UKW Holding Company

Trademark Trial and Appeal Board

Jun 2, 2020

87674970 (T.T.A.B. Jun. 2, 2020)

Mailed: June 2, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re UKW Holding Company
_____

Application Serial No. 87674970
_____

Joel E. Tragesser and Jordan R. Downham of Quarles & Brady,
for UKW Holding Company.

Andrew T. Clark, Trademark Examining Attorney, Law Office 107,
J. Leslie Bishop, Managing Attorney.
_____

Before Bergsman, Shaw and Coggins, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

UKW Holding Company (Applicant) seeks registration on the Principal Register
of the mark ElastiKWax (stylized) for “depilatory wax,” in International Class 3, and
“personal hair removal services,” in International Class 44.1 The description of the
mark reads as follows:

1 Serial No. 87674970 filed November 7, 2017, under Section 1(a) of the Trademark Act,
15 U.S.C. § 1051(a), based on Applicant’s claim of first use of its mark anywhere and in
commerce as of March 25, 2017, for both classes.
This Opinion Is Not a
Precedent of the TTAB
Serial No. 87674970

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The mark consists of the word ElastiKWax, with the letters
E, K, and W capitalized.2
Applicant claimed ownership of the two registrations listed below:
•Registration No. 5045249 for the mark UNIK ELASTIK (stylized), reproduced
below for “depilatory wax,” in International Class 3.3

The description of the mark reads as follows:
The mark consists of the letters “UNI” located to the left of
a stylized “K” and located to the left of the phrase “ELASTI”
located to the left of a stylized “K”.
•Registration No. 5093027 for the mark ELASTIK WAX and design, reproduced
below, for “depilatory wax,” in International Class 3.4

The description of the mark reads as follows:
The mark consists of the letters “ELASTI” to the left of a
stylized “K”, with a leaf design in the letter “A”, followed by
the word “WAX”.
Color is not claimed as a feature of the mark.
For this registration Applicant disclaimed the exclusive right to use the word “Wax.”

2 Applicant filed the application for the mark ELASTIKWAX in standard character form. In
the September 5, 2019 Response to Office Action, Applicant amended its drawing to
ElastiKWax in a stylized format.
3 Registered September 20, 2016.
4 Registered November 29, 2016.
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The Examining Attorney refused to register Applicant’s mark under Section
2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that Applicant’s
mark is merely descriptive and has not acquired distinctiveness under Section 2(f) of
the Trademark Act, 15 U.S.C. § 1052(f).
I. Preliminary Issue
Although Applicant did not argue acquired distinctiveness in the alternative
between its initial claim and brief,5 both Applicant and the Examining Attorney
appear to treat the claim as it were prosecuted in the alternative. Accordingly, we
find that Applicant and the Examining Attorney stipulated that Applicant claims
that ElastiKWax has acquired distinctiveness in the alternative.
II. Whether ElastiKWax is merely descriptive?
In the absence of acquired distinctiveness, Section 2(e)(1) of the Trademark Act
precludes registration of a mark on the Principal Register that, when used in
connection with an applicant’s goods or services, is merely descriptive of them.
15 U.S.C. § 1052(e)(1). “A mark is merely descriptive if it immediately conveys
information concerning a feature, quality, or characteristic of the goods or services
for which registration is sought.” Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc.,
906 F.3d 965, 128 USPQ2d 1370, 1373 (Fed. Cir. 2018) (quoting In re N.C. Lottery,
866 F.3d 1363, 123 USPQ2d 1707, 1709 (Fed. Cir. 2017)). We “must consider the mark
as a whole and do so in the context of the goods or services at issue.” DuoProSS
Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757

5 February 11, 2019 Response to Office Action (TSDR 3, 5 and 76); Applicant’s Brief, p. 8 (7
TTABVUE 9).
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(Fed. Cir. 2012) (emphasis added); In re Calphalon, 122 USPQ2d 1153, 1162 (TTAB
2017). “Whether consumers could guess what the product is from consideration of the
mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB
1985). Indeed, “[t]he question is not whether someone presented with only the mark
could guess what the goods or services are. Rather, the question is whether someone
who knows what the goods and services are will understand the mark to convey
information about them.” DuoProSS, 103 USPQ2d at 1757 (quoting In re Tower Tech,
Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002)). This applies to compound marks as
well.
In considering a mark as a whole, the Board may weigh the
individual components of the mark to determine the overall
impression or the descriptiveness of the mark and its
various components. … [I]f ... two portions individually are
merely descriptive of an aspect of appellant’s goods [or
services], the PTO must also determine whether the mark
as a whole, i.e., the combination of the individual parts,
conveys any distinctive source-identifying impression
contrary to the descriptiveness of the individual parts.
In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1372 (Fed. Cir. 2004).
If each component retains its merely descriptive significance in relation to the
goods or services, then the mark as a whole is merely descriptive. Id. at 1374; In re
Mecca Grade Growers, LLC, 125 USPQ2d 1950, 1955 (TTAB 2018). Moreover, if the
mark as a whole were merely descriptive, the omission of a space between the two
components would not diminish its descriptiveness. “It is almost too well established
to cite cases for the proposition that an otherwise merely descriptive term is not made
any less so by merely omitting spaces between the words ....” Minn. Mining & Mfg.
Co. v. Addressograph-Multigraph Corp., 155 USPQ 470, 472 (TTAB 1967). See also
Serial No. 87674970

