient
that is absorbed into the skin very readily, with less viscosity
compared to other oils, so that it has a less greasy feel; and
that it stays fresh longer than most other plant oils and will
not develop the negative rancid odors. It is perceived by
consumers as a natural, beneficial ingredient for the skin in
Cancellation No. 92045327
16
that it is plant derived, and believed not likely to contain what
may be perceived as harmful chemicals. (Wickett Dep., pp. 26-27;
Dwyer Dep., pp. 27-28; Kleiman Dep., pp. 27-28; Ashley Dep., p.
39.)
In its oil-free form, according to petitioner's witnesses,
jojoba represents both a natural product and one that will not
clog pores or damage the skin; and it allows cosmetic companies
to make label claims of "natural" and "oil-free" for the product.
(E.g., Wickett Dep., p. 25; Ashley Dep., pp. 29, 39-40.)
In addition, Dr. Wickett testified that the term "oil
free Jojoba" is used, at least in the industry, as a common name
to refer to the products that are derived from Jojoba that are
"oil-free" or "free from oil"8 (46). Indeed, the record includes
evidence that the phrase OIL FREE JOJOBA, as a whole, has been
used generically by petitioner and at least one other competitor,
Purcell Jojoba International ("PNJ"), as well as in promotional
materials directed to the public (emphasis added): 9
● Industry Presentations
Floratech's botanical ingredients include: gentle
exfoliatives, oil-free jojoba esters, macadamia oil
and esters, stabilized high-oleic acid sunflower oil
and derivatives, water-soluble emollients and soft
spheres delivering actives. ...
www.ascs2007.org (Exh. 3)

8 Dr. Wickett states that the designation "oil-free jojoba" contains no
oil, "or so little oil that it's considered to be oil-free." (Wickett
Dep., p. 46.)

9 Contrary to respondent's apparent contention (Brief, pp. 8-9), it is
immaterial to the genericness determination that some of petitioner's
FLORAESTERS products may not be "oil free."
Cancellation No. 92045327
17
● FLORAESTERS botanical
FLORAESTERS are functional
Liquid Foundation
Oil-Free Skin Care
Facial Masks
FLORAESTERS are unique, botanically-derived blends of
oil-free jojoba emollients providing luxurious
skinfeel and value-adding functions
[Petitioner's brochure dated 1998] (Exh. 4)

● PNJ 100% Pure Natural Jojoba Esters
Pure Natural Jojoba Esters' Semi-Occlusive Moisture
Control Barrier Reduces Signs of Aging and Photo-
Aging.
Reduces Oxygen Free Radicals
Other Jojoba Functions Enhance Product Value
Fixes fragrances, carries pigments, sunblockers,
and other actives.
Works well with other ingredients including
silicones.
Hypoallergenic and non-comedogenic.
Consumers like and trust "oil-free jojoba."

[the website goes on to describe the company's various "PNJ
Jojoba Esters" as being "oil-free"]
www.purcelljojoba.com (Exh. 2)

● WorldwideHealth.com
Massage Therapy Directory
MYOSPA Center for Therapeutic Massage
An intimate, tranquil spa with full selection of
massage and body treatments using oil-free jojoba
extract, and CranioSacral Therapy. ...
www.worldwidehealth.com (Exh. 6)

It is clear from the evidence, including the evidence of
respondent's own use, that "oil-free" is used to identify a
product or an ingredient of a product that is free from oil. The
evidence also shows that "oil-free" combined with "jojoba" to
form "oil-free jojoba," like "oil-free shea"10 or "oil-free aloe,"

