Bollore

Trademark Trial and Appeal Board

May 20, 2010

No. 79039545 (T.T.A.B. May. 20, 2010)

Mailed:
May 20, 2010
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Bollore
________

Serial No. 79039545
_______

Lynn A. Sullivan of Leydig, Voit & Mayer, Ltd. for Bollore.

Debra Lee, Trademark Examining Attorney, Law Office 116
(Michael W. Baird, Managing Attorney).
_______

Before Walsh, Cataldo and Bergsman,
Administrative Trademark Judges.

Opinion by Walsh, Administrative Trademark Judge:

Bollore (applicant) has applied to register the mark
BLUECAR in standard characters on the Principal Register
for goods ultimately identified as:
vehicles and apparatus for locomotion
by land, air and water namely,
electrically powered land vehicles,
electrically powered cycles namely
motorcycles and bicycles, electrically
powered scooters, electrically powered
construction vehicles in the nature of
concrete mixing vehicles, industrial
trucks, electrically powered trolleys
for conveying cleaning equipment, fork-
lift trucks and vans, and electrically
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 79039545
2
powered boats; electro-motors and
transmission assemblies designed for
electrically powered vehicles namely,
electrically powered land vehicles,
electrically powered cycles namely
motorcycles and bicycles, electrically
powered scooters, electrically powered
construction vehicles in the nature of
concrete mixing vehicles, industrial
trucks, electrically powered trolleys
for conveying cleaning equipment, fork-
lift trucks and vans, and electrically
powered boats, in International Class
12.

The application is based on a request for extension of
protection filed under Section 66(a) of the Trademark Act
of 1946, 15 U.S.C. §1144f(a).1
The Examining Attorney has issued a final refusal to
register the mark under Section 2(e)(1) of the Trademark
Act of 1946, 15 U.S.C. § 1052(e)(1), on the ground that the
mark is merely descriptive. Applicant has appealed.
Applicant and the Examining Attorney have filed briefs. We
reverse.
According to the Examining Attorney, the mark BLUECAR
is merely descriptive because applicant’s description of
goods may encompass blue colored electric cars.
A term is merely descriptive if it immediately conveys
knowledge of a significant quality, characteristic,

1 Applicant also sought to register the mark for goods identified
in International Classes 7 and 9. However, the refusal to
register at issue in this case is limited to the goods in
International Class 12.
Serial No. 79039545
3
function, feature or purpose of the products and services
it identifies. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009,
1009 (Fed. Cir. 1987). Whether a particular term is merely
descriptive is determined in relation to the goods and
services for which registration is sought and the context
in which the term is used, not in the abstract or on the
basis of guesswork. In re Abcor Development Corp.,
588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle,
66 USPQ2d 1222, 1224 (TTAB 2002).
To support the refusal the Examining Attorney
submitted the following evidence:
1. The definition of the word “Blue” as, inter alia,
the following:
1. the pure color of a clear sky; the
primary color between green and
violet in the visible spectrum;

* * *

10. the blue,

a. the sky.

b. the sea.

c. the remote distance: They’ve
vanished into the blue
somewhere.2

2 Dictionary.com Abridged (v.1.1) based on the Random House
Unabridged Dictionary (2006). See also the results of the search
“define: blue” on the Google search engine, including
“blue sky: the sky as viewed during daylight; ‘he shot an arrow
into the blue.’”
Serial No. 79039545
4
2. The definition of the word “Car” as follows:
1. an automobile;

2. a vehicle running on rails, as a
streetcar or railroad car.

3. the part of an elevator, balloon,
modern airship, etc., that carries
the passengers, freight, etc.3

3. The Wikipedia entry for “Bolloré Blue Car”
describing the product as a “small electric car.”
4. An article from the Green Car Congress website
(greencarcongress.com) regarding applicant’s BLUECAR
(February 7, 2008). BLUECAR is described as a “lithium-ion
electric city car” and “a concept-car designed around a
battery.” See also the DWS Review.com website (digi-
help.com).
5. Applicant’s explanation that the initial
prototype of its car was blue, but when the cars are
offered to the general public, they will be offered in a
range of colors, including blue.4
Applicant argues that because BLUECAR is used in
connection with applicant’s environmentally friendly
vehicles, the mark creates a double entendre.
Applicant notes that these electrically
powered vehicles “would be considered

