Red Leaf Resources, Inc.

Trademark Trial and Appeal Board

Jun 17, 2009

No. 77175242 (T.T.A.B. Jun. 17, 2009)

Mailed:
June 17, 2009
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Red Leaf Resources, Inc.
________

Serial No. 77175242
_______

Erik S. Ericksen of Thorpe North & Western, LLP for Red Leaf
Resources, Inc.

Evelyn Bradley, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______

Before Bucher, Holtzman and Zervas, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Red Leaf Resources, Inc. seeks registration on the
Principal Register of the mark KEROSYN (in standard
character format) for goods identified in the application, as
amended, as follows:
“refined and unrefined oil produced from oil
shale, namely, kerogen fuel oil” in
International Class 4.1
The Trademark Examining Attorney refused registration
on the ground that the term is merely descriptive under

1 Application Serial No. 77175242 was filed on May 8, 2007
based upon applicant’s allegation of a bona fide intention to use
the mark in commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77175242
- 2 -
Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§ 1052(e)(1).
After the Trademark Examining Attorney made the refusal
final, applicant appealed to this Board.
We affirm the refusal to register.
Merely Descriptive under Section 2(e)(1)

Applicant argues that KEROSYN is a coined term that
applicant adopted because of its fanciful play on the word
“kerogen.” Alternatively, applicant argues that even if
viewed as a misspelling of the word “kerosene,” it is not
the phonetic equivalent of the word “kerosene” and would not
be so recognized. Finally, applicant explains in detail
“the obscure relationship between Appellant’s kerogen fuel
oil and kerosene.”
By contrast, the Trademark Examining Attorney contends
that applicant’s goods are derived from oil shale, also
known as “kerosene shale.” She argues that these two words
could well be pronounced the same, and that a novel spelling
of a merely descriptive term is still merely descriptive if
purchasers would perceive the different spelling as the
equivalent of the descriptive term. She contends that
“kerosene” could be found merely descriptive of applicant’s
goods based upon the physical origins of the identified
product in “kerosene shale,” in addition to the more
Serial No. 77175242
- 3 -
distant downstream fuel – which ultimate resulting product
applicant does confirm is one fuel that can be derived
from its unrefined product. Hence, the Trademark
Examining Attorney concludes that this term cannot be just
suggestive inasmuch as it immediately conveys information
about the physical origins of the goods.
A mark is merely descriptive, and therefore
unregistrable pursuant to the provisions of Section 2(e)(1)
of the Trademark Act, 15 U.S.C. § 1052(e)(1), if it
immediately conveys “knowledge of a quality, feature,
function, or characteristic of the goods or services.”
In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d
1828, 1831 (Fed. Cir. 2007) [ASPIRINA is merely descriptive
of analgesic product]. See also In re MBNA America Bank
N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003)
[MONTANA SERIES and PHILADELPHIA CARD are merely descriptive
of applicant’s “affinity” credit card services; a “mark is
merely descriptive if the ultimate consumers immediately
associate it with a quality or characteristic of the product
or service”]; In re Nett Designs, Inc., 236 F.3d 1339,
57 USPQ2d 1564, 1566 (Fed. Cir. 2001) [THE ULTIMATE BIKE RACK
is merely descriptive for bicycle racks]; In re Gyulay,
820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987) [APPLE PIE
is merely descriptive for a potpourri mixture]; and In re
Serial No. 77175242
- 4 -
Quik-Print Copy Shops, Inc., 616 F.2d 523, 205 USPQ 505, 507
(CCPA 1980). To be “merely descriptive,” a term need only
describe a single significant quality or property of the
goods. Gyulay, 3 USPQ2d at 1009. Descriptiveness of a mark
is not considered in the abstract, but in relation to the
particular goods or services for which registration is
sought. That is, when we analyze the evidence of record, we
must keep in mind that the test is not whether prospective
purchasers can guess what applicant’s goods are after seeing
only applicant’s mark. In re Abcor Development Corp.,
588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978) [GASBADGE merely
descriptive of a “gas monitoring badge”; “Appellant’s
abstract test is deficient – not only in denying
consideration of evidence of the advertising materials
directed to its goods, but in failing to require
consideration of its mark ‘when applied to the goods’ as
required by statute.”]. Rather, the question is whether
someone who knows what the goods are will understand the
mark to convey information about them. In re Tower Tech,
Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002); In re Patent &
Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998).
In addition to considering the applied-for mark in
relation to the goods or services for which registration is
sought, the proper test for descriptiveness also considers
Serial No. 77175242
- 5 -
the context in which the mark is used and the significance
that the mark is likely to have to the average purchaser
encountering the goods or services in the marketplace. In
re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed.
Cir. 1987); In re Pennzoil Products Co., 20 USPQ2d 1753
(TTAB 1991); and In re Engineering Systems Corp., 2 USPQ2d
1075 (TTAB 1986).
Hence, the ultimate question before us is whether the
term KEROSYN conveys information about a significant
source, feature or ultimate usage of applicant’s goods with
the immediacy and particularity required by the Trademark
Act.
A mark is suggestive, and therefore registrable on the
Principal Register without a showing of acquired
distinctiveness, if imagination, thought or perception is
required to reach a conclusion on the nature of the goods or
services. “Whether a given mark is suggestive or merely
descriptive depends on whether the mark ‘immediately conveys
… knowledge of the ingredients, qualities, or
characteristics of the goods … with which it is used,’ or
whether ‘imagination, thought, or perception is required to
reach a conclusion on the nature of the goods.’” (citation
omitted) In re Gyulay, 3 USPQ2d at 1009; In re Home Builders
Serial No. 77175242
- 6 -
Association of Greenville, 18 USPQ2d 1313 (TTAB 1990); and
In re American Greetings Corp., 226 USPQ 365 (TTAB 1985).
The record contains an online dictionary definition of
kerogen consistent with applicant’s identification of goods:
ker•o•gen
Pronunciation: (ker'u-jun, -jen"), [key]
—n.
the bituminous matter in oil shale, from which shale oil is obtained by heating and
distillation.
Random House Unabridged Dictionary, Copyright © 1997, by Random House, Inc., on Infoplease.