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In re Aquamar, Inc., 115 USPQ2d 1122, 1125 (TTAB 2015); In re Carlson, 91 USPQ2d
1198, 1200 (TTAB 2009) (URBANHOUZING merely descriptive of real estate
brokerage, consultation and listing services); In re A La Vieille Russie Inc., 60
USPQ2d 1895, 1897 n.2 (TTAB 2001) (“[T]he compound term RUSSIANART is as
merely descriptive as its constituent words, ‘Russian Art”’).
In addition, the misspelling of the term “Elastic Wax” as ElastiKWax has no
bearing on our analysis of descriptiveness because, in this case, the mere misspelling
of a word is not sufficient to change a merely descriptive term into an inherently
distinctive trademark. See Armstrong Paint & Varnish Works v. Nu-Enamel Corp.,
305 U.S. 315 (1938) (NU-ENAMEL; NU found equivalent of “new”); In re Quik-Print
Copy Shops, 616 F.2d 523, 205 USPQ 505, 507 n.9 (CCPA 1980) (QUIK-PRINT held
descriptive; “There is no legally significant difference here between ‘quik’ and
‘quick’”); In re Carlson, 91 USPQ2d at 1200-01 (“[W]e find that HOUZING will be
recognized as a misspelling of the descriptive word HOUSING.”); In re Organik Tech.
Inc., 41 USPQ2d 1690, 1694 (TTAB 1997) (“ORGANIK, which is the phonetic
equivalent of the term ‘organic,’ is deceptive”); Hi-Shear Corp. v. Nat’l Auto. Parts
Ass’n, 152 USPQ 341, 343 (TTAB 1966) (HI-TORQUE “is the phonetic equivalent of
the words ‘HIGH TORQUE’”).
It is the examining attorney’s burden to show that a term is merely descriptive of
an applicant’s goods or services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1010
(Fed. Cir. 1987). Once a prima facie case is established, the burden of rebuttal shifts
to Applicant. Id.
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We now turn to the evidence of record. The Examining Attorney submitted
evidence listed below referring to “Elastic Wax” to show that ElastiKWax, the
phonetic equivalent of “Elastic Wax,” is merely descriptive when used in connection
with “depilatory wax” and “personal hair removal services.”6 We highlight term
“Elastic Wax” for emphasis.
•Our Everyday Life website (oureverydaylife.com) (September 28, 2017)
How Do I Wax Hair with Elastic Wax?
Elastic wax is used to remove unwanted hair from any
location on the body. It is a type of body wax that is easier
to remove than other types. If done properly, waxing will
remove the hair and gradually make the regrowth of hair
thinner over time. If done improperly, even an elastic wax
will not remove all of the hair and rewaxing will be
necessary to remove all of the unwanted hair.7
•Starpil website (starpil.com) (December 4, 2017)
Which Wax Do You Prefer?

6 THE RANDOM HOUSE UNABRIDGED DICTIONARY (2020) defines “depilatory” as “capable of
removing hair.” Dictionary.com accessed May 26, 2020. Accordingly, depilatory wax is a
substance capable of removing hair.
The Board may take judicial notice of dictionary definitions, including online dictionaries
that exist in printed format. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB
2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); Threshold.TV Inc. v.
Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010); In re Red Bull GmbH,
78 USPQ2d 1375, 1378 (TTAB 2006).
We will not consider the excerpt from Applicant’s website nor the excerpt from WOMEN’S
HEALTH because the Examining Attorney did not include the URL of the websites or the
dates they were printed. February 13, 2018 Office Action at TSDR 5, 12. When making
Internet evidence part of the record, the examining attorney must (1) provide complete
information as to the date the evidence was published or accessed from the Internet, and its
source (e.g., the complete URL address of the website), and (2) download and attach the
evidence to the Office action. See Safer Inc. v. OMS Invs. Inc., 94 USPQ2d 1031, 1039 (TTAB
2010); Edom Labs. Inc. v. Lichter, 102 USPQ2d 1546, 1550 (TTAB 2012) (webpages
inadmissible because they did not include the URL).
7 February 13, 2018 Office Action (TSDR 6).
Serial No. 87674970

