AutoNation Inc.

Trademark Trial and Appeal Board

Oct 24, 2000

No. 75126813 (T.T.A.B. Oct. 24, 2000)

Paper No. 26
10/24/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re AutoNation Incorporated
________
Serial No. 75/126,813
_______
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 Wendel, 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
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/126,813
2
for automobile repair and maintenance 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, on the ground that the asserted mark fails
to function as a service mark.
Applicant and the Examining Attorney have submitted
briefs but no oral hearing was requested.2
The specimens of record consist of a full-page
newspaper advertisement. The advertisement shows, in the
middle of the page, the asserted mark along with six other
traffic signs inside of which is such wording as
“RECONDITIONED-TO-PERFORM-LIKE-NEW”, “1 (in design) LOW
PRICE”, “HAGGLE” (with the international prohibition
symbol), “WARRANTY 99 DAY”, “MONEY-BACK GUARANTEE $” and
“SERVICE CENTER” (with design of a wrench). The text in
the advertisement includes the following:

1 Application Serial No. 75/126,813, filed June 27, 1996, based
upon applicant’s allegation 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. Thereafter,
this refusal was made.
On August 17, 1999, the Board issued a decision affirming
this Examining Attorney’s refusal to register the identical mark
for automobile dealership services (Serial No. 75/126,814, filed
June 28, 1996). That decision has been appealed to the U.S.
Court of Appeals for the Federal Circuit.
2 The Examining Attorney has objected to certain exhibits
submitted “with [applicant’s] brief.” We see no exhibits
attached to applicant’s brief. Rather, they were appropriately
submitted with applicant’s request for reconsideration and thus
are properly of record.
Ser. No. 75/126,813
3
An automotive revolution has been unveiled
right here in South Florida. No, it’s not
a new kind of car. It’s a whole new way to
buy cars. It’s called AutoNation USA, and
it is revolutionizing the entire car-buying
process. With a mega-selection of up to 1,000
pre-owned vehicles to choose from. With
remarkably low, no haggle prices. With a state-
of-the-art Automotive Service Center. And with
other unique features…
Applicant has also submitted as supplemental specimens a
newsletter and photographs showing the asserted mark in
applicant’s facility.
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 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 facility 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
Ser. No. 75/126,813
4
USA”, a consumer would have no idea of 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 to inform the
public of features of the goods or services being promoted.
The Examining Attorney has submitted some examples of what
she regards as usage similar to applicant’s. 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, while also alluding to an aspect of its services,
serves to identify the source of applicant’s services.
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 correctly 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 additional information
and other marks does not diminish the ability of this
Ser. No. 75/126,813
5
asserted mark to function as a source identifier. In this
regard, applicant also 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. With its request
for reconsideration, applicant 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
its numerous design marks. Applicant also points to what
it regards as copying of its “family of traffic-sign marks”
as evidence that its asserted mark functions as a service
mark.3
The determination of whether an asserted mark
functions as a service mark depends upon how it is used and

3 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. The notice of publication
Ser. No. 75/126,813
6
how potential purchasers will perceive it. In re
Information Builders Inc., 213 USPQ 593 (TTAB 1982) and
cases cited therein. It should be noted that the Examining
Attorney is not contending that newspaper advertisements
cannot function as appropriate service mark specimens.
Upon careful consideration of this record and the
arguments of the attorneys, we affirm the refusal of the
Examining Attorney. 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 for applicant’s services and is registrable on
the Principal Register. We agree with the Examining
Attorney that potential purchasers will view the asserted
mark as merely providing information about the features of
applicant’s automobile dealerships (that it has a large
selection of automobiles for sale) and not as a service
mark identifying and distinguishing the source of
applicant’s automobile repair and maintenance services.
While a different Examining Attorney has permitted
registration with respect to a different asserted mark,
apparently on the basis of similar specimens, it should be
noted that the Board is, of course, not bound by decisions

was issued after review of applicant’s intent-to-use application
and was not an approval of the amendment to allege use.
Ser. No. 75/126,813
7
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 function
as a mark does not mean that it in fact does so function.
See In re Morganroth, 208 USPQ 284, 287 (TTAB 1980).
Finally, the fact that someone has copied from one of
applicant’s advertisements does not, in and of itself, mean
that the copied matter functions as a trademark. See, for
example, Kegan v. Apple Computer Inc., 42 USPQ2d 1053, 1060
(N.D.Ill. 1996).
Decision: The refusal of registration is affirmed.
R. L. Simms
G. D. Hohein
H. R. Wendel
Administrative Trademark
Judges, Trademark Trial
and Appeal Board