3 Id.
4 Applicant’s January 14, 2008 response.
Serial No. 79039545
5
environmentally friendly as they are
powered by electricity … instead of
gasoline. Applicant’s Mark was chosen
to suggest the clean energy produced by
Applicant’s lithium ion batteries which
run Applicant’s vehicles and therefore
the environmentally friendly nature of
the vehicles themselves. The use of
the word “blue” in “BLUECAR” is meant
to evoke an image of cleaner, bluer
skies. Driving applicant’s vehicles,
therefore, is a way for consumers to
“live green” by reducing their carbon
emissions and helping to make the skies
cleaner and bluer. While it may be
true that some of applicant’s vehicles
may be available in a shade of the
color blue, they are also
environmentally friendly. Consumers
would easily recognize this second
connotation or meaning through the use
of the word “blue.”5

To show that consumers recognize the word “blue” as
meaning environmentally friendly, applicant submitted the
following evidence:
1. An excerpt from the Blue Moon Fund website
(bluemoonfund.org) a philanthropic organization “that helps
improve the human relationship to the natural world.”
2. An excerpt from the Blue Planet Foundation
website (blueplanetsummit.org) whose mission is “[t]o
change our world’s energy culture … to implement clean,
efficient, and renewable energy.”

5 Applicant’s July 28, 2008 Response.
Serial No. 79039545
6
3. An excerpt from the Pure Blue website
(pureblueenergy.com) a “renewable energy company dedicated
to delivering clean energy via wind, solar and other
renewable energy sources.”
4. An excerpt from the blueEnergy website
(blueenergygroup.org) a nonprofit organization whose
mission is “to provide sustainable, low-cost energy to
communities in need.”
5. An excerpt from the Blue Square Energy website
(bluesquareenergy.com), a company that manufactures silicon
solar cells.
6. An excerpt from the Blue Sky Energy website
(blueskyenergyinc.com) a company that manufactures solar
boost charge controllers.
Applicant asserts that these websites demonstrate that
the word “blue” suggests an environmentally friendly
product because consumers associate the word “blue” with a
blue sky. In fact, several of the definitions that the
Examining Attorney has made of record include references to
blue skies.
The Examining Attorney fails to give appropriate
consideration to the full context in which this mark will
be used. In re Remacle, 66 USPQ2d at 1224. Potential
purchasers of the identified goods, most importantly
Serial No. 79039545
7
electric-powered cars, would not perceive BLUECAR as merely
descriptive of those goods. Applicant states that it
intends to offer the goods in a range of colors, including
blue. Therefore, potential purchasers of applicant’s cars,
and the other goods identified, will approach the purchase
with the understanding that the cars are available in a
range of colors. Indeed, any other understanding would
contradict both logic and experience. It would be
unconventional to say the least for applicant, or any other
car company, to offer its cars in only one color.
Therefore, potential purchasers will perceive BLUECAR, not
as merely describing the cars, even the cars which may be
blue. Rather potential purchasers will perceive BLUECAR
either as an arbitrary mark, or perhaps as a mark
suggesting a clean, blue sky, that is, that the electric-
powered vehicles are environmentally friendly, as applicant
argues. It would not make sense for potential purchasers
who see the BLUECAR mark applied to cars of various colors
to perceive BLUECAR as merely describing the color of some
of those cars.
The Internet evidence submitted by applicant
reinforces the conclusion that BLUECAR is not merely
descriptive in this context. The cited dictionary
Serial No. 79039545
8
definition also indicates that “blue” lends itself to
varied meanings.
This is unlike cases where the color name at issue is
merely descriptive of the color of all of the goods
identified. In re The Molson Industries Limited, 192 USPQ
402, 403 (TTAB 1976) (requirement for disclaimer of GOLDEN
ALE as applied to ale upheld). Nor is it like cases where
a color name comes to describe something other than the
color. Cf. In re Manco Inc., 24 USPQ2d 1938, 1941 (TTAB
1992) (THINK GREEN does not function as a mark for mailing
and shipping cardboard boxes, weatherstripping and other
goods; it merely conveys a message of environmental
awareness.”). It is also unlike cases where the color
itself is functional. In re Orange Communications Inc., 41
USPQ2d 1036 (TTAB 1996) (orange and yellow, as applied to
telephones and telephone booths, held functional). In
fact, the Examining Attorney does not base the refusal on
the grounds that “blue” is functional or that blue
possesses some descriptive meaning, apart from color
identification, in this context.
This is also not a case where we must find the mark
merely descriptive because it merely describes one or more,
but not all of the goods identified. In such a case,
implicit in such a determination is the conclusion that
Serial No. 79039545
9
relevant purchasers will perceive the mark as merely
describing one or more of the distinct goods identified.
That is not the case here. As we have stated, when we take
into account the full context in which the goods are
offered, we conclude that relevant purchasers will not
perceive BLUECAR as merely describing the color of
applicant’s cars, even though blue may be among the colors
offered. In this regard, we find that the Examining
Attorney places undue emphasis on the fact that applicant
states that it has produced a prototype of its car in the
color blue. For our purposes, the application is based on
applicant’s intention to use the mark in the United States
and applicant has indicated that it will offer the goods in
a range of colors. We must consider the mark in that
light.
Finally, if doubt exists as to whether a term is
merely descriptive, it is the practice of this Board to
resolve doubts in favor of the applicant and pass the
application to publication. See In re Gourmet Bakers Inc.,
173 USPQ 565 (TTAB 1972). In this way, anyone who believes
that the term is, in fact, descriptive, may oppose and
present evidence on this issue to the Board.
Serial No. 79039545
10
Decision: We reverse the refusal to register the mark
for the goods in International Class 12 under Section
2(e)(1).