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The Starpil Waxes – Find Your Favorite Now!
* * *
1. Stripless Blue Film Beads – The Favorite!
Blue Film wax beads are Starpil’s most favorited [sic] wax!
Formulated using the latest technology for making it the
most elastic wax, this wax is suitable for all skin types.8
•Ultra Skin Wax Center website (ultraskinewaxcenter.com)
FAQ
* * *
Q. Does waxing hurt?
A. It can, but not as bad as you think. If you wax regularly,
over time the pain becomes minimal and sometimes
unnoticeable. We have highly trained Body Wax
Specialists who go through an extensive training program
to ensure you get the most comfortable wax possible with
amazing results. Our elastic wax gently removes the hair
from the root weakening the follicle with as little pain as
possible.9
•Depil Brazil Waxing Studio website (depilbrazilwaxing.com)
Where the messy, American waxing process involves sticky
wax and painful paper pulling, Depil Brazil’s clean, fast
technique relies on two direct applications of warm,
soothing, highly elastic wax – and no paper.10
•Nail Theory website (nailtheoryva.com)
Waxing Services
* * *

8 Id. at TSDR 11.
9 August 11, 2018 Office Action (TSDR 12).
10 Id. at TSDR 16.
Serial No. 87674970

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Our wax is elastic and doesn’t pull on your skin.
The wax remains elastic so it removes your unwanted hair
without pulling on your skin. Our elastic wax combined
with this special technique eliminates the risk of breaking
the hair, which results in longer-lasting smooth and
hairless skin.11
•Elastic Wax Center website (elasticwaxcenter.com)
12
The Elastic Wax Center advertises that “Elastic Wax” is
“all-natural and organic.”13
•iWAXu website (iwaxusmooth.com) advertises “Elastic Waxing for Everyone.”14
Gentle Powers of Elastic Wax
Elastic wax is the only wax we use in our salon because of
its incredible benefits! Elastic wax has longer lasting
results than other waxes and is the most painless was
available. Elastic wax has the ability to adhere to
extremely short hairs which allows for smooth touch-ups.
In addition, low fusion wax melts at lower temperature to
avoid overheating and irritation.15
•Byrdie website (birdie.com) (December 16, 2016)
9 Things No One Ever Tells You About Waxing
* * *

11 Id. at TSDR 18.
12 March 5, 2019 Office Action (TSDR 7).
13 Id. at TSDR 8.
14 Id. at TSDR 18.
15 Id. at TSDR 20.
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[Noemi] Grupenmager [Applicant’s founder and CEO] says
the best formula is elastic wax, which does not require
strips. She uses this formula at Uni K Wax Centers as it’s
ideal for sensitive skin and made of all natural ingredients
like pine tree and beeswax. “The elastic wax stretches,
causing less of a pull to the skin, meaning a more
comfortable hair removal experience,” she says. “Because
the elastic wax is applied at body temperature, it also
allows the waxing professional to remove the hair faster.”
* * *
All Waxes Are Not Created Equal
As detailed above, there are several wax options to consider
and all are not created equal. Grupenmager is a proponent
of the elastic wax due to its list of benefits. While hard
waxes are offered at many spas, she warns that “hard
waxes break and crack, making the wax difficult to remove
and also reducing hair removal efficiency. Another major
difference between the two that she notes is that while
elastic wax is applied at body temperature, hard wax is
applied hot, which can sometimes lead to burns if not done
properly.16
•Live About website (liveabout.com) (May 2, 2019)
Pro Waxing Tips for Skin of Color
Hair removal is a delicate process
* * *
For skin of color, there are some unique issues to address.
Noemi Grupenmager, founder and CEO of Uni K Wax
Centers, has some tips.
* * *
Asian Skin
“Since Asian skin tends to be more sensitive, I suggest
using an elastic wax for a more comfortable waxing
experience,” she says. “It’s applied at body temperature

16 Id. at TSDR 34.
Serial No. 87674970

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and stretches to remove hair without using waxing
strips.”17
Finally, we note that Applicant’s original specimen provides,
Continually looking to improve her business, Noemi
[Applicant’s founder] created an all-natural elastic wax to
replace the industry’s standard process of using painful
honey wax and paper strips.18
The evidence shows that “Elastic Wax” is a type of wax used in connection with
hair removal. Elastic wax is easier to remove than other waxes making it suitable for
all types of skin, especially sensitive skin. Technicians apply elastic wax at body
temperature thereby minimizing the chances of burning and allowing the waxing
professional to remove the unwanted hair faster. Because it stretches, it causes less
pulling of skin making a more comfortable hair removal experience.
Because ElastiKWax is the phonetic equivalent of “Elastic Wax” and the
misspelling of “Elastic Wax” as ElastiKWax has no bearing on our analysis because,
in this case, the mere misspelling of a word is not sufficient to change a merely
descriptive term into an inherently distinctive trademark, the Examining Attorney
has made prima facie showing that ElastiKWax is merely descriptive.

