U-Haul International, Inc.

Trademark Trial and Appeal Board

Jun 20, 2007

No. 78468892 (T.T.A.B. Jun. 20, 2007)

Mailed:
20 June 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re U-Haul International, Inc.
________

Serial No. 78468892
_______

Stephen R. Winkelman, Esq. for U-Haul International, Inc.

Dominic J. Ferraiuolo, Trademark Examining Attorney, Law
Office 102 (Thomas V. Shaw, Managing Attorney).
_______

Before Walters, Drost, and Bergsman, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On August 17, 2004, U-Haul International, Inc.
(applicant) applied to register the mark YOUR STORAGE
PLACE, in standard character form, on the Principal
Register for:
Retail store services featuring truck and automobile
trailer hitches, boxes for storage and moving, truck
and automobile towing systems, lights, transmission
coolers, and propane; retail outlet services featuring
trucks and trailers in Class 351

1 The examining attorney’s brief only sets out the services in
Class 39. Inasmuch as there is no specific reference to
THIS OPINION IS NOT A
PRECEDENT OF THE
TTAB
Ser. No. 78468892
2

Rental services, namely, rental of trucks, vans,
automobiles, automobile freight trailers, hitches,
pads, tow bars, dollies, carriers, hand trucks, moving
equipment, vehicles, moving vans, moving boxes,
storage rooms; general storage services; rental of
warehouse space; warehouse storage services, rental of
garage space; parking lot services; rental of parking
spaces; cargo handling cargo unloading; moving van
services, moving van transport; rental of moving vans;
furniture moving; delivery of goods by truck, car or
van; truck hauling, truck towing in Class 39.

The application (Serial No. 78468892) is based on
applicant’s assertion of a date of first use anywhere and
in commerce of August 1, 2000.
The examining attorney refused to register the mark on
the ground that the term “Storage Place,” when used in
association with the services, is merely descriptive. 15
U.S.C. § 1052(e)(1). Therefore, the examining attorney
required a disclaimer of that term under the provision of
Section 6 of the Trademark Act. 15 U.S.C. § 1056. After
the examining attorney made the refusal final, applicant
appealed.
Both applicant and the examining attorney agree that
the term “Storage” is descriptive for applicant’s services
and applicant has offered to disclaim the word “Storage.”
Response to first Office Action at unnumbered p. 1, Brief

applicant’s Class 35 services in the brief or the denial of
reconsideration, we assume that the refusal only applies to the
Class 39 services.
Ser. No. 78468892
3
pp. 1-2. However, applicant and the examining attorney
disagree as to whether the term “Place” is merely
descriptive. The examining attorney argues that “the
wording ‘STORAGE PLACE’ as a whole as it appears in the
proposed mark merely describes a building used for a
special purpose, which in this case is ‘storage.’…
Applicant’s described services and specimens of record
clearly show that Applicant provides buildings by way of
its services specifically used to provide storage places
for customers.” Brief at unnumbered p. 2. The examining
attorney included numerous definitions for the term “space”
with his first Office action. Some of the definitions
include “an area with definite or indefinite boundaries; a
portion of space”; “room or space, especially adequate
space”; and “a business establishment or office.” The
examining attorney particularly points to the definition of
“place” as “a building or an area set aside for a specified
purpose: a place of worship.”
Applicant responds by arguing that:
[T]here are numerous definitions of “PLACE” that
relate to applicant’s moving, storage and rental
services, not just one… In the context of applicant’s
moving, rental and storage services, “PLACE” suggests
many things in addition to a “building used for a
special purpose.” It is also simultaneously
suggesting a “business establishment,” “office,”
“locality,” “particular spot,” “suitable setting,” “a
portion of space,” and “the particular portion of
Ser. No. 78468892
4
space occupied by or allocated to a person.” Thus,
with multiple possible meanings related to Applicant’s
services, “PLACE” suggests many things and is too
vague and broad to be “descriptive.”