The Trademark Examining Attorney has placed into the
record dictionary entries and websites further explaining
how oil is produced from oil shale, a variety of uses of the
word “kerosene,” and the possible connections between the
two:
Oil Shale
Oil shale is a sedimentary rock containing solid and combustible organic matter (kerogen and bitumen) in
a mineral matrix. Oil shales are much more common than is generally recognized, occurring on every
continent and in every geological system. Most "oil shales" are actually bituminous, non-marine limestones
or marine sandstones containing kerogen. ...
The term "oil shale" describes the rock in lithologic terms but also refers to the ability of the rock to yield
oil. ... [O}il is released from the shale upon heating which causes the kerogen to decompose. Oil shale
has also been called black shale, bituminous shale, carbonaceous shale, coaly shale, kerosene shale,
coorongite, maharahu, kukersite, kerogen shale, and algal shale. ...
The organic matter in oil shale has been studied extensively and the composition of kerogen in the oil
shale is found to vary significantly from deposit to deposit. ... The fraction of kerogen converted into oil
with increasing temperature depends upon the hydrogen content or organic matter; oil yield increases with
increasing hydrogen content. Because the density of the organic matter is significantly less than minerals in
the shale, oil shale density can be used to estimate oil yield by including a conversion factor for the
transformation of kerogen to oil. This relationship is used to calculate oil shale reserves. 2

2 http://www.physics.ohio-state.edu/~kagan/phy367/
P367_articles/Oil/oilshale.html

Serial No. 77175242
- 7 -

3

Applicant’s goods as identified include crude,
unrefined oil as well as fuels further refined therefrom.
However, rather than coming from a liquid petroleum,
applicant’s “shale oil” is derived from oil shale or
“Kerogen shale.” The Trademark Examining Attorney’s
evidence indicates that “kerosene shale” is one of various
other names for this bituminous shale. Hence, we find that
the word kerosene could immediately convey information about
the physical origins of applicant’s kerogen oil.
The record also contains a definition reflecting the
more common usage of the term “kerosene” as a fuel. This is
a finished product having a history dating to the nineteenth

3 http://books.google.com/books?id=ZImuq5hIC98C

Serial No. 77175242
- 8 -
century as a fuel for lighting and heating, but also defined
as coming from bituminous shale:
ker•o•sene
Pronunciation: (ker'u-sēn", kar'-, ker"u-sēn', kar"-), [key]
—n.
a mixture of liquid hydrocarbons obtained by distilling petroleum, bituminous shale, or the
like, and widely used as a fuel, cleaning solvent, etc.

