AutoNation Inc.

Trademark Trial and Appeal Board

Oct 13, 1999

EX (T.T.A.B. Oct. 13, 1999)

Paper No. 17
RLS/MM
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG. 18, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re AutoNation Incorporated
________
Serial No. 75/126,814
_______
Mark H. Tidman of Baker & Hostetler LLP for AutoNation
Incorporated
Angela M. Micheli, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney)
_______
Before Simms, Hohein and Bucher, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
AutoNation Incorporated (applicant), a Florida
corporation, has appealed from the final refusal of the
Trademark Examining Attorney to register the asserted mark
shown below
Ser. No. 75/126,814
2
for automobile dealership services.1 The Examining Attorney
has refused registration under Sections 1, 2, 3 and 45 of
the Trademark Act, 15 USC §§ 1051, 1052, 1053 and 1127,
arguing that the asserted mark fails to function as a
service mark and that, therefore, applicant must submit
substitute specimens evidencing use of the asserted mark as
a service mark.
Applicant and the Examining Attorney have submitted
briefs but no oral hearing was requested.
The specimens of record consist of a full page
advertisement of applicant’s services. In reduced form,
that advertisement is show below.

1 Application Serial Number 75/126,814, filed June 28, 1996,
based upon applicant’s allegations of a bona fide intention to
use the mark in commerce. Before applicant’s mark was published
for opposition, applicant submitted an amendment to allege use,
claiming use in commerce since November 8, 1996.
Ser. No. 75/126,814
3
Essentially, it is the Examining Attorney’s position that
the asserted mark appears as an informational statement
that does not identify and distinguish applicant’s
services. The Examining Attorney notes that applicant’s
Ser. No. 75/126,814
4
asserted mark appears with six other similar traffic sign
designs which contain highly descriptive phrases or
informational statements highlighting the features of
applicant’s services, such as low prices, a 99-day
warranty, a money-back guarantee, etc. The Examining
Attorney argues that a consumer would see “AutoNation USA”
as the name of applicant’s dealership and would not view
the proposed mark as identifying and distinguishing
applicant’s services. Further, the Examining Attorney
contends that if applicant’s advertisement contained only
applicant’s asserted mark without the identifying name
AutoNation USA, a consumer would have no idea concerning
the source of applicant’s services.
It is also the Examining Attorney’s position that the
use of “carriers” to highlight information concerning one’s
services is often used in advertisements. The Examining
Attorney has submitted some examples of what she regards as
similar usage. Finally, the Examining Attorney contends
that the use of the designation “TM” does not alter the
perception of the asserted mark to potential purchasers.
Applicant, on the other hand, aside from arguing that
newspaper advertisements promoting one’s services under the
mark are appropriate specimens, argues that the asserted
mark serves to identify the source of applicant’s services.
Ser. No. 75/126,814
5
Applicant contends that the fact that the asserted mark
also provides information or describes a characteristic of
applicant’s services does not mean that it cannot also
function as a service mark. Applicant’s attorney points
out that a product or service may bear more than one
trademark or service mark. Also, applicant contends that
the fact that the asserted mark appears with other marks
does not militate against a finding that it is also a mark.
Applicant points to the “TM” designation used in connection
with its asserted mark. Applicant distinguishes the third-
party advertisements submitted by the Examining Attorney as
being of highly descriptive phrases which merely highlight
various features concerning the goods or services being
advertised. Finally, applicant, with its request for
reconsideration, noted that it has obtained two
registrations of the mark “1 LOW PRICE” and design for
automobile dealership services and for automotive repair
and maintenance services based upon specimens identical to
those submitted herein. Applicant argues that this is
evidence that the asserted mark does function as a service
mark to identify and distinguish applicant’s services and
that purchasers will recognize the traffic design motif of
Ser. No. 75/126,814
6
its numerous design marks.2
Whether an asserted mark functions as a service mark
depends upon how it is used and how potential purchasers
would perceive it. Upon careful consideration of this
record and the arguments of the attorneys, we affirm the
refusal of the Examining Attorney. While it is possible
that the asserted mark may be capable of identifying and
distinguishing applicant’s services (an issue not now
before us), it is our opinion that the asserted mark,
conveying information that applicant has a large selection
of automobiles, is not one which functions as a service
mark and is registrable on the Principal Register without
further support. We believe that potential purchasers
would view the asserted mark as merely providing
information about the features of applicant’s automobile
dealerships (that it has a large selection of automobiles)
and not as a service mark identifying and distinguishing
the source of those services. While a different Examining

2 Applicant stated in its brief that the Examining Attorney had
withdrawn the approval of its amendment to allege use. We can
find no such approval in this record. Rather, crossing in the
mail with the Examining Attorney’s Examiner’s Amendment
classifying applicant’s goods in Class 35 and approving
applicant’s mark for publication, applicant submitted its
amendment to allege use and specimens of record. The notice of
publication was issued after review of applicant’s intent-to-use
application and was not an approval of the amendment to allege
use.
Ser. No. 75/126,814
7
Attorney has permitted registration with respect to a
different asserted mark, it should be noted that the Board
is, of course, not bound by decisions of Examining
Attorneys in other applications. In re Pennzoil Products
Co., 20 USPQ2d 1753, 1758 (TTAB 1991). Each case must be
decided on its own merits. Also, merely because an
applicant intends an asserted mark to so function does not
mean that it in fact does function as a service mark. See
In re Morganroth, 208 USPQ 284, 287 (TTAB 1980).
Decision: The refusal of registration is affirmed.
R. L. Simms
G. D. Hohein
D. E. Bucher
Administrative Trademark
Judges, Trademark Trial
and Appeal Board