Reply Brief at 2.
Both applicant and the examining attorney have
submitted copies of registrations to support their
positions. Third-party registrations can be used as a
form of a dictionary definition to illustrate how the term
is perceived in the trade or industry. In re J.M.
Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987). The
examining attorney’s registrations include: Registration
Nos. 1,463,936 (A CITY STORAGE PLACE for self-service
storage services for others, “Storage Place” disclaimed);
1,943,140 (ACE RENTAL PLACE for rental of meeting
equipment, moving equipment, and trucks, “Rental Place”
disclaimed); 2,247,804 (AIRSPACE PLACE for leasing of
hangar space, “Place” disclaimed); 2,913,454 (WATERMARK
PLACE for retail outlets featuring clothing, “Place”
disclaimed); 2,776,173 (YOUR PLAY TIME PLACE for retail
outlets featuring clothing, “Place” disclaimed); 2,798,498
(MALE ROSE PLACE for florist and plant store retail and
wholesale distributorship services, “Rose Place”
disclaimed); 2,712,809 (WOODY B’S PLACE for on-line retail
store services featuring musical instruments, “Place”
Ser. No. 78468892
5
disclaimed); 2,790,221 (WORK PLACE FURNISHINGS for retail
services featuring office furnishings, “Work Place”
disclaimed); and 3,038,850 (THE SLEEPCARE PLACE PRODUCTS
TO HELP YOU SLEEP for retail store services featuring
products that help people sleep, “Place” disclaimed).
These registrations provide some support for the examining
attorney’s argument that the term is merely descriptive
when it is used in combination with the term “storage” for
moving and storage services.
Applicant has also put evidence in the record from the
Office’s trademark search system. This evidence takes two
forms. First, applicant submitted two lists with search
strategies. The first list showed that the search for
“(Place)[BI] and (live)[LD]” returned 1989 hits.
Applicant has included a list of the first 100 hits. The
second search was the same except that it added the
limitation: “not (Place)[DS].”2 The search returned 1877
hits and applicant included the first 100 hits, which are
identical to the results in the earlier search. In
effect, applicant first searched for all active marks that
contain the word “place” and then it eliminated those
marks that contained a disclaimer of the word “place.”

2 BI - Basic index (includes non-punctuated marks, punctuated
word marks and pseudo marks); LD – Live/Dead; DS – Disclaimer.
Ser. No. 78468892
6
Based on the fact that 112 marks were eliminated when
the search was limited to marks without a disclaimer of
“place,” applicant argues that 94% of “Place” marks do not
contain a disclaimer. Several factors drastically
undercut applicant’s assumption. The first is that
applicant’s search was not limited to active
registrations. Instead, the search included pending
applications. These applications are irrelevant. In re
Phillips-Van Heusen Corp., 63 USPQ2d 1047, 1049 n.4 (TTAB
2002) (“While applicant also submitted a copy of a third-
party application…, such has no probative value other than
as evidence that the application was filed”). See also
Zappia-Paradiso, S.A. v. Cojeva Inc., 144 USPQ 101, 102
n.4 (TTAB 1964) (“Opposer has also submitted in evidence a
copy of the file of an application for registration… but
such material is incompetent as proof of anything other
than the fact that such an application for registration
was filed in the Patent Office”); Olin Corp. v.
Hydrotreat, Inc., 210 USPQ 62, 65 n.5 (TTAB 1981) (same).
Applicant has only submitted the first 100 results and
included within these were 87 applications. Therefore,
87% of applicant’s results in the sample are not relevant.3