17 September 27, 2019 Denial of Request for Reconsideration (5 TTABVUE 9).
We exercise our discretion to not consider “Waxing 101: Important Details to Know Before
Your Spring Break Bikini Wax,” (5 TTABVUE 7) because the Examining Attorney did not
provide the URL or date accessed.
Likewise, we decline to consider the document regarding the European Wax Warmer Hair
Removal Waxing Kit (5 TTABVUE 14) because the Examining Attorney did not identify the
source of that document.
18 Applicant’s application (TSDR 9).
Serial No. 87674970

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Applicant contends that the stylized drawing of ElastiKWax creates a distinct
commercial impression separate and apart from the term “Elastic Wax” because
“consumers would interpret and pronounce the mark as ‘Elasti-kay-wax’ rather than
‘elastic wax.’”19 Consumers encountering ElastiKWax in connection with depilatory
wax or hair removal services will know immediately, without the need of cogitation
or multiple-step reasoning that ElastiKWax is merely a misspelling of “Elastic Wax,”
a type of wax used for hair removal. Under such circumstances, when we apply
normal English pronunciation, the average consumer in the U.S. is more likely to
pronounce ElastiKWax as “Elastic Wax,” rather than “Elasti-kay-wax.” We cannot
agree that consumers would perceive the distinction in pronunciation that Applicant
is advocating, especially because the stylization of the mark is not so prominent or
unusual as to distinguish it from a standard character mark. Moreover, the word
“elastic” is pronounced with a hard K-sound at the end, so there is no reason to believe
consumers would pronounce this portion of the mark differently than usual. Finally,
our precedents hold that there is no correct pronunciation of a mark because it is
impossible to predict how the public will pronounce a particular mark. See StonCor
Grp., Inc. v. Specialty Coatings, Inc., 759 F.3d 1327, 111 USPQ2d 1649, 1651 (Fed.
Cir. 2014) (“There is no correct pronunciation of a trademark that is not a recognized
word.”); Embarcadero Techs., Inc. v. RStudio, Inc., 105 USPQ2d 1825, 1835 (TTAB
2013) (quoting In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed.

19 Applicant’s Brief, p. 6 (7 TTABUE 7).
Serial No. 87674970

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Cir. 2012)); In re Allegiance Staffing, 115 USPQ2d 1319, 1325 (TTAB 2015) (no
correct pronunciation of mark that is coined term).
In addition, Applicant contends that the unique commercial impression
engendered by the stylized display of its mark ElastiKWax is incongruous and is
more than just a novel misspelling of “Elastic Wax.”
By calling to mind Applicant’s nearly 25 years of use of
marks emphasizing the letter “K,” Applicant’s applied-for
mark evokes a different and unique commercial impression
in the minds of consumers apart from the term “elastic
wax”—namely that the applied-for mark of text and design
elements, where the consumer’s eye is naturally drawn to
the incongruous use of the letter “K” presented in a graphic
element evoking a tear drop shape. Even a misspelling or
novel spelling of an otherwise generic word may still serve
as a trademark if it presents a different commercial
impression. See 2 McCarthy on Trademarks and Unfair
Competition § 12:38 (4th ed.).20
To support its contention, Applicant cites In re Grand Metro. Foodservice,
30 USPQ2d 1974 (TTAB 1994), arguing that ElastiKWax, like the unique stylization
of the mark MUFFUNS, reproduced below, is more than just a mere misspelling of a
descriptive word.

We disagree. The Board found that MUFFUNS (stylized) “projects a dual meaning or
suggestiveness that of muffins and of the ‘fun’ aspect of applicant’s food product

20 Applicant’s Brief, p. 15 (7 TTABVUE 16).
Serial No. 87674970

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[baked mini muffins]” and, therefore, engenders a different commercial impression
than that conveyed by a simple misspelling of a descriptive word. Id. at 1975-76. That
is, MUFFUNS (stylized) is a play on the words “muffin” and “fun.” Id. at 1976. With
respect to ElastiKWax, the mark connotes and creates the commercial impression of
“Elastic Wax” and nothing else.
Applicant asserts that because the USPTO did not require Applicant to disclaim
the words “Elastic” or “Elastic Wax” in its prior registrations, “the Trademark Office
has established a pattern of not finding ELASTI K (and by extension, ELASTI K
WAX) to be merely descriptive of the goods.”21 While Applicant makes this argument
to support its claim of acquired distinctiveness, we find that it is appropriate to
address it here. Applicant has not cited, and we have not found, any authority to
support Applicant’s contention. In fact, case law provides the opposite.
The record in this case contains many prior registrations of
marks including the term ULTIMATE. These prior
registrations do not conclusively rebut the Board’s finding
that ULTIMATE is descriptive in the context of this mark.
As discussed above, the term ULTIMATE may tilt toward
suggestiveness or descriptiveness depending on context
and any other factor affecting public perception. The Board
must decide each case on its own merits. In re Owens-
Corning Fiberglas Corp., 774 F.2d 1126, 1127, 227 USPQ
417, 424 (Fed. Cir. 1985). Even if some prior registrations
had some characteristics similar to Nett Designs’
application, the PTO’s allowance of such prior registrations
does not bind the Board or this court.