Opinion by Bergsman, Administrative Trademark Judge,
dissenting:

I respectfully dissent. Based on the evidence of
record noted above, I find that the term BLUECAR when used
in connection with the goods listed in the description of
goods is merely descriptive because it immediately informs
the purchaser, without any need for a multistep reasoning
process, the products at issue include blue cars. The
products in applicant’s description of goods include
“electrically powered land vehicles.” Vehicles encompass
cars that may be colored blue. Applicant’s mark directly
describes, without the need for any thoughtful analysis,
applicant’s product as a blue car.
Applicant argues to the contrary that because BLUECAR
is used in connection with applicant’s environmentally
friendly vehicles, the mark creates a double entendre.
Applicant notes that these electrically
powered vehicles “would be considered
environmentally friendly as they are
powered by electricity … instead of
gasoline. Applicant’s Mark was chosen
to suggest the clean energy produced by
Applicant’s lithium ion batteries which
run Applicant’s vehicles and therefore
Serial No. 79039545
11
the environmentally friendly nature of
the vehicles themselves. The use of
the word “blue” in “BLUECAR” is meant
to evoke an image of cleaner, bluer
skies. Driving applicant’s vehicles,
therefore, is a way for consumers to
“live green” by reducing their carbon
emissions and helping to make the skies
cleaner and bluer. While it may be
true that some of applicant’s vehicles
may be available in a shade of the
color blue, they are also
environmentally friendly. Consumers
would easily recognize this second
connotation or meaning through the use
of the word “blue.”6

To show that consumers recognize the word “blue” as
meaning environmentally friendly, applicant submitted
excerpts from six websites. Applicant asserts that these
websites demonstrate that the word “blue” suggests an
environmentally friendly product because consumers
associate the word “blue” with a blue sky. Also, applicant
points out that several of the definitions that the
Examining Attorney made of record include references to
blue skies. In this regard, the definition of the word
“green” includes references to environmentally friendly
policies, practices and products: “an environmentalist who
belongs to the Green Party” and “concerned with or
supporting or in conformity with the political principles

6 Applicant’s July 28, 2008 Response.
Serial No. 79039545
12
of the Green Party.”7 Other sources define “green” as
“concerned with or supporting environmentalism.”8 On the
other hand, the definitions of the word “blue” do not
include any references to environmentally friendly
policies, practices or products. Thus, the word “green”
has a recognized meaning in connection with environmentally
friendly policies, practices and products whereas the word
“blue” does not have such a meaning.
Furthermore, I am not persuaded that because six
entities in the field of renewable energy use “blue” as
part of their names that the word “blue” is synonymous with
environmentally friendly products and services such that
consumers encountering the word “blue” as part of a
trademark would immediately associate the mark with
environmentally friendly products or services. With
respect to the six entities, there is no evidence regarding
the extent of their advertising, sales or renown and,
therefore, there is nothing to indicate the extent to which
the public is aware of their use of the word “blue.”
Accordingly, the mark BLUECAR does not create a double
entendre.

7 Google search for “define: green.”
8 Oxford English Dictionary at askoxford.com; Merriam-Webster
Online (Merriam-Webster.com).
Serial No. 79039545
13
The majority hinges its decision on the unsupported
conclusion that purchasers of electric-powered cars will
not perceive BLUECAR as merely descriptive because the
goods will be offered in a range of colors, including blue
and, therefore, they will approach the purchase with the
understanding that the cars are available in a range of
colors. However, since there are no restrictions or
limitions in the description of goods, we must presume that
applicant’s electric-powered cars may be sold
unsophisticated consumers including consumers who merely
want a blue car or for whom the color is the dominant
feature.
Accordingly, I would affirm the refusal.