3 Even assuming that if all the results were included and we
assumed that the percentage of applications would decline in
Ser. No. 78468892
7
Of the remaining 13 registrations, five are for compound
terms that would not traditionally require a disclaimer
(VACCINEPLACE.COM and MARKETPLACE). TMEP § 1213.05(a)(ii)
(4th ed. April 2005). Two are for the same slogan (MAKING
THE WORLD A HAPPIER PLACE, ONE PET AT A TIME) and another
for a different slogan (FIRST PLACE STARTS HERE) where
“place” is not used in the same way as applicant’s. Thus,
at best, only five of the one hundred listed marks even
support applicant’s argument that the word “place” is not
treated as a descriptive term by the Office. These
registrations are for the marks: THE COOLEST PLACE ON
EARTH, JUST PLACE & BAKE!, GORE CREEK PLACE, EVERYBODY’S
PLACE TO PLAY, and ONE HANES PLACE.
Even with the registrations that may support
applicant’s argument, there is yet another serious flaw.
While applicant has performed a search that eliminated
marks that contain a disclaimer of the term “place,” its
search would not have eliminated marks that are on the
Supplemental Register or registered under the provision of
Section 2(f). For example, even with the copies of the
registrations that applicant submitted, one of the marks
(No. 2,627,224 for PATIO PLACE) is registered under

subsequent lists, we have no basis to assume that the number of
irrelevant applications would still not be large.
Ser. No. 78468892
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Section 2(f), which is an admission that the underlying
term is descriptive. Yamaha Int’l Corp. v. Hoshino Gakki
Co., 840 F.2d 1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988)
(“Where, as here, an applicant seeks a registration based
on acquired distinctiveness under Section 2(f), the
statute accepts a lack of inherent distinctiveness as an
established fact”). By not eliminating marks that are
registered on the Supplemental Register or under Section
2(f), we cannot assume that the Office did not consider
the terms in the remaining registrations to be
descriptive. If another reason was needed to give this
evidence little weight, we add that there is no indication
on the list of the goods or services with which the marks
are used. Certainly, there is no dispute that the mark
“Place” can be used non-descriptively for some goods or
services. Therefore, applicant’s lists are entitled to
little, if any, weight and they do not indicate that the
Office does not normally require a disclaimer of “Place”
in situations similar to applicant’s.
The second type of evidence that applicant submitted
is more relevant. This evidence consists of copies of
registrations on the Principal Register in which the term,
“Place” is not disclaimed and the mark was not registered
Ser. No. 78468892
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under Section 2(f).4 The relevant registrations are: No.
1,992,612 (THE TILE PLACE for retail store services
featuring ceramic tile); No. 1,974,648 (THE PHONE PLACE
for retail store services featuring wireless phones); No.
2,475,678 (THE RUG PLACE for retail store services
featuring rugs); No. 2,454,421 (THE GAME PLACE for retail
store services featuring games); No. 1,012,643 (THE
HAIRCUTTING PLACE for hairstyling and haircutting); No.
1,234,492 (THE DENTIST PLACE for dental services); and No.
2,781,713 (THE MORTGAGE PLACE for mortgage brokerage and
lending services); No. 2,967,710 (RENTAL PLACE USA for
vehicle rental services); and No. 2,968,106 (THE CLOSING
PLACE for real estate closing services). Several other
registrations are for goods or they involve marks with
different connotations such as AT YOUR PLACE MOVE AND
STORAGE and THE WRITE PLACE.5
When we look at this evidence, we must keep in mind
that a mark is merely descriptive if it immediately
describes the ingredients, qualities, or characteristics
of the goods or services or if it conveys information
regarding a function, purpose, or use of the goods or