21 Id., p. 11 (7 TTABVUE 12).
Serial No. 87674970

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In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“[T]he
Board must assess each mark on the record of public perception submitted with the
application.”).
We find that ElastiKWax is merely descriptive of the goods and services
identified in the application.
III. Whether ElastiKWax has acquired distinctiveness?
Under Section 2(f) of the Trademark Act, matter that is merely descriptive under
Section 2(e)(1) may nonetheless be registered on the Principal Register if it “has
become distinctive of the applicant’s goods [or services] in commerce.” Thus, the
USPTO may register ElastiKWax on the Principal Register if Applicant proves that
it has acquired distinctiveness (also known as “secondary meaning”) as used in
connection with the Applicant’s depilatory wax and hair removal services. See Coach
Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1728-30
(Fed. Cir. 2012); Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc.,
123 USPQ2d 1844, 1848 (TTAB 2017). Acquired distinctiveness means an acquired
“mental association in buyers’ minds between the alleged mark and a single source
of the product.” Apollo Med. Extrusion Techs., 123 USPQ2d at 1848 (quoting
2 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 15:5 (4th ed., June 2017
Update)). In this regard, in analyzing above whether ElastiKWax is a descriptive
term, we considered all of the evidence, except the four documents we excluded
because the Examining Attorney did not provide their source or access date, touching
on the public perception of that term.
Serial No. 87674970

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An applicant seeking registration of a mark under Section 2(f) bears the ultimate
burden of establishing acquired distinctiveness. In re La. Fish Fry Prods., Ltd.,
797 F.3d 1332, 116 USPQ2d 1262, 1264 (Fed. Cir. 2015) (“The applicant ... bears the
burden of proving acquired distinctiveness.”) (citation omitted).
A. Degree of Descriptiveness
The initial question before us in our analysis of whether ElastiKWax has
acquired distinctiveness is the degree of descriptiveness of that term as used in
connection with Applicant’s goods and services. See Royal Crown Co. v. Coca-Cola
Co., 892 F.3d 1358, 127 USPQ2d 1041, 1048 (Fed. Cir. 2018) (“[T]he Board must make
an express finding regarding the degree of the mark’s descriptiveness on the scale
ranging from generic to merely descriptive, and it must explain how its assessment
of the evidentiary record reflects that finding.”); Nazon v. Ghiorse, 119 USPQ2d 1178,
1187 (TTAB 2016). “[A]pplicant’s burden of showing acquired distinctiveness
increases with the level of descriptiveness; a more descriptive term requires more
evidence of secondary meaning.” In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d
1420, 1424 (Fed. Cir. 2005). As the Board has explained:
[T]he greater the degree of descriptiveness, the greater the
evidentiary burden on the user to establish acquired
distinctiveness. The sufficiency of the evidence offered to
prove acquired distinctiveness should be evaluated in light
of the nature of the designation. Highly descriptive terms,
for example, are less likely to be perceived as trademarks
and more likely to be useful to competing sellers than are
less descriptive terms. More substantial evidence of
acquired distinctiveness thus will ordinarily be required to
establish that such terms truly function as source-
indicators.
Serial No. 87674970

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In re Greenliant Sys. Ltd., 97 USPQ2d 1078, 1085 (TTAB 2010) (internal citations
omitted). See also La. Fish Fry Prods., 116 USPQ2d at 1265 (Board has discretion not
to accept an applicant’s allegation of five years of substantially exclusive and
continuous use as prima facie evidence of acquired distinctiveness when the proposed
mark is “highly descriptive”); In re Bos. Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d
1056, 1058 (Fed. Cir. 1999) (“[C]onsidering the highly descriptive nature of the
proposed mark, [Applicant] has not met its burden to show that the proposed mark
has acquired secondary meaning.”).
Based on the evidence discussed above in connection with the descriptiveness
refusal, we find that the record also shows that the stylized mark ElastiKWax is at
the very least, highly descriptive of depilatory wax and hair removal services. See,
e.g., Real Foods Pty Ltd, 128 USPQ2d at 1374 (CORN THINS and RICE THINS are
highly descriptive); La. Fish Fry Prods., Ltd., 116 SUPQ2d at 1265; Apollo Med.
Extrusion Techs., 123 USPQ2d at 1851 (MEDICAL EXTRUSION TECHNOLOGIES
is highly descriptive of “polyurethanes in the form of sheets, films, pellets, granules,
and tubes for use in the manufacture of medical devices, medical diagnostic devices,
artificial vascular grafts, stents, pacemaker leads, artificial heart pump diaphragms,
catheters, drug delivery devices, orthopedic and spinal implants, blood glucose
monitors, and blood gas analyzers”); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1173
(TTAB 2013) (holding SUPERJAWS merely descriptive for tools). Clearly, no thought
or imagination is required to understand that depilatory wax and hair removal
Serial No. 87674970

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services rendered under the mark ElastiKWax invovle just that, an elastic wax used
to remove unwanted hair.
Accordingly, Applicant’s proposed mark ElastiKWax is highly descriptive of
Applicant’s goods and services under Section 2(e)(1) of the Trademark Act.
B. Acquired Distinctiveness
Because we have found that ElastiKWax is highly descriptive of Applicant’s
goods and services, Applicant’s burden of establishing acquired distinctiveness under
Section 2(f) is commensurately high. See Steelbuilding.com, 75 USPQ2d at 1424; In
re Bongrain Int’l Corp., 894 F.2d 1316, 13 USPQ2d 1727, 1729 (Fed. Cir. 1990); In re
LC Trademarks, Inc., 121 USPQ2d 1197, 1199 (TTAB 2016); In re Greenliant Sys.
Ltd., 97 USPQ2d at 1085.
As noted above in the “Preliminary Issue” discussion, Applicant claimed that
ElastiKWax has become distinctive of the goods and services in its application based
on ownership of Registration No. 5045249 for the mark UNIK ELASTIK (stylized),
and Registration No. 5093027 for the mark ELASTIK WAX and design, both
reproduced below and both for “depilatory wax,” in International Class 3.

