Soywax trade marked??

For those concerned with the Soy Wax trademark issue, here is a little more information that may help. My apologies for its length, but this is a complicated subject.

If I am incorrect on any points below, I sincerely apologize, and please let us know the facts so that we can all understand better, and please show documentation to back the claim.

My comments primarily mention Ewe-R-Wooly because they are ones claiming right to the words Soy Wax as it pertains to candles.

I spoke with a Trademark Lawyer recently, and according to him, based on the US Patent and Trademark Office for Trademark Serial Number 78415479 this a trademark for the style or design, in which Ewe-R-Wooly had the words Soy Wax made into a nice little logo using the words soy wax, this trademark is not for the plain text words Soy Wax themselves. However, he did admit that it is not entirely impossible for Ewe-R-Wooly to have registered the plain text words Soy Wax, along with their logo, but based on document Serial Number 78415479, it is improbable.

Patents and Trademarks are put on a probation period, so to speak, where the public can contact the Patent and Trademark Office to “protest”, for lack of a better term, the trademark in question. You can contact the Trademark Assistance Center at 1-800-786-9199 if you would like more information.

Please Note: The following instructions do not mean that your use of the words Soy Wax is entirely legal. If you are not affiliated with Ewe-R-Wooly, they can still choose to enforce its trademark should they feel you are using it improperly, or diluting it.

As for using the plain text words soy wax to identify the fact that you are providing goods made with soy wax, be careful. If it is true that Ewe-R-Wooly has trademarked the plain text words soy wax than you will want to be on the safe side, so your advertisement should indicate that Soy Wax is a registered trademark of Ewe-R-Wooly, and should include a disclaimer that your products are not affiliated with, or sponsored by Ewe-R-Wooly. Finally, you must use the federally registered symbol -- "R" in a circle -- when using Soy Wax in a commercial setting, not the "TM" symbol.

If all of this seems like to much hassle, a safer rout would be to discontinue using Soy Wax and instead use something along the lines of “Soy Based Candles” “Soy Candle” or Soy Based…whatever products you are manufacturing.

According to my research, a Soy Wax trademark for plain text is considered a “weak mark” because it is descriptive, not creative. However, it could have been made a strong mark through heavy advertising by Ewe-R-Wooly, though I for one have not seen soy wax anything advertised anywhere, even at places that sell soy wax based products. However, legally, all Ewe-R-Wooly has to do is put the mark on tags, literature, letter head, and so forth for it to be considered used in commerce and there for a legal mark, they don’t actually have to sell anything. Again, the Trademark Lawyer I spoke to said the stylized Soy Wax logo is most likely the only Trademark Ewe-R-Wooly owns, not the plain text words Soy Wax, unless the words Soy Wax has reached a “Secondary Meaning” (see below for definition). However, it is highly unlikely that the plain text words Soy Wax would have had enough time to gain secondary meaning between the time Ewe-R-Wooly filed for their mark on May 8, 2004 and today.

The Lawyer also stated that it was not a good idea for the cease and desist letter to have information on how to purchase Ewe-R-Wooly products, which according to the cease and desist letter, purchasing Ewe-R-Wooly products is the only way to be safe from litigation if you use the term soy wax. The lawyer said it was a bad idea because it would weaken Ewe-R-Wooly mark by using what he called “scare tactics” to sell their products, and apparently the Patent and Trademark office frowns on this.

If it is true, and Ewe-R-Wooly was able to register the plain text words Soy Wax, the following information MAY explain how Ewe-R-Wooly was able to register the mark.

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U.S. Federal Registration Requirements:

• Use of marks. Before one can get federal registration, a mark must be used properly. For goods, this means that the mark must appear on labels, not only in advertising. It also means that word marks should never be used as verbs or nouns. Trademarks are adjectives: The seller of Gizmo brand gadgets must never say that its gadget "gizmos" or refer to its gadget as a "gizmo". It must always use the mark with the word gadget as in "the Gizmo gadget" or "the Gizmo brand gadget." Those who do not heed these rules will get into trouble and can lose their rights.
Made Strong: Descriptive Marks That Acquire Secondary Meaning
Trademarks that describe some feature or quality of the goods or that are based on someone's name or a geographic term are usually considered to be weak and unprotectible under trademark law. However, once the trademark owner can demonstrate substantial sales, advertising or other public awareness of a weak trademark (known as "secondary meaning"), the trademark will be considered distinctive and can be registered with the United States Patent and Trademark Office (USPTO). Examples of weak marks that have acquired secondary meaning include:

• people's names, such as Peet's Coffee or Newman's Own Salad Dressing

• geographic terms, such as Bank of America or DKNY, and

• words that describe the goods or services, such as Beef and Brew restaurants and Vision Center eyeglass stores.

The Lawyer I spoke with said that based on the above statement, and the relatively short time since filing for the Soy Wax mark, it is unlikely that they have met the term required for a secondary meaning for a plain text mark, and the stylized mark is most likely the only registered mark.

Are there terms that can't be protected under the trademark laws?
There are five common situations in which there are no trademark protection. In any of these situations, the intended trademark cannot be registered and the owner has no right to stop others from using a similar mark.

• Abandoned marks. If the owner of a trademark has stopped using it in commerce and indicated an intention not to resume use, the mark is no longer protectible.

• Generic terms. If a company attempts to use the name of the goods themselves (for example, the term “Lemonade” for a lemonade drink) the name will not be protected because it is a generic term.

• Marks that are confusingly similar to existing marks. A mark that is confusingly similar to another mark is unprotectible if it used for similar goods (for example, a company cannot use Kedz as a trademark for athletic shoes because it is confusingly similar to Keds's brand of shoes).

• Weak marks that have not achieved secondary meaning. A weak (or descriptive) mark is not protectible without proof of consumer awareness.

• Functional features. A functional element of a product shape or of a product’s packaging, as opposed to a purely decorative element, is not protectible as a trademark.

Based on the second statement in the last group “Generic terms.” there is still question in my mind that a term such as soy wax, which to pretty much all of us in the soy candle business is considered a descriptive term relating to an ingredient or component of our products, could be considered trademarkable. The Lawyer agreed with me.

So what does all this mean?

If you want to be sure that you are 100% safe from litigation, stop using the plain text words Soy Wax, or any logo that has the words Soy Wax. However, this will make it so that Ewe-R-Wooly, and its associates, are the only ones using the term, along with their registered Soy Wax Logo, and will eventually help them meet the terms required for Secondary Meaning granting them rights to the plain text words Soy Wax.

Or you could continue using the plain text words Soy Wax. There is legal precedence where a small “Mom & Pop” company have won trademark battles against large companies because they were able to show proof that they were known in their community for using those words, long before the mark was registered by the other company. Case in point, a small mom & pop pizza joint successfully sued a national pizza chain for using the words Big Foot Pizza, because the mom & pop pizzeria was able to show proof that they had been using the words “Big Foot Pizza” for years before the Pizza Chain adopted it for a new pizza campaign.

Again, if I am incorrect on any of my findings, please post the corrections with the appropriate documentation so that we can all be better informed.

We sincerely hope that this does not harm our relationship with Ewe-R-Wooly, because we purchase several of our candle components from them, and we would hate to loose them as a supplier. We are just trying to clear up any confusion there may be regarding the use of the plain text words Soy Wax.

I hope this helps.

Bob & Carol