Daniel Rechtfertig

Trademark Trial and Appeal BoardOct 13, 2016

No. 86554004 (T.T.A.B. Oct. 13, 2016)

This Opinion is not a Precedent of the TTAB Mailed: October 13, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Daniel Rechtfertig _____ Serial No. 86554004 _____ John E. Gibson of Freestate Patent Services LLC, for Daniel Rechtfertig. Ahsen Khan, Trademark Examining Attorney, Law Office 113, Odette Bonnet, Managing Attorney. _____ Before Taylor, Wellington and Shaw, Administrative Trademark Judges. Opinion by Taylor, Administrative Trademark Judge: Daniel Rechtfertig (“Applicant”) seeks registration on the Principal Register of the designation CLASSIC AUTO ROD, in stylized form, (shown below) for “automobile dealerships” in International Class 35.1 The applied-for mark is described as follows: “The mark consists of the words “Classic Auto Rod” in a chrome e-like script having 1 Application Serial No. 86554004 was filed on March 5, 2015, based upon Applicant’s allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). Serial No. 86554004 - 2 - a three-dimensional appearance, with the words stacked to form the word “CAR” when read vertically. The Trademark Examining Attorney has refused registration on the ground that Applicant’s applied-for mark is merely descriptive under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1). When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal was resumed. We affirm the refusal to register. Arguments and Evidence Applicant contends that when its mark is considered as a whole, it uniquely identifies the source of Applicant’s services. Applicant argues that while the individual words within his mark may possess descriptive meanings, the combination of these words in an “unexpected fashion” and the visual elements of the design render the mark no more than suggestive. Serial No. 86554004 - 3 - Applicant has supported his position with multiple definitions of “hot rod,” all of which are very similar to the following definition:2 An automobile that has been rebuilt or modified to increase its speed and acceleration. The Examining Attorney conversely maintains that CLASSIC AUTO ROD is merely descriptive of the type(s) of cars sold by Applicant’s automobile dealerships, and that neither the stylization nor the stacking of the literal elements in the Applicant’s applied-for mark obviate the descriptive nature of the mark. The Examining Attorney initially supported the refusal with excerpts from websites showing that the terms “Classic” and “Rod” both refer to a particular type of car, and argued that the word “Auto” is an abbreviated term for “automobile. The excerpts include:3 • http://www.classicrods.com, a website selling parts for “classic rods” • http://www.autotraderclassic.com/find/classic- cars/hot+rods+customs.xhtml, a website that provides listings of classic cars and classic hot rods • http://www.fossilcars.com/hot-rods, a website providing listings of classic cars and indicating that “hot rods” are a genre or category of classic cars “Hot rods are a staple of American classic cars.” • http://www.ccrod.com/index2htm, a website advertising a business that provides customizing and restoration services for classic cars and “rods.” 2 http://www.thefreedictionary.com/hot+rod). 3 Attachments to the Office Action dated June 11, 2015. Serial No. 86554004 - 4 - The Examining Attorney also made of record with his Office Action dated August 14, 2015: 1. Excerpts from third-party websites that use the term “AUTO ROD” to refer to automobiles. http://www.angieslist.com/companylist/us/ca/santa- ana/chrisman%27s-suto-rod-specialist-reviews- 3355600.htm The webpages feature an entry on Angie’s List for a business that, by its name, Chrisman’s Auto Rod Specialist” categorizes itself as an “auto rod” specialist. http://oraclelights.com//EnhLocations/EnhLocationsDispla y.asp?1=1243&p2=Y&Sort The webpages feature a business listing for Custom Auto Rod Shop (C.A.R.S.). http://www.2040-cars.com/plymouth/Fury/1969-plymouth- fury-iii-2-door-hardtop-318-auto-rod-custom-restore- crusier-nr-455282/ The web site advertises for sale a 1969 Plymouth Fury described as an “auto rod.” 1969 Plymouth Fury Iii 2 Door Hardtop 318 Auto Rod, Custom, Restore, Cruiser Nr on 2040-cars http://www.carzonedepot.com/1979-Ford-F100/Used- Truck/Fontana-CA/6119423/Details.aspx The website states that the painting done to a 1970 Ford were done by an auto repair shop called “Street Pro Auto Rod & Truck Center.” http://autowombat.com/washington/puyallup/58565- allstar-auto-rod-tys-allstar-auto.html The website features an advertisement for auto dealership known as “Allstar Auto Rod & Ty’s Allstar Auto.” Serial No. 86554004 - 5 - 2. Definitions of “Classic car” demonstrating that “classic” refers to a type of automobile: As defined in Wikipedia, A classic car is an older automobile, the exact definition varies around the word. The common theme is of an older car with enough historical interest to be collectable and worth preserving or restoring rather than scrapping. … The United States Legal Definition reads: Legally, most states have time-based rules for the definition of “classic” for purposes such as antique vehicle registration; for example, Most states define it as “A motor vehicle, but not a reproduction thereof, manufactured at least 20 years prior to the current year which has been maintained in or restored to a condition which is substantially in conformity with manufacturer specifications