Serial No. 87674970

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Trademark Rule 2.41(a), 37 C.F.R. § 2.41(a), provides that the USPTO may accept,
as prima facie evidence of acquired distinctiveness, ownership by the applicant of one
or more active prior registrations of the same mark on the Principal Register. A
proposed mark is the “same mark” as a previously registered mark for the purpose of
Trademark Rule 2.41(a) if it is the “legal equivalent” of such a mark. “A mark is the
legal equivalent of another if it creates the same, continuing commercial impression
such that the consumer would consider them both the same mark.” In re Dial-A-
Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1813 (Fed. Cir. 2001) (1-
888-M-A-T-R-E-S-S is the legal equivalent of (212) M-A-T-T-R-E-S). See also In re
Brouwerij Bosteels, 96 USPQ2d 1414, 1423 (TTAB 2010) (finding three-dimensional
product packaging trade dress mark is not the legal equivalent of a two-dimensional
design logo); In re Binion, 93 USPQ2d 1531, 1539 (TTAB 2009) (finding BINION and
BINION’S are not the legal equivalents of the registered marks JACK BINION and
JACK BINION’S). “No evidence need be entertained other than the visual or aural
appearance of the marks themselves.” Dial-A-Mattress Operating Corp., 57 USPQ2d
at 1812 (citing Van Dyne - Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156, 17
USPQ2d 1866, 1868 (Fed.Cir.1991)).
clearly cannot serve as a basis for acquired distinctiveness as
it is very different than ElastiKWax and consumers would not consider them the
same marks.
is not the legal equivalent of ElastiKWax even though they
share the term “Elastikwax.” features a highly stylized letter “K”
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displayed in a different style and size font that stands out from the rest of the mark,
and contains a leaf design, features missing from ElastiKWax. These are more than
immaterial differences. Accordingly, we disagree with Applicant’s contention that the
marks are legal equivalents because they both contain the term “Elastic Wax.”22
Applicant relies on In re Flex-O-Glass, Inc., 194 USPQ 203 (TTAB 1977) involving
an application to register a yellow rectangle with a red circle under Section 2(f) of the
Trademark Act based on an applicant’s ownership of a registration for a yellow
rectangle with a red circle with a portion of the yellow rectangle that is not colored
yellow. The Board found that this difference was immaterial.
The fact that a portion of the rectangle is not colored yellow
in the registered mark, does not serve to distinguish them
in any material way and to mask the prominence in each
of the yellow rectangle and red circle. It seems inescapable
that persons exposed to applicant's registered mark since
1966 would, upon encountering the instant mark when
first used in 1972, be likely to accept it as the same mark
or as an inconsequential modification or modernization
thereof. In other words, the marks are, in effect, and would
be recognized as one and the same mark.
Id. at 205-206.
In this case, however, ElastiKWax has a different stylization than
, including the prominently displayed letter “K,” as well as the

22 Applicant’s Brief, p. 9 (7 TTABVUE 10). Applicant explains that “consumers would expect
the elements ‘ElastiK’ and ‘ElastiKWax’ in the applied-for mark to emanate from the same
source as the prior registered marks UNI K ELASTI K Stylized and ELASTI K WAX Stylized
because any differences between the marks are slight or immaterial—namely, the special
form in the applied-for mark ElastiKWax is merely a different stylization of the prior
registrations’ stylization.” Id. However, the test for legal equivalency is not whether
consumers would expect the marks to emanate from the same source. As discussed above,
consumers must perceive the marks to be the same mark.
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addition of the leaf design. These differences are enough to create different
commercial impressions that are more than the addition of generic terms relied on by
Applicant in citing In re Best Prods. Co., 231 USPQ 988, 989 n.6 (TTAB 1986) (“[W]e
infer in the instant case that the differences between the marks BEST & Des. and
BEST JEWELRY & Des., and between the identifications of services in their
respective registrations, were deemed to be immaterial differences.”) and Am. Sec.
Bank v. Am. Sec. & Trust Co., 571 F.2d 564, 197 USPQ 65 (CCPA 1978) (holding that
the user of AMERICAN SECURITY BANK could tack on the prior use of AMERICAN
SECURITY to achieve priority because the deletion of the generic name “bank” did
not alter the overall commercial impression of the mark).
Finally, Applicant argues that because it “has a long history of using a family of
marks emphasizing the letter ‘K’ such that Applicant’s prior registrations for UNI K
ELASTI K Stylized and ELASTI K WAX Stylized and Applicant’s current applied-for
mark’s emphasis on the letter ‘K’ all carry with them the same secondary meaning
created by this family of mark.”23 That is, “[c]onsumers are likely to recognize the
letter ‘K’ in the applied-for mark as a separate, distinctive element due this family of
marks.”24
A trademark applicant may present evidence of a family of marks in order to show
acquired distinctiveness for a new “member” for that family. In re LC Trademarks,
Inc., 121 USPQ2d 1197, 1202 (TTAB 2016). This falls within the ambit of Trademark

