Carganza, Inc.v.Scholfield Auto Plaza, L.L.C.

Trademark Trial and Appeal Board

Jul 22, 1999

No. 91102915 (T.T.A.B. Jul. 22, 1999)

Paper No. 11
PTH
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JULY 22,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Carganza, Inc.
v.
Scholfield Auto Plaza, L.L.C.
_____
Opposition No. 102,915
to application Serial No. 74/715,989
filed on July 31, 1995
_____
Fred A. Johnson for Carganza, Inc.
Christopher A. McElgunn of Klenda, Mitchell, Austerman &
Zuercher, L.L.C. for Scholfield Auto Plaza, L.L.C.
______
Before Hohein, Hairston and Chapman, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
An application has been filed by Scholfield Auto Plaza,
L.L.C. to register the mark CARGANZA for “automobile
dealership services, namely, a periodic promotional event
featuring automobiles.”1
Registration has been opposed by Carganza, Inc.
Opposer alleges that CARGANZA is merely descriptive of the
Opposition No. 102,915
2
identified services and that the mark has not become
distinctive of such services; and that applicant “does not
use the term ‘CARGANZA’ in its advertising, letterhead, or
business communications and further does not use it in its
signage, business cards, letterhead, and many forms of
advertisement by the applicant.”
Applicant, in its answer, denied the allegations of the
notice of opposition.
The record includes the pleadings; the file of the
involved application; and four testimony depositions (with
exhibits), which were submitted by opposer from a civil
action involving the parties in the District Court of
Sedgewick County, Kansas (Case No. 96 C 439).2 Applicant
submitted no evidence and only opposer filed a brief. No
oral hearing was requested.
Opposer, who is in the business of selling used cars,
was incorporated in September 1991 as “Creditcars, Inc.”
Opposer eventually changed its name to Old Town Autos, Inc.

1 Application Serial No. 74/715,989 filed July 31, 1995, alleging
dates of first use of March 17, 1992.
2 In the absence of a stipulation, the Board generally requires
that a party move for leave to use testimony from another
proceeding. See Trademark Rule 2.122(f) and TMBP §715. However,
applicant has not objected to opposer’s submission of the
testimony depositions and we note that the parties agreed to
extend testimony periods herein so that opposer could submit the
depositions. In view thereof, we have considered the
depositions as stipulated to by applicant and as properly of
record. We note that while not all of the exhibits were
submitted, there are enough exhibits for us to render a decision
herein.
Opposition No. 102,915
3
and during 1996 changed its name to “Carganza, Inc.” Rex
Hensley, opposer’s sole shareholder and officer, testified
that it was his intent to expand the business to include
other auto-related services, such as auto parts sales and
detail shop services. Mr. Hensley testified that the name
“Carganza, Inc.” was chosen because it was catchy and he
thought it “depicted” the full-range of services he intended
to offer. The name “Carganza, Inc.” appears on a sign at
opposer’s used car location and it is used in opposer’s
newspaper advertising. Mr. Hensley testified that he was
aware of applicant’s use of CARGANZA at the time he adopted
the trade name “Carganza, Inc.”
The record shows that applicant is one of several
automobile dealers, located in Wichita, Kansas, which
comprise the Scholfield automobile dealership (hereinafter
the “Scholfield dealership”). David Steinley, applicant’s
director of marketing, testified that since 1992 the
individual dealers of the Scholfield dealership have
collectively conducted a monthly large used car sale at
Century II Expo Hall in Wichita. The sales are generally
held each month for a period of two to three days over a
weekend. Most of the entire used car inventory of the
individual Scholfield dealers is transported to the Expo
Hall for these sales and financing and trade-ins are
available. At the sales, however, customers purchase cars
Opposition No. 102,915
4
from the individual Scholfield dealers and none of the sales
contracts or other documents which are used bear the term
CARGANZA.
Mr. Steinley further testified, however, that it was
his responsibility to come up with a name under which to
advertise and market the monthly used car sales. CARGANZA
was ultimately selected, being devised by combining the word
“CAR” with “GANZA,” a shortened version of “extravaganza.”
Since December 1993 applicant has used CARGANZA as the
designation for the monthly used car sales. According to
Mr. Steinley, approximately two to three days before each
sale begins and during the two to three days of the sale, it
is advertised in newspapers and on radio and television.
According to Mr. Steinley, applicant spends approximately
$30,000 over a four to six-day period advertising each sale.
From December 1993 to August 1995, nineteen CARGANZA sales
were conducted and applicant sold approximately 130-150 used
cars at each sale.
The issues as framed by opposer in its brief are: (1)
whether CARGANZA is merely descriptive of the above-
identified services, and if so, whether the term has
acquired distinctiveness; and (2) whether applicant has used
Opposition No. 102,915
5
CARGANZA as a mark in connection with a “service” within the
meaning of the Trademark Act.3
We turn first to the question of whether CARGANZA is
merely descriptive of “automobile dealership services,
namely a periodic promotional event featuring automobiles.”
A term is merely descriptive, and therefore unregistrable,
pursuant to Section 2(e)(1) of the Trademark Act, if it
immediately conveys knowledge of the ingredients, qualities,
or characteristics of the goods or services in connection
with which it is used. On the other hand, a suggestive term
is one which suggests, rather than describes, aspects or
attributes of the goods or services, such that imagination,
thought or perception is required in order to reach a
conclusion on the nature of the goods or services. In re
Quik-Print Copy Shop, Inc., 205 USPQ 505, 507 (CCPA 1980).
Applying these principles to the term CARGANZA, we
conclude that at most the term suggests the nature of
applicant’s services. One needs some degree of imagination
or perception to determine the nature of the services.

