UKW Holding Company

Trademark Trial and Appeal Board

Oct 19, 2020

87674981 (T.T.A.B. Oct. 19, 2020)

Mailed: October 19, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re UKW Holding Company
_____

Application Serial No. 87674981
_____

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 ELASTIK WAX NATURAL DEPILATORY WAX and design, reproduced
below, for “depilatory wax,” in International Class 3, and “personal hair removal
services,” in International Class 44.1

1 Serial No. 87674981 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
Precedent of the TTAB
PrePrecedent of the TTAB
Serial No. 87674981

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The description of the mark reads as follows:
The mark consists of three stacked lines of wording: the
words “ELASTI” and “K” in large-type, with the “K” being
represented by teardrop shape with sections of varying
shades delineated by the impression of the letter “K”; the
words “NATURAL DEPILATORY WAX” in small-type; and
the word “WAX” in large type.
Color is not claimed as a feature of the mark.
Applicant disclaimed the exclusive right to use “Natural Depilatory Wax” and
“Wax.”
During prosecution, Applicant claimed that its mark acquired distinctiveness
under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), based on its ownership
of the two registrations listed below “for the same mark for sufficiently similar
goods/services.”2
● Registration No. 5045249 for the mark UNIK ELASTIK (stylized), reproduced
below, for “depilatory wax,” in International Class 3.3

2 February 11, 2019 Request for Reconsideration (4 TTABVUE 3, 69-70),
3 Registered September 20, 2016.
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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.”

The Examining Attorney refused to register Applicant’s mark under Sections
2(e)(1) and 6(a) of the Trademark Act, 15 U.S.C. §§ 1052(e)(1) and 1056(a), on the
ground that the word “Elastic” in 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) ,

4 Registered November 29, 2016.
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and, therefore, it may not be registered unless Applicant disclaims the exclusive right
to use the word “Elastic.”5
I. Whether the word “Elastic” is merely descriptive?
A requirement under Section 6 of the Trademark Act for a disclaimer of
unregistrable matter in a mark is appropriate when that matter is merely descriptive
of the goods or services at issue. See In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d
1087, 1089 (Fed. Cir. 2005). Merely descriptive or generic terms are unregistrable
under Section 2(e)(1) of the Trademark Act and, therefore, are subject to a disclaimer
requirement if the mark is otherwise registrable. Failure to comply with a disclaimer
requirement is a ground for refusal of registration. See In re La. Fish Fry Prods., Ltd.,
797 F.3d 1332, 116 USPQ2d 1262, 1266 (Fed. Cir. 2015); In re RiseSmart Inc., 104
USPQ2d 1931, 1933 (TTAB 2012).
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

5 “If a mark comprises a word or words that are misspelled but nonetheless must be
disclaimed, the examining attorney must require disclaimer of the word or words in the
correct spelling.” TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”) § 1213.08(c)
(Oct. 2018).
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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
(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
Serial No. 87674981

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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
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” as “Elastik” or “Elasti K” 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
Serial No. 87674981

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(Fed. Cir. 1987). Once a prima facie case is established, the burden of rebuttal shifts
to Applicant. Id.
We now turn to the evidence of record. The Examining Attorney submitted
evidence listed below referring to “Elastic Wax” to show that “Elastik” or “Elasti K,”
the phonetic equivalent of “Elastic,” is merely descriptive when used in connection
with “depilatory wax” and “personal hair removal services.”6 We highlight the term
“Elastic Wax” for emphasis. Citations to the prosecution record are to the USPTO’s
Trademark Status and Document Retrieval system (TSDR) in the downloadable .pdf
format.
● Ultra Skin Wax Center website (ultraskinewaxcenter.com)
FAQ
* * *
Q. Does waxing hurt?

6 THE RANDOM HOUSE UNABRIDGED DICTIONARY (2020) defines “depilatory” as “capable of
removing hair.” Dictionary.com accessed October 14, 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 do not consider the excerpt from Applicant’s purported website 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. 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). See also In re I-Coat Co., 126 USPQ2d 1730,
1733 (TTAB 2018) (applying Safer to evidence submitted by examining attorneys and
applicants in ex parte cases).
Serial No. 87674981

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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.7
● 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.8
● Nail Theory website (nailtheoryva.com)
Waxing Services
* * *
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.9
● Elastic Wax Center website (elasticwaxcenter.com)

All of our products, from our Elastic Wax to the Puritan’s
Pride 100% concentrated tree oil, is all-natural and organic