23 Applicant’s Brief, p. 12 (7 TTABVUE 13).
24 Id.
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Rule 2.41(a)(3), 37 C.F.R. § 2.141(a)(3), which provides that an applicant may submit
“other appropriate evidence of distinctiveness.” See LC Trademarks, 121 USPQ2d at
1203 (“‘[O]ther appropriate evidence of distinctiveness’ could consist of market
evidence establishing a family of marks.”).
“[T]he rationale for the ‘family of marks’ theory is that a
party has in effect established a ‘secondary meaning’ in a
term which serves as the characteristic feature of a number
of marks used and promoted together by him in his field of
endeavor....” Merritt Foods Co. v. Americana Submarine,
209 USPQ 591, 597 (TTAB 1980) quoted in 7-Eleven Inc. v.
Wechsler, 83 USPQ2d 1715, 1720 (TTAB 2007). As the
Federal Circuit has put it, “Recognition of the family is
achieved when the pattern of usage of the common element
is sufficient to be indicative of the origin of the family. It is
thus necessary to consider the use, advertisement, and
distinctiveness of the marks, including assessment of the
contribution of the common feature to the recognition of the
marks as of common origin.” J & J Snack Foods. v.
McDonald’s, [932 F.2d 1460] 18 USPQ2d [1889] at 1891-92
[Fed. Cir. 1991]. See also 4 MCCARTHY ON
TRADEMARKS AND UNFAIR COMPETITION 23:61 (4th
ed. 2016); 5 CALLMANN ON UNFAIR COMPETITION,
TRADEMARKS AND MONOPOLIES 21:47 (4th ed. June
2016 update) (“In effect, to establish the existence of a
family relationship the trademark proprietor must meet
something like a secondary meaning standard.”).
LC Trademarks, 121 USPQ2d at 1203.
Applicant contends that it has established a family of “K” marks because
(1) it owns several marks all using the recognizable
common characteristic of emphasis on the letter “K,” (2) the
letter “K” is distinctive and even arbitrary in the context of
Applicant’s goods and services, and (3) Applicant has
promoted the element “K” through multiple trademarks
and branding strategies.25

25 Applicant’s Brief, p. 13 (7 TTABVUE 13).
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Applicant submitted copies of 12 registrations for marks consisting, in part, of the
letter “K” for depilatory wax and related services.26 However, ownership of a series of
similar marks does not, in and of itself, establish a family of marks. LC Trademarks,
121 USPQ2d at 1204 (citing Truescents LLC v. Ride Skin Care LLC, 81 USPQ2d 1334,
1337-38 (TTAB 2006); Sports Auth. Mich. Inc. v. PC Auth. Inc., 63 USPQ2d 1782,
1800 (TTAB 2001)). To prove the existence of a family of marks, an applicant must
show that its putative family (1) has a recognizable common characteristic that is
distinctive, and (2) has been promoted in such a way as to create “recognition among
the purchasing public that the common characteristic is indicative of a common origin
of the goods or services.” In re LC Trademarks, Inc., 121 USPQ2d at 1204 (quoting
Wise F&I, LLC v. Allstate Ins. Co., 120 USPQ2d 1103, 1109 (TTAB 2016)); Hester
Indus. Inc. v. Tyson Foods Inc., 2 USPQ2d 1646 (TTAB 1987).
The letter “K” is distinctive when used in connection with depilatory wax and hair
removal services. To show how it advertises the different members of its “K” family
of marks, Applicant submitted representative examples of its advertising including
the following:

26 September 5, 2019 Response to Office Action (TSDR 27-87).
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•A document distributed to potential franchisees and customers purchasing
product displaying UNI K WAX and ElastiKWax reproduced below:27

27 Id. at TSDR 25.
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•An excerpt from Applicant’s Instagram account displaying the stylized letter “K,”
“unikwaxstudios,” and UNI K WAX and design, reproduced in part below:28

The promotional materials submitted by Applicant are insufficient to demonstrate
that the relevant public regards the letter “K” as the common feature of a family of
marks owned by Applicant. See Truescents LLC, 81 USPQ2d at 1338 (there must be
sufficient evidence upon which the Board may base a finding that purchasers
recognize a term as the purported surname of a family of marks); Am. Standard, Inc.