and appearance.” Despite this, at many American classic car shows, automobiles typically range from the thirties to the sixties. [https://en.wikipedia.org/wiki/Classic car] As defined by the Classic Car Club of America, A CCCA Classic is a “fine” or “distinctive” automobile, either American or foreign built, produced between 1915 and 1948. They are sometimes called “Full Classics®,” or just “Classics” (with a capital “C”). Generally, a Classic was high- priced when new and was built in limited quantities. [http://www.classiccarclub.org.grand classics/what is classic car.html] Serial No. 86554004 - 6 - 3. Excerpts from websites that demonstrate third-party use of “rod” to refer to a type of automobile. • On the website of Rodster Street Rods (http://www.rodster.com/hotrod.htm) in an article titled “What Exactly Is a Hot Rod?,” the term “hot rod” is used interchangeably with the term “rod.” • On the blog site Cutworm Specialties, Inc. (http://cutwormspecialties.com/strrt-rod-hot-rod- difference/), an article titled “STREET ROD OR HOT ROD: IS THERE A DIFFERENCE?” discusses the differences between “hot rods,” “street rods,” and “rat rods”; Street Rods being further categorized as “pre-1949 classic cars modernized with luxury parts.” • The website Hot Rod Institute (http://www.hotrod.edu), provides information about hotrods and contains a pages entitled “the rod shop” which gives repair and maintenance tips. • An article titled “A Short History of the American Hot Rod” on the WyoTech website (http://automotivetechnology.wyotech.edu/articles/s hort-history-of-the-american-hot-rod), discusses the history of hot rods and refers, at times, to these automobiles as “rods.” In the denial of Applicant’s request for reconsideration, the Examining Attorney further supported the refusal with the following additional website excerpts to demonstrate that third parties use the term CLASSIC ROD “in a manner suggesting that the two terms are not mutually exclusive but can be combined to refer to a particular genre or category of automobile”: http://www.hotrodhotline.com/classi-rodspmore-1928-31- hub-hub-ifs-kit-polished-stainless-coilover, selling parts for “classic rods.” Serial No. 86554004 - 7 - Classic Rods and More is an online store and community dedicated to providing exceptional service and products for all your Hot Rod and Street Rod needs. http://www.classicrodsandrestorations.com, offering restoration services for “classic rods.” Classic Rods and Restoration is a full service shop specializing in the complete repair, fabrication and restoration of Corvettes, Muscle Cars and Street Rods. http://www.amazon.com/Classic-Rods-Racing-Cars- Comics-ebook/dp/B00RDYVKJQ, offering a comic relating to “classic hot rods.”4 http://www.manta.com/c/mmdq4qi/classic-rods-whells-llc, advertises an auto body shop called “Classic Rods & Wheels LLC.” http://www.hotrod.com/cars/featured/0602rc-classic-rods- and-customs-reskinned/, provides information about “classic rods.” The idea started with a conversation regarding some of the greatest rods and customs from the history of rod building. It occurred to us that most of these cars and trucks were built from readily available raw material. In addition, in the brief, the Examining Attorney requests, and we take, judicial notice of an additional definition from Collins English Dictionary, defining “classic car” as “mainly British a care that is more twenty-five years old.”5 We also take 4 While we note that the comic is titled “Classic Hot Rods” and not “Classic Rods,” the evidence of record demonstrates that “Hot Rods” are often referred to as “Rods.” 5 http://www.collinsdictionary.com/dictionary/english/classic-car, attachment to the July 27, 2016 Office Action. The Board may take judicial notice of dictionary definitions, including online dictionaries that exist in printed format or have regular fixed editions. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, __F.3d __ (Fed. Cir. 2016); Serial No. 86554004 - 8 - judicial notice of the definition of “auto,” defined in Merriam-Webster as “automobile.”6 Applicable Law The test for determining whether a mark is merely descriptive is whether it immediately conveys information concerning a significant quality, characteristic, function, ingredient, attribute or feature of the product or service in connection with which it is used, or intended to be used. See, e.g., In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (internal citations omitted). See also In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004), quoting, Estate of P.D. Beckwith, Inc. v. Commissioner, 252 U.S. 538, 543 (1920) (“A mark is merely descriptive if it ‘consist[s] merely of words descriptive of the qualities, ingredients or characteristics of the goods or services related to the mark.”). The determination of whether a mark is merely descriptive must be made in relation to the goods or services for which registration is sought. Chamber of Commerce of the U.S., 102 USPQ2d at 1219. The question is not whether someone presented only with the mark could guess the products listed in the description of goods. Rather, the question is whether someone who knows what the goods are will understand the mark to convey information about them. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012), quoting In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-1317 (TTAB Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010); In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). 