3 We note that the latter issue was not specifically pleaded in
the notice of opposition. In the notice of opposition, opposer
appeared to suggest that applicant has a “service,” but that
applicant does not use the mark CARGANZA in connection therewith.
Inasmuch as it is clear from the record that the issue tried by
the parties was whether applicant has used CARGANZA as a mark in
connection with a “service” within the meaning of the Trademark
Act, we will treat this issue as if it had been raised in the
pleadings. See Fed R. Civ. P. 15(b) and TMBP §507.039(b) and
cases cited therein.
Opposition No. 102,915
6
That is, the nature of applicant’s services is not instantly
apparent or immediately indicated by the term. Further,
this term is not of such a nature that competitors have a
need to use this term in describing periodic promotional
events featuring automobiles. Moreover, in view of our
finding that CARGANZA is not merely descriptive of
applicant’s services, we need not reach the issue of
acquired distinctiveness.
We turn next to the question of whether applicant has
used CARGANZA as a mark in connection with a “service”
within the meaning of the Trademark Act. We note in this
regard that Section 45 of the Trademark Act defines a
service mark as follows:
. . . any word, name, symbol, or device,
or any combination thereof—
(1) used by a person, or
(2) which a person has a bona fide
intention to use in commerce and applies
to register on the Principal Register
established by this Act, to identify
and distinguish the services of one
person, including a unique service,
from the services of others and to
indicate the source of the services,
even if that source is unknown. Titles,
character names, and other distinctive
features of radio or television
programs may be registered as service
marks notwithstanding that they, or the
programs, may advertise the goods of
the sponsor.
Opposition No. 102,915
7
Unlike a tangible product, a service must be a real
activity; performed to the order of, or for the benefit of,
someone other than the applicant; and cannot be merely an
ancillary activity or one which is necessary to the
applicant’s larger business (i.e., the activity performed
must be qualitatively different from anything necessarily
done in connection with the sale of the applicant’s goods or
the performance of another service). See In re Canadian
Pacific Limited, 754 F.2d 992, 224 USPQ 971 (Fed. Cir.
1985); and TMEP Section 1301.01.
In this case, it is essentially opposer’s position that
applicant is in the business of selling new and used cars;
that applicant simply uses the designation CARGANZA as a
means of advertising the sale of used cars; and thus
applicant is not offering a separate service under the
designation CARGANZA.
We disagree. We find that applicant’s periodic
promotional event featuring automobiles is a service which
is separate from its regular automobile dealership services.
It is not necessary or essential for an automobile
dealership to take a large number of used cars from several
individual dealers to a central indoor area for sale. Such
an activity constitutes more than a mere advertisement or
promotion of regular automobile dealership services. In
this case, applicant’s periodic promotional event featuring
Opposition No. 102,915
8
cars is not an activity that purchasers would normally
expect automobile dealers to undertake. In short, the
activity recited in applicant’s application is qualitatively
different from anything necessarily done in connection with
applicant’s automobile dealership services, its principal
activity. This is the case, notwithstanding that customers
purchase the cars from representatives of the individual
Scholfield dealerships. Also, this is an activity which
benefits purchasers because there is a wider selection of
cars, all at one indoor location, with trade-ins and
financing available.
In view of the foregoing, we conclude that applicant
has used CARGANZA as a mark in connection with a “service”
within the meaning of the Trademark Act.
Decision: The opposition is dismissed.
G. D. Hohein
P. T. Hairston
B. A. Chapman
Administrative Trademark Judges
Trademark Trial and Appeal Board