Random House Unabridged Dictionary, Copyright © 1997, by Random House, Inc., on Infoplease.

kerosene

ker·o·sene [ kérrə sýn, kèrrə sün ] or ker·o·sine [ kérrə sýn, kèrrə sün

noun

Definition:

colorless flammable oil: a colorless flammable oil distilled from petroleum.
Use: fuel for jet engines, heating, cooking, and lighting.
[Mid-19th century. < Greek kēros "wax"] 4

A statement in Wikipedia corroborates this later entry:
“Today kerosene is mainly used in fuel for jet engines (more
technically Avtur, Jet A, Jet A-1, Jet B, JP-4, JP-5, JP-7
or JP-8). … These fuel grade kerosenes meet specifications
for smoke points and freeze points.”5
The Trademark Examining Attorney also found a note
specifically about a kerosene jet fuel derived from oil
shale, or kerosene shale:

4 http://encarta.msn.com/dictionary_/kerosene.html

5 http://en.wikipedia.org/wiki/Kerosene

Serial No. 77175242
- 9 -
Accession Number: ADA025417
Title: Evaluation of a JP-5 Type Fuel Derived from
Oil Shale
Descriptive Note: Interim rept.
Corporate Author: NAVAL AIR PROPULSION TEST CENTER TRENTON NJ PROPULSION TECHNOLOGY
AND PROJECT ENGINEERING DEPT
Personal Author(s): Solash, J.; Nowack, C J.; Delfosse, R J
Report Date: May 1976
Pagination on Media Count: 48
Abstract: A kerosene fuel derived from oil shale was evaluated for suitability as a substitute for petroleum derived
JP-5. Engine performance and gaseous emissions were evaluated using a T63-A-5A engine. Specification analyses were
performed to determine conformance with the MIL-T-5624J specification for JP-5 grade fuel. Engine performance of the
oil shale derived fuel was equivalent to that of a typical petroleum derived JP-5. While carbon monoxide (CO) and
unburned hydrocarbon (THC) emissions of the oil shale fuel were equivalent to those of petroleum fuels, the nitrogen
oxides were higher for the oil shale fuel. A high concentration of fuel bound nitrogen was implicated as the cause for
the high nitrogen oxide emissions. The oil shale derived fuel was found not to conform to specifications for
contamination, existent gums, thermal stability, freeze point and viscosity at -34.5 C (-30 F). A program of post- refinery
upgrading studies was initiated in order to improve these deviant properties. This program included filtration, distillation,
clay and acid treatment and urea extraction. It was found that no one single post-refinery treatment could improve all
deviant properties. (Author)
Descriptors: *JET ENGINE FUELS, *OIL SHALES, TEST AND EVALUATION, EMISSION,
SPECIFICATIONS, HYDROCARBONS, CARBON MONOXIDE, NIGROGEN OXICES, KEROSENE,
FILTRATION, HELICOPTER ENGINES, DISTILLATIONS
Subject Categories: FUELS
Distribution Statement: - APPROVED FOR PUBLIC RELEASE 6

It would seem from this entire record that the majority
of kerosene fuel currently comes from petroleum, not oil
shale. There is also no indication in the record that
kerosene fuel is a significant volume of the ultimate fuel-
type made from oil/kerogen/kerosene shale. In fact, the
DTIC story above suggests that at least as of 1976, kerosene
derived from oil shale was not well suited to replace
kerosene jet fuels distilled from petroleum. Nonetheless,

6 http://www.dtic.mil/srch/doc?collection=t3&id=ADA025417

Serial No. 77175242
- 10 -
this article makes it clear that applicant’s named goods
(i.e., a crude oil coming from kerosene shale) can be
further processed into kerosene fuel. Hence, kerosene may
be seen as conveying information about the physical origins
of applicant’s goods and/or as a fuel derived therefrom.
Applicant makes much of the argument that its applied-
for mark, KEROSYN, will not be pronounced like the well-
known term, “Kerosene.” Of course, it is black-letter,
trademark law that there is no correct pronunciation for a
coined term. Hence, even if it is possible that some
prospective purchasers of applicant’s goods may pronounce
the final syllable in applicant’s mark as sìn rather than
sýn, that is not sufficient to overcome the refusal of mere
descriptiveness. Additionally, as to applicant’s
explanation for how this term will be perceived, we find
that logically, “Kerosyn” is more likely to be pronounced as
“kerosene,” as contended by the Trademark Examining
Attorney, rather than being interpreted as a fanciful play
on the word “kerogen,” as argued by applicant. The case law
presents a corollary that this slight misspelling in the
final syllable of applicant’s proposed mark does not take
away from the merely descriptive nature of this term.
Decision: The refusal to register under Section
2(e)(1) of the Lanham Act is hereby affirmed.