6 http://merriam-webster.com/dictionary/auto. Serial No. 86554004 - 9 - 2002). See also In re Patent & Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998); In re Home Builders Association of Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990); In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985). It is not necessary, in order to find a mark merely descriptive, that the mark describe each feature of the goods or services, only that it describe a single, significant ingredient, quality, characteristic, function, feature, purpose or use of the goods or services. Chamber of Commerce of the U.S., 102 USPQ2d at 1219; In re Gyulay, 820 F.2d 1216, 1217, 3 USPQ2d 1009 (Fed. Cir. 1987). Where a mark consists of multiple words, the mere combination of descriptive words does not necessarily create a nondescriptive word or phrase. In re Phoseon Tech., Inc., 103 UPQ2d 1822, 1823 (TTAB 2012); In re Associated Theatre Clubs Co., 9 USPQ2d 1660, 1662 (TTAB 1988). A mark comprising a combination of merely descriptive components is registrable if the combination of terms creates a unitary mark with a unique, suggestive, or otherwise nondescriptive meaning, or if the composite has a bizarre or incongruous meaning as applied to the goods or services, see In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968); In re Shutts, 217 USPQ 363 (TTAB 1983), However, if each component retains its merely descriptive significance in relation to the goods, the combination results in a composite that is itself merely descriptive. Oppedahl & Larson LLP, 71 USPQ2d at 1371. Last, a mark comprising more than one element must be considered as a whole and should not be dissected; however, we may consider the significance of each Serial No. 86554004 - 10 - element separately in the course of evaluating the mark as a whole. See DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd. 103 USPQ2d at 1756-57 (reversing the Board’s denial of cancellation for for medical devices as not merely descriptive, but noting that “[t]he Board to be sure, can ascertain the meaning and weight of each of the components that makes up the mark”). Discussion We find the Examining Attorney’s evidence highly persuasive. First, as shown by the definitions and internet excerpts, each word in the designation CLASSIC AUTO ROD has descriptive significance in relation to automobile dealership services. There is no question that the word “Classic” describes a car of “fine and unusual design built between the years 1915 and 1948.” While we acknowledge that one definition of record includes additional restrictions, namely a requirement to maintain or restore a car to what Applicant refers to as “factory condition,” that legal definition is usually for purposes such as antique vehicle registration. Moreover, the fact that “classic” may have more than one relevant definition does not detract from its otherwise descriptive significance. With regard to the word “AUTO,” Applicant uses the non- abbreviated form of the term, i.e., “automobile,” descriptively, if not generically in the recitation of its services to identify the type of its dealership services. The record also confirms that “rod” often, but not always shortened from “hot rod,” is a type of automobile. Serial No. 86554004 - 11 - The record also demonstrates, and Applicant acknowledges, that the combinations “CLASSIC ROD” and “AUTO ROD” are used descriptively to refer to a type of automobile. Next, we must determine whether the combination of these individual descriptive terms is still descriptive, or whether it creates a term that evokes a new and unique commercial impression. As previously stated, when the mark is considered as a whole, if the merely descriptive components retain their merely descriptive significance in relation to the services, then the resulting combination is also merely descriptive. See, e.g., In re Oppedahl & Larson, 71 USPQ2d at 1372; In re Tower Tech, supra, (SMARTTOWER held merely descriptive of commercial and industrial cooling towers). Here, we find that the record clearly establishes that the designation CLASSIC AUTO ROD, as a whole, is descriptive of the identified services. When CLASSIC AUTO ROD is viewed in connection with the services listed in the application, it immediately conveys that Applicant’s automobile dealerships feature older hotrods. Depending on how viewed, the two or three components of Applicant’s applied-for mark retain their individual descriptive meanings and together convey a meaning that is descriptive. That is, there is nothing in the combination of words forming Applicant’s applied-for mark CLASSIC AUTO ROD which is incongruous or which would require the gathering of further information in order for the merely descriptive significance thereof to be readily apparent to prospective purchasers of the services. See, e.g., In re Abcor Development Corp., Inc., 588 F.2d 811, 200 USPQ 215 (CCPA) Serial No. 86554004 - 12 - (Rich, J., concurring) (GASBADGE described as a shortening of the name “gas monitoring badge”). We acknowledge, but are not persuaded by, Applicant’s essential argument that the terms CLASSIC and [HOT]ROD are mutually exclusive based on their definitions. The record demonstrates that hot rods, otherwise referred to as “rods,” are often labeled as “classic.” As explained, we find that the designation CLASSIC AUTO RODS, consisting of the combination of descriptive terms, does not present a unique