10 Respondent argues, pointing to Mr. Kleiman's testimony, that products
that include shea oil could never be properly characterized as "oil-
free." Respondent quotes Mr. Kleiman as stating "The term 'oil-free
Cancellation No. 92045327
18
names a type of plant extract. It is also clear that the term
"oil-free jojoba" identifies a central characteristic of
respondent's cosmetics and personal care products, as it is a
principal ingredient of those goods. Marks which identify a key
characteristic of goods or services have been held unregistrable
for the goods or services. See In re Helena Rubenstein, Inc.,
410 F.2d 438, 161 USPQ 606 (CCPA 1969) (PASTEURIZED for
applicant's face creams, which have been "'substantially
pasteurized'... does not possess the capacity to distinguish
applicant's goods."); J. Kohnstam, Ltd. v. Louis Mark & Co., 280
F.2d 437, 126 USPQ 362 (CCPA 1960) (MATCHBOX for toy vehicles
generic because that category of toy cars was sold in matchbox-
sized boxes); In re Central Sprinkler Co., 49 USPQ2d 1194 (TTAB
1998) (ATTIC generic for sprinklers used in attics; "The broad
general category of goods involved here is sprinklers for fire
protection. However, a product may be in more than one category,
and here applicant's goods also fall within the narrower category
of sprinklers for fire protection of attics."). See also, Reed
Elsevier, supra at 1380 (LAWYERS.COM generic for online
information exchange in the fields of law, legal news, and legal
services; "a central and inextricably intertwined element of [the
claimed] genus is information about lawyers and information from
lawyers."); and In re A La Vielle Russie Inc., 60 USPQ2d 1895

shea' is [an] oxymoron." (Kleiman Dep., p. 49.) However, respondent
has taken that statement out of context. It is plain from Mr. Kleiman
Cancellation No. 92045327
19
(TTAB 2001) (RUSSIANART generic for particular field or type of
art and therefore also for dealership services directed to that
field).
Similarly, in this case, OIL FREE JOJOBA is a generic term
for the broad category of cosmetics and personal care products
that fall within the narrower category or subcategory of
cosmetics that contain oil-free jojoba. The fact that
respondent's finished products may contain additional ingredients
does not detract from the term's generic meaning. The public
would expect, upon encountering OIL FREE JOJOBA on, for example,
respondent's soaps, that the soaps will consist at least in
significant part of "oil free jojoba." See, e.g., In re Demos,
172 USPQ 408, 409 (TTAB 1971) (CHAMPAGNE "merely names the
principal ingredient of [applicant's] salad dressing and to that
extent...forms part of the normal nomenclature therefor, i.e.,
champagne salad dressing" and as such "is deemed unregistrable").
Further, contrary to respondent's contention, whether
respondent's OIL FREE JOJOBA extract is, in fact, "oil-free," 11
or whether the finished cosmetics contain other oil-based
ingredients, e.g., "apricot oil" or "shea oil," such that the
cosmetics are not, in fact, entirely oil-free, is not the issue.
The point is that these products are promoted by the industry and

later statement on that same page of testimony that shea can be
modified to make it oil-free.
11 Respondent states on page 14 of its brief that the "hydrogenated
jojoba oil" sold by respondent under the mark "would NOT meet the
Cancellation No. 92045327
20
perceived by the consuming public as "oil-free," or as containing
a particular "oil-free" ingredient, in this case, oil-free
jojoba. "As far as the issue of a term's genericness is
concerned, it is beside the point whether the term may or may not
accurately describe a particular product. E.g., In re Helena
Rubinstein, Inc., 410 F.2d 438, 161 USPQ 606 (CCPA 1969)
(PASTEURIZED held generic for face creams irrespective of whether
goods are, in fact, pasteurized or would normally be expected by
an average purchaser to have been pasteurized because they are so
designated)." In re Northland Aluminum Products, Inc., 221 USPQ
1110, 1114 (TTAB 1984), aff'd, 777 F.2d 1556, 227 USPQ 961 (Fed.
Cir. 1985). See also., e.g., Roselux Chemical Co., Inc. v.
Parsons Ammonia Co., Inc., 299 F.2d 855, 132 USPQ 627, 634 (CCPA
1962) (SUDSY generic for ammonia; immaterial that some of the so-
called SUDSY ammonia products were not sudsy because they
contained no detergent).
Moreover, in this case, the identification of goods is broad
enough to include cosmetics that may not contain any additional
oil-based ingredients. Certainly at least for those products,
the term OIL FREE JOJOBA would define the subcategory of
products, e.g., "oil free jojoba soap." We also point out that
although the identification does not specify that the chemically
modified jojoba extract is oil-free, the identification is broad

definition of 'oil-free jojoba' because that product includes 'oil' in
its ingredient name."
Cancellation No. 92045327
21
enough to include jojoba that has been chemically modified to be
"oil-free."
We find that petitioner has demonstrated, by a preponderance
of the evidence, that OIL FREE JOJOBA is generic for respondent's
goods.
Decision: The petition to cancel is granted, and
Registration No. 2945397 will be cancelled in due course.