4 We previously pointed out that applicant did submit one
registration that was registered under Section 2(f).
5 We also note that several marks appear to be applications
because there is no registration number or registration date
listed.
Ser. No. 78468892
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services. In re Abcor Development Corp., 588 F.2d 811,
200 USPQ 215, 217 (CCPA 1978). See also In re Nett
Designs, 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir.
2001). To be merely descriptive, a term need only
describe a single significant quality or property of the
goods or services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d
1009, 1009 (Fed. Cir. 1987); Meehanite Metal Corp. v.
International Nickel Co., 262 F.2d 806, 120 USPQ 293, 294
(CCPA 1959). We do not look at the mark in the abstract
but in relation to the goods or services when we consider
whether the mark is merely descriptive. Abcor, 200 USPQ
at 218.
Applicant’s services include general storage services;
rental of warehouse space; warehouse storage services, and
rental of garage space. Applicant “agrees that the word
‘storage’ in the mark ‘YOUR STORAGE PLACE’ for storage
services should be disclaimed.” Reply Brief at 1.
However, we cannot agree with applicant that the other
word “place” provides only “a broad, vague suggestion
about [its] services.” Brief at 6. Rather, it
immediately tells prospective purchasers that applicant’s
business is “a building or an area set aside for a
specified purpose,” i.e., storage. Indeed, several of the
other definitions of “place” would not have significantly
Ser. No. 78468892
11
different meanings such as an area with definite
boundaries, room or space, or a business establishment.
That a term may have other meanings in different contexts
is not relevant. In re Bright-Crest, Ltd., 204 USPQ 591,
593 (TTAB 1979).
When purchasers encounter the term “Storage Place,” it
is clear that it would immediately inform these purchasers
that applicant provides a “place for storage” or a
“storage place.” It is not clear what other meaning the
term “Storage Place” could have when viewed on applicant’s
building besides a place that provides storage services.
The registrations that the examining attorney has
submitted support this descriptive meaning of applicant’s
term “Storage Place.”
We also cannot ignore the fact that applicant has
submitted several registrations that do not show that the
term “place” was disclaimed for other services. However,
the Federal Circuit has held that even “if some prior
registrations had some characteristics similar to Nett
Designs' application, the PTO's allowance of such prior
registrations does not bind the Board or this court.”
Nett Designs, 57 USPQ2d at 1566. See also In re First
Draft Inc., 76 USPQ2d 1183, 1187 (TTAB 2005) (“[T]he mere
fact that applicant has submitted copies of the contents
Ser. No. 78468892
12
of the third-party registration files, i.e., the
underlying applications, office actions and responses
which are evidence of the course of examination that led
to issuance of the registrations, cannot change our
mandate to review the registrability of the involved mark
on the record created during prosecution of the involved
application”).
“Suffice it to say that each case must be decided on
its own merits based on the evidence of record. We
obviously are not privy to the record in the files of the
registered marks and, in any event, the issuance of
a registration(s) by an Examining Attorney cannot control
the result of another case.” In re Sunmarks Inc., 32
USPQ2d 1470, 1472 (TTAB 1994). Similarly, in this case,
the registrations that applicant has submitted do not
dictate the result.
Second, we emphasize that the evidence of record here
is not commensurate with applicant’s assertion that the
overwhelming number of registrations did not require a
disclaimer of the term “place.” As discussed previously,
the overwhelming majority of the marks on applicant’s list
are irrelevant applications, compound marks, and slogans.
While applicant has submitted actual copies of some
registrations in response to the examining attorney’s
Ser. No. 78468892
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evidence of registrations that contain a disclaimer,
ultimately this evidence shows that the Office examines
each application on its own merits. In some contexts, the
term “place” has been held to be descriptive, while in
other contexts, it has not. We are convinced that when
purchasers encounter the term “Storage Place” for storage
services, they will immediately understand that the term
describes applicant’s services. There is nothing unusual
about the term “Storage Place” for a place for storing
items as there might be for THE CLOSING PLACE or THE
MORTGAGE PLACE for establishments that provide closing or
mortgage services.
Therefore, the term STORAGE PLACE is merely
descriptive of applicant’s services and the examining
attorney’s refusal to register applicant’s mark without a
disclaimer of that term is affirmed.

Decision: The examining attorney’s refusal to
register applicant’s mark YOUR STORAGE PLACE without a
disclaimer of the merely descriptive term “Storage Place”
is affirmed. If applicant submits an appropriate
disclaimer of the term "Storage Place" within thirty days
of the mailing date of this decision, the refusal to
Ser. No. 78468892
14
register will be set aside and applicant’s mark will be
published for opposition. Trademark Rule 2.142(g).