juxtaposition of terms that would render the otherwise descriptive significance of the individual terms nondescriptive and registrable. Applicant also points out, to no avail, that no evidence of a prior descriptive use of the phrase “classic auto rod” to refer to an automobile has been submitted. It is well settled that the fact that an applicant may be the first and only user of a merely descriptive term does not justify registration if the only significance conveyed by the term is merely descriptive. See In re Sun Microsystems, Inc., 59 USPQ2d 1084, 1087 (TTAB 2001); In re Acuson, 225 USPQ 790, 792 (TTAB 1985). For the reasons explained, we find the designation CLASSIC AUTO ROD merely describes a type of automobile featured and sold by Applicant’s automobile dealerships. Style of Display Having found the literal designation CLASSIC AUTO ROD merely descriptive, we now consider whether the style of display renders the mark registrable. As the Serial No. 86554004 - 13 - Board stated in In re Sadoru Group Ltd., 105 USPQ2d 1484, 1486 (TTAB 2012) citing In re Guilford Mills Inc., 33 USPQ2d 1042, 1043 (TTAB 1994): A display of descriptive or otherwise unregistrable matter is not registrable on the Principal Register unless the design features of the asserted mark create an impression on the purchasers separate and apart from the impression made by the words themselves, or if it can be shown by evidence that the particular display which the applicant has adopted has acquired distinctiveness. Inasmuch as Applicant did not claim acquired distinctiveness, the stylization of CLASSIC AUTO ROD must create a separate and inherently distinctive impression. We note, too, that the determination of whether the stylization of a term that is otherwise unregistrable is inherently distinctive is a subjective one based on the first impression of the viewer. See In re Jackson Hole Ski Corporation, 190 USPQ 175, 176 (“‘[D]istinctive display’ is in the eyes of the beholder, and usually depends upon the viewer’s first impression of the matter in question.”). We find neither the word arrangement nor the stylization of the lettering in which CLASSIC AUTO ROD appears (alone or in combination) creates a separate and inherently distinctive commercial impression apart from the words themselves. As to word arrangement, we acknowledge that the three words that make up Applicant’s applied-for mark are vertically stacked, begin with letters that comprise the word “car,” i.e., “C,” “A” and “R,” and are displayed in capital and lower case lettering. However, all of the letters are in the same font and stylized “chrome-like” script, are the same relative size, and the first letter “A” of the word AUTO, because of the script in which the mark is displayed, appears to be stacked underneath and between the letters “L” and “A” in CLASSIC, such that the word “CAR” is not readily discernable. Serial No. 86554004 - 14 - Nonetheless, even if consumers perceive the word “CAR” as an additional element of the mark, it is not a distinctive “acronym” as Applicant suggests. Rather, it would be understood as another element that merely describes the subject of Applicant’s automobile dealerships. But see, Jackson Hole Ski Corporation 190 USPQ at 176. Likewise, the script, consisting primarily of stylized cursive lettering which Applicant characterizes as being “chrome-like,” does not make Applicant’s applied- for mark registrable because it is not so striking that it creates an inherently distinctive impression apart from the wording itself.” See, e.g., In re Cordua Rests. LP, 110 USPQ2d 1227 (TTAB 2014), aff’d __ F.3d __, 118 USPQ2d 1632 (Fed. Cir. 2016) (the stylization of found insufficient to create an inherently distinctive impression apart from the term itself); Sadoru Group Ltd., supra (the stylization of found insufficient to create an inherently distinctive impression apart from the term itself); In re Grande Cheese Co., 2 USPQ2d 1447, 1449 (TTAB 1986) (the stylization of found not inherently distinctive); In re Miller Brewing Company, 226 USPQ 666, 669 (TTAB 1985) (the stylization of found not inherently distinctive). Accordingly, the stylistic elements do not obviate the descriptive significance of the wording. Applicant’s reliance on the determinations made in previous cases is misplaced. It is well settled that each case must be decided on its own merits. The determination of registrability of a mark in another case does not control the merits in the case now before us. See In re Nett Designs Inc., 51 USPQ2d at 1566; see also, In re Kent- Serial No. 86554004 - 15 - Gamebore Corp., 59 USPQ2d 1373 (TTAB 2001); In re Wilson, 57 USPQ2d 1863 (TTAB 2001). In this case, the evidence clearly demonstrates that Applicant’s applied-for stylized mark CLASSIC AUTO ROD is merely descriptive of an important feature of his automobile dealerships and informs consumers of the types of cars being sold. Conclusion After careful consideration of all of the evidence and arguments presented, we conclude that when applied to Applicant’s services, the designation CLASSIC AUTO ROD immediately describes a type of vehicle sold by Applicant’s automobile dealerships, and that the word arrangement and stylization of the lettering does not create a separate and inherently distinctive commercial impression apart from the words themselves. We thus find that the designation as a whole is merely descriptive. Decision: The refusal to register under Section 2(e)(1) is affirmed.