GOLD SEAL COMPANY V. WEEKS, 129 F. SUPP.

928, MARCH 24, 1955

FACTS: Gold Seal Company sought register Glass Wax as a trademark which is used by it in connection
with its liquid composition for cleaning glass and metal.

Patent Office and S.C. Johnson & Son, Inc’s Argument: The mark is in deceptive as “Glass Wax”
would be generally understood to refer to a product which leaves a wax film when applied to glass or at
least contains wax.

Gold Seal’s Argument: Glass Wax is a technical trademark and that it is not deceptive as it describes
both a cleaner for glass and a cleaner for metal. And that even if Glass Wax is not a technical trademark,
it should should still be registered since it has acquired distinctive or secondary meaning.

ISSUES: (1) Is “Glass Wax” a deceptive mark? – NO

(2) Is “Glass Wax” a deceptively misdescriptive mark? – YES

HELD: A mark can be considered as deceptive when an essential and material element is
misrepresented, is distinctly false, and is the very element upon which the customer relies in purchasing
one product over the others. In this case, the product contains an element which can only be known
through scientific analysis and such element is not determinative in leading the customers to buy the
product. The product satisfies the needs of its customers that the average customer cares little about, and
knows little, about the scientific composition of the product. Gold Seal has sold over 90 million units of its
glass and metal cleaner which indicates that it satisfies the customers and that it is a good product.

However, it should not be allowed registration since it is a deceptively misdescriptive mark. It describes a
wax for glass and it does not describe the true nature of the product which is a cleaner and polisher for
metal and glass. The product does not describe the quality or function for which the product is advertised
as—cleaner for metal. The customers might believe that it contains wax but it has no wax or at least wax
in a sufficient quantity as to justify the use of the word. Further, it is sold in association with other wax
products as the other glass and metal cleaners do contain wax and has a similar appearance with the
product sold by Gold Seal.
 IN RE BUDGE MANUFACTURING CO., INC., 857 F.2D 773, SEPTEMBER 21, 1988

FACTS: Budge Manufacturing Co. sough to register LOVEE LAMB for its automotive seat covers but it
was refused registration.

United States Trademark Trial and Appeal Board’s Argument: The term LAMB is deceptive when
applied to Budge’s seat cover since they are made wholly from synthetic fibers.

Budge Manufacturing Co.’s Argument: Its use of the term LAMB is not misdescriptive since it states in
its advertising that the cover is made of "simulated sheepskin."

ISSUE: Is Budge’s use of the term LAMB deceptive? – YES

HELD: The 3-part test was used to determine if a term is deceptive and it is as follows:
1. Is the term misdescriptive of the character, quality, function, composition or use of the goods?
2. If so, are prospective purchasers likely to believe that the misdescription actually describes the
goods?
3. If so, is the misdescription likely to affect the decision to purchase?

Applying this test in the case:

1. Yes, it is misdescriptive. Budge admitted that its seat covers are not made from lamb or sheep
products.
2. Yes, purchasers will likely believe that the seat covers denominated by the lamb or sheep will be
made of natural lamb or sheep skins. Seat covers for various vehicles can be made from natural
lambskin and sheepskin. Lambskin is defined as fine-grade sheep skin unlike the simulated skins
sold by Budge.
3. Yes, the misdescription can affect the purchasing decision. Natural sheepskin or lambskin is
more expensive than simulated skins and they also have different characteristics.
 IN RE JOINT-STOCK COMPANY “BAIK”, 80 U.S.P.Q.2D 1305, AUGUST 28, 2007

FACTS: Joint-Stock Company Baik sought to register the mark BAIK for its vodka but it was refused.

Examining Attorney’s Argument: The mark “BAIK” is primarily merely a surname and it has no meaning
other than as a surname according to dictionary evidence from Dictionary.com, Microsoft Encarta, and
Merriam-Webster Online.

Baik’s Argument: BAIK sounds similar to Baikal which is a Russian lake in Siberia and the Baikal
mountain range in Siberia. The term BAIK is promoted together with the words “Vodka Siberia” hence it
results to the primary significance of the mark to the purchasers as a fanciful Russian term used a
trademark.

ISSUE: Should the mark BAIK be refused registration since it is primarily a surname? – NO

RULING: The Court held that the mark should be allowed to be registered and that the Examining
Attorney failed to establish that BAIK is primarily merely a surname. The Court accepted Baik’s argument
that BAIK is a coined term since there is evidence that it has any recognized meaning. And that it also
sounds similar to the word “Baikal” which has geographical significance as it is a lake and mountain range
in the Siberian region of Russian. Moreover, BAIK is a very rare surname as there are only 456 examples
of the Baik surname that were located from a comprehensive directory of the entire United States. Hence,
it cannot be assumed that the purchasing public will view it as a surname based on its exposure as a
surname.