THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Hearing: Mailed:
May 12, 2009 June 1, 2009
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re AAMCO Transmissions, Inc.
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Serial No. 78965665
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Timothy D. Pecsenye of Blank Rome LLP for AAMCO
Transmissions, Inc.
Shannon Twohig, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______
Before Walters, Taylor and Bergsman, Administrative
Trademark Judges.
Opinion by Bergsman, Administrative Trademark Judge:
AAMCO Transmissions, Inc. (“applicant”) has appealed
from the final refusal of the trademark examining attorney
to register the mark AAMCO COMPLETE CAR CARE EXPERTS and
design, shown below, for “maintenance and repair services
for motor vehicles, motor vehicle parts and motor vehicle
accessories,” in Class 37.
Serial No. 78965665
The Trademark Examining Attorney issued a final
requirement that applicant disclaim the exclusive right to
use the phrase “Complete Car Care Experts” because it is
merely descriptive of applicant’s services (i.e., the
repair and maintenance of automobiles). Section 6(a) of
the Trademark Act of 1946, 15 U.S.C. §1056(a). Pursuant to
Section 2(e)(1) of the Trademark Act of 1946, 15 U.S.C.
§1052(e)(1), merely descriptive matter in a mark is
unregistrable; it therefore is subject to disclaimer under
Section 6(a). The Office may refuse registration of the
entire mark if the applicant fails to comply with a proper
disclaimer requirement. See In re Omaha National Corp.,
819 F.2d 1117, 2 USPQ2d 1859, 1861 (Fed. Cir. 1987); In re
Grass GmbH, 79 USPQ2d 1600, 1602 (TTAB 2006).
On the other hand, applicant argues that because the
phrase “Complete Car Care Experts” is an inseparable part