28 Id. at 90.
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v. Scott & Fetzer Co., 200 USPQ 457, 461 (TTAB 1978) (“[I]t must be demonstrated
that the marks asserted to comprise its ‘family’ or a number of them have been used
and advertised in promotional material or used in everyday sales activities in such a
manner as to create common exposure and thereafter recognition of common
ownership based upon a feature common to each mark.”). Compare J & J Snack, 18
USPQ2d 1889, where McDonald’s showed extensive usage and promotion of various
marks using the “Mc” formative in association with the McDONALD’S mark at over
7,600 outlets in the U.S., with sales in the billions of dollars, and extensive
nationwide advertising in the hundreds of millions of dollars. While we do not require,
nor expect, Applicant to advertise its marks to the same extent as McDonald’s
Corporation, the evidence in this case is simply not sufficient to support the public
recognition of a family of depilatory wax and hair removal services incorporating the
letter “K”. See Colony Foods, Inc. v. Sagemark, Ltd., 735 F.2d 1336, 222 USPQ 185
(Fed. Cir.1984). In other words, the record is lacking evidence that the public
recognizes the letter “K” to identify Applicant.
Assuming arguendo that Applicant has a family of “K” marks in the field of
depilatory wax and hair removal services, because ElastiKWax is so highly
descriptive of those products the existence of Applicant’s family of marks is one factor
for us to consider but it is not dispositive of whether ElastiKWax has acquired
distinctiveness. “To show that a mark has acquired distinctiveness, an applicant must
demonstrate that the relevant public understands the primary significance of the
mark as identifying the source of a product or service rather than the product or
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service itself.” Steelbuilding.com, 75 USPQ2d at 1422; see also Coach Servs.,
101 USPQ2d at 1729. We base our Section 2(f) analysis and determination in this
case on all of the evidence considered as a whole, guided by the following factors:
(1) association of the trade[mark] with a particular source
by actual purchasers (typically measured by customer
surveys); (2) length, degree, and exclusivity of use; (3)
amount and manner of advertising; (4) amount of sales and
number of customers; (5) intentional copying; and (6)
unsolicited media coverage of the product embodying the
mark. ... All six factors are to be weighed together in
determining the existence of secondary meaning.
In re Snowizard, Inc., 129 USPQ2d 1001, 1005 (TTAB 2018) (quoting Converse, Inc.
v. Int’l Trade Comm’n, 907 F.3d 1361, 128 USPQ2d 1538, 1546 (Fed. Cir. 2018)). See
also Steelbuilding.com, 75 USPQ2d at 1424; Cicena Ltd. v. Columbia Telecomms.
Grp., 900 F.2d 1546, 14 USPQ2d 1401, 1406 (Fed. Cir. 1990). On this list, no single
fact is determinative. In re Tires, Tires, Tires Inc., 94 USPQ2d 1153, 1157 (TTAB
2009); In re Ennco Display Sys. Inc., 56 USPQ2d 1279, 1283 (TTAB 2000) (“Direct
evidence [of acquired distinctiveness] includes actual testimony, declarations or
surveys of consumers as to their state of mind. Circumstantial evidence, on the other
hand, is evidence from which consumer association might be inferred, such as years
of use, extensive amount of sales and advertising, and any similar evidence showing
wide exposure of the mark to consumers.”).
1. Association of ElastiKWax with a particular source.
Because we are assuming that Applicant owns a family of “K” marks in connection
with depilatory wax and hair removal services and that ElastiKWax is part of that
family of marks, this is evidence that ElastiKWax points to a single source.
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2. The length, degree and exclusivity of use.
Applicant did not submit any evidence regarding the length of time it has been
using ElastiKWax. Because the application was filed on November 7, 2017, under
Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), we may use the filing date of
the application as Applicant’s constructive date of first use. In addition, Applicant did
not introduce any evidence regarding when the purported “K” family of marks was
established.
Although, there is no evidence that there any other users of ElastiKWax, the
evidence submitted by the Examining Attorney to support the merely descriptive
refusal shows that there are many users of “Elastic Wax.”
3. The amount and manner of advertising.
Applicant did not submit any evidence regarding the extent of its advertising.
Applicant submitted an excerpt from its Instagram account and we assume that
Applicant has a website, but there is no evidence regarding how many users follow
Applicant on Instagram or how many people have visited Applicant’s website.
4. The amount of sales and number of customers.
Applicant did not submit any evidence regarding its sales or customers.
5. Intentional copying.
Applicant did not submit any evidence regarding intentional copying.
6. Unsolicited media coverage of the product embodying the mark.
Applicant did not submit any evidence regarding unsolicited media coverage
embodying ElastiKWax or any other marks in its purported family of “K” marks. As
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noted above, however, Applicant’s founder and CEO was quoted a number of times
regarding the benefits of using of elastic wax for hair removal.
With the exception of the fact that ElastiKWax may be part of Applicant’s
purported “K” family of marks, the record is void of any evidence supporting
Applicant’s claim that ElastiKWax, or the purported family of “K” marks, has
acquired distinctiveness. In view of the foregoing, we find that Applicant failed to
prove that ElastiKWax has acquired distinctiveness when used in connection with
depilatory wax and hair removal services.
Decision: The refusal to register Applicant’s mark ElastiKWax is affirmed.