7 August 11, 2018 Office Action (TSDR 12).
8 Id. at TSDR 16.
9 Id. at TSDR 18.
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to keep your skin healthy and smooth after your waxing is
complete.”10
* * *
Painless, Moisturizing Waxing
Our unique aloe-based Elastic hard wax moisturizers
and doesn’t pull on the skin, preventing ingrown hairs,
rawness, and leaves your skin simply smooth and
hydrated.11
● iWAXu website (iwaxusmooth.com) advertises “Elastic Waxing for
Everyone.”12
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.13
● Byrdie website (byrdie.com) (December 17, 2016)
9 Things No One Ever Tells You About Waxing
* * *
… [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

10 March 5, 2019 Office Action (TSDR 8).
11 Id. at TSDR 11.
12 Id. at TSDR 18.
13 Id. at TSDR 20.
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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.14
● 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
and stretches to remove hair without using waxing
strips.”15

14 Id. at TSDR 34.
15 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
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Finally, we note that Applicant’s specimen submitted in its July 20, 2018
Response, provides “Our pine-based, proprietary elastic-wax formula is created with
pure, honest ingredients for optimal comfort on even the most sensitive skin.”16
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 ELASTIK or ELASTI K is the phonetic equivalent of “Elastic,” and the
misspelling of “Elastic” as ELASTIK or ELASTI K has no bearing on our analysis
given that, 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 “Elastik” or “Elasti k” in the term
ELASTIK WAX or ELASTI K WAX is merely descriptive.
Applicant contends that the word “Elastik” in the mark ELASTIK [or ELASTI K]
WAX NATURAL DEPILATORY WAX and design creates a distinct commercial
impression separate and apart from the term “Elastic” because “consumers would
interpret and pronounce the mark as ‘Elasti-K’ rather than ‘elastic.’”17 However,

Examining Attorney did not identify the source of that document. See In re I-Coat Co., 126
USPQ2d at 1733.
16 July 20, 2018 Response to Office Action (TSDR 5-6).
17 Applicant’s Brief, p. 7 (7 TTABVUE 8).
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consumers encountering Applicant’s mark ELASTIK WAX [or ELASTI K WAX]
NATURAL DEPILATORY WAX and design in connection with depilatory wax or hair
removal services will know immediately, without the need of cogitation or multiple -
step reasoning that ELASTIK or ELASTI K is merely a misspelling of “Elastic” in the
term “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 Elastik or Elasti K as “Elastic,” rather than “Elasti-kay.”
We cannot agree that consumers would perceive the distinction in pronunciation that
Applicant is advocating because of the design format used by Applicant.
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. Cir. 2012)); In re Allegiance
Staffing, 115 USPQ2d 1319, 1325 (TTAB 2015) (no correct pronunciation of mark
that is coined term).
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In addition, Applicant contends that the unique commercial impression
engendered by the stylized display of the term ELASTIK or ELASTI K in its mark is
incongruous and is more than just a novel misspelling of “Elastic.”
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.).18
To support its contention, Applicant cites In re Grand Metro. Foodservice,
30 USPQ2d 1974 (TTAB 1994), arguing that ELASTIK or ELASTI K, 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
[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

18 Applicant’s Brief, p. 15 (7 TTABVUE 16).
Serial No. 87674981

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is, MUFFUNS (stylized) is a play on the words “muffin” and “fun.” Id. at 1976. With
respect to ELASTIK or ELASTI K as used in Applicant’s mark, ELASTIK or ELASTI
K connotes and creates the commercial impression of “Elastic” 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.”19 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.
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.”).

19 Id., p. 11 (7 TTABVUE 12).
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We find that “Elastik” or “Elasti K” is merely descriptive of the goods and services
identified in the application.
II. Whether ELASTIK or ELASTI K 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 the mark on the Principal Register if Applicant proves that
ELASTIK or ELASTI K has acquired distinctiveness (also known as “secondary
meaning”) as used in connection with 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
ELASTIK or ELASTI K is a descriptive term, we considered all of the evidence, except
the documents we excluded because the Examining Attorney did not provide their
source or access date, touching on the public perception of that term.
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., 116
USPQ2d at 1264 (“The applicant ... bears the burden of proving acquired
distinctiveness.”) (citation omitted).
Serial No. 87674981

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A. Degree of Descriptiveness
The initial question before us in our analysis of whether ELASTIK or ELASTI K
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.
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
Serial No. 87674981

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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 disclaimer
requirement, we find that the record also shows that the term “Elastic” 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 USPQ2d 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). Therefore,
ELASTIK or ELASTI K, as the phonetic equivalent of “Elastic,” is also highly
descriptive. See Armstrong Paint & Varnish Works v. Nu-Enamel Corp., 305 U.S. 315;
Quik-Print Copy Shops, 205 USPQ at 507 n.9 ; Carlson, 91 USPQ2d at 1200-01;
Organik Tech., 41 USPQ2d at 1694; Hi-Shear Corp. v. Nat’l Auto. Parts Ass’n, 152
USPQ at 343.

