Onyx Acceptance Corp.

Trademark Trial and Appeal Board

Nov 17, 1999

No. 75207208 (T.T.A.B. Nov. 17, 1999)

Hearing:
April 7, 1999
Paper No. 13
CEW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB NOV. 17, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
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In re Onyx Acceptance Corporation
___________
Serial No. 75/207,208
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Jill M. Pietrini and Michael B. Adlin of Manatt, Phelps &
Phillips for applicant.
Laurie S. Mintzer, Trademark Examining Attorney, Law Office
101 (Jerry Price, Managing Attorney).
____________
Before Simms, Quinn and Walters, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
Onyx Acceptance Corporation has filed a trademark
application to register the mark AUTOMOTIVE BANKING NETWORK
for “loan financing services.”1
The Trademark Examining Attorney has finally refused
registration, under Section 2(e)(1) of the Trademark Act,

1 Serial No. 75/207,208, in International Class 36, filed December 3,
1996, based on an allegation of a bona fide intention to use the mark
in commerce.
Serial No. 75/207,208
2
15 U.S.C. 1052(e)(1), on the ground that applicant’s mark
is merely descriptive of its services.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs and an oral hearing
was held. We affirm the refusal to register.
The Examining Attorney contends that “the average
consumer will understand that the terms ‘AUTOMOTIVE,’
‘BANKING’ and ‘NETWORK,’ taken as a whole, describe a
banking network for automotives or automobiles”; that
applicant’s broad identification of services encompasses
loan financing services for automobiles; and that,
therefore, the mark is merely descriptive of applicant’s
services. The Examining Attorney submitted dictionary
excerpts defining “automotive” as “of, relating to, or
concerned with self-propelled vehicles or machines,”
defining “banking” as “the business of a bank or a banker,”2
and defining “network” as “telecommunications, computers, a
system containing any combination of computers, computer
terminals, printers, audio visual display devices, or
telephones interconnected by telecommunications equipment
or cables used to transmit or receive information” and “an
association of individuals having a common interest, formed

2 Merriam Webster’s Collegiate Dictionary, 10th ed., 1996.
Serial No. 75/207,208
3
to provide mutual assistance, helpful information, or the
like.”3 Additionally, in support of her position, the
Examining Attorney submitted copies of 11 third-party
registrations wherein the term NETWORK is disclaimed in
marks registered for loan and/or banking services; a copy
of a third-party registration of the mark PERFORMANCE
AUTOMOTIVE NETWORK and design for automobile dealership
services, including a disclaimer of AUTOMOTIVE NETWORK; and
a copy of a third-party registration of the mark LEASENET
AUTOMOTIVE LEASING NETWORK and design for automotive
vehicle leasing and renting services, including a
disclaimer of AUTOMOTIVE LEASING NETWORK.
Applicant contends, on the other hand, that AUTOMOTIVE
is not descriptive of applicant’s services because, as
identified, its services do not refer specifically to
automotive loan financing; and that AUTOMOTIVE does not
describe anything about loan financing services. Applicant
argues, further, that, because of the several meanings of
the words BANKING and NETWORK, it is not immediately clear
from the mark AUTOMOTIVE BANKING NETWORK what services are
offered; and that consumers may believe that the mark
identifies “a facility which stores a large number of cars

3 Random House Unabridged Dictionary, 2nd ed., 1993. We take judicial
notice of this excerpt, as it was submitted with the Examining
Attorney’s brief.
Serial No. 75/207,208
4
for automobile dealers,” or “a bank for individuals or
companies in the automobile industry,” or “a television
network or an affiliation of banks.” Applicant adds that
the phrase AUTOMOTIVE BANKING is an incongruous combination
of these two words. Applicant lists three third-party
registrations in support of its position, alleging that
these registrations are not registered under Section 2(f)
of the Trademark Act. While applicant did not make these
registrations properly of record by submitting copies of
these registrations from the records of the Patent and
Trademark Office (PTO), the Examining Attorney did properly
submit copies of these registrations and pointed out that
each of these three registrations contains disclaimers of
AUTOMOTIVE and NETWORK or of BANKING NETWORK.
The test for determining whether a mark is merely
descriptive is whether the involved term immediately
conveys information concerning a quality, characteristic,
function, ingredient, attribute or feature of the product
or service in connection with which it is used, or intended
to be used. In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB
1979); In re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB
1986). It is not necessary, in order to find a mark merely
descriptive, that the mark describe each feature of the
goods, only that it describe a single, significant quality,
Serial No. 75/207,208
5
feature, etc. In re Venture Lending Associates, 226 USPQ
285 (TTAB 1985). Further, it is well established that the
determination of mere descriptiveness must be made not in
the abstract or on the basis of guesswork, but in relation
to the goods or services for which registration is sought,
the context in which the mark is used, and the impact that
it is likely to make on the average purchaser of such goods
or services. In re Recovery, 196 USPQ 830 (TTAB 1977).
We agree with the Examining Attorney that the
identification of services, “loan financing services,” is
very broad and encompasses automotive financing; and that,
considering the mark in connection with the identified
services, and based on the dictionary definitions of the
individual words comprising the mark, AUTOMOTIVE BANKING
NETWORK merely describes a banking network for financing
automotive vehicles. We find applicant’s arguments to the
contrary to be unavailing.
In the present case, it is our view that, when applied
to applicant’s services, the term AUTOMOTIVE BANKING
NETWORK immediately describes, without conjecture or
speculation, a significant feature or function of
applicant’s services, as indicated herein. Nothing
requires the exercise of imagination, cogitation, mental
processing or gathering of further information in order for
Serial No. 75/207,208
6
purchasers of and prospective customers for applicant’s
services to readily perceive the merely descriptive
significance of the term AUTOMOTIVE BANKING NETWORK as it
pertains to loan financing services.
Decision: The refusal under Section 2(e)(1) of the
Act is affirmed.
R. L. Simms
T. J. Quinn
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board