Serial No. 87674981

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Clearly, no thought or imagination is required to understand that the term
ELASTIK or ELASTI K in the mark Applicant seeks to register for depilatory wax
and hair removal services rendered is just that, an elastic wax used to remove
unwanted hair.
Accordingly, the term ELASTIK or ELASTI K in the proposed mark 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 ELASTIK or ELASTI K 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, Applicant claimed that ELASTIK or ELASTI K 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.

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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 the mark sought to be registered, reproduced below, and
consumers would not consider them the same marks.
Serial No. 87674981

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is not the legal equivalent of ELASTIK or ELASTI K in the
above-noted mark sought to be registered even though they share the terms “Elastik”
and “Wax” or “Elasti K” and “Wax.” The style of lettering in and
ELASTIK or ELASTI K in the mark sought to be registered is different, and the
marks have different designs that are more than immaterial differences. Accordingly,
we disagree with Applicant’s contention that the marks are legal equivalents because
they both contain the terms “Elastik” and “Wax” or “Elasti K” and “Wax.”20
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

20 Applicant’s Brief, p. 9 (7 TTABVUE 10). Applicant explains that “consumers would expect
the element ELASTI K in the subject application 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, (i) the special stylization of
lettering in ‘ELASTI’ and ‘K’ in the applied-for mark is merely a modernization of the prior
registrations’ stylization, and (ii) the addition or removal or highly descriptive or generic
wording and does not create a different mark.” 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.
Serial No. 87674981

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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, and have different design elements
and the words have different stylizations. 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
Serial No. 87674981

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created by this family of mark.”21 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.”22
A trademark applicant may present evidence of a family of marks in order to show
acquired distinctiveness for a new “member” for that family. LC Trademarks, 121
USPQ2d at 1202. This falls within the ambit of Trademark Rule 2.41(a)(3), 37 C.F.R.
§ 2.41(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

21 Applicant’s Brief, p. 11 (7 TTABVUE 12).
22 Id. at p. 12 (7 TTABVUE 13).
Serial No. 87674981

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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.23
Applicant submitted copies of 12 registrations for marks consisting, in part, of the
letter “K” for depilatory wax and related services.24 However, the mere ownership of
a series of similar marks does not 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.” LC Trademarks, 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).

23 Applicant’s Brief, p. 12 (7 TTABVUE 13).
24 September 5, 2019 Response to Office Action (TSDR 24-84).
Serial No. 87674981

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Applicant argues 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:
● A document distributed to potential franchisees and customers purchasing
product displaying UNI K WAX and ElastiKWax reproduced below:25

25 Id. at TSDR 22.
Serial No. 87674981

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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:26

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.

26 Id. at 86.
Serial No. 87674981

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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 “Elastik” or “Elasti K” as part of
the term ELASTIK WAX or ELASTI K WAX is so highly descriptive of those products
and services the existence of Applicant’s family of marks is one factor for us to
consider but it is not dispositive of whether ELASTIK or ELASTI K 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
Serial No. 87674981

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mark as identifying the source of a product or service rather than the product or
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.”).
Serial No. 87674981

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1. Association of ELASTIK or ELASTI K with a particular source.
If we assume that Applicant owns a family of “K” marks in connection with
depilatory wax and hair removal services and that the mark at issue is part of that
family of marks, this is evidence that the subject mark points to a single source.
2. The length, degree and exclusivity of use.
Applicant did not submit any evidence regarding the length of time it has been
using the subject mark or the term ELASTIK or ELASTI K. 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 ELASTIK or ELASTI
K the evidence submitted by the Examining Attorney to support the disclaimer
requirement 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.
Serial No. 87674981

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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 ELASTIK or ELASTI K alone or as part of the term ELASTIK WAX or
ELASTI K WAX or any other marks in its purported family of “K” marks. As 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 ELASTIK or ELASTI K may be part of
Applicant’s purported “K” family of marks, the record is void of any evidence
supporting Applicant’s claim that ELASTIK, ELASTI K, or the purported family of
“K” marks, has acquired distinctiveness. In view of the foregoing, we find that
Applicant failed to prove that ELASTIK or ELASTI K has acquired distinctiveness
when used in connection with depilatory wax and hair removal services.
Decision: The refusal to register Applicant’s mark is affirmed.
However, if Applicant submits the required disclaimer within 30 days of the
mailing date of this decision, the requirement will be met and the application will
proceed in both classes. Trademark Rule 2.142(g), 37 C.F.R. § 2.142(g). If Applicant
submits the disclaimer, the wording should read as follows:
No claim is made to the exclusive right to use “ELASTIC,”
“NATURAL DEPILATORY WAX,” and “WAX” apart from
the mark as shown.
See TMEP § 1213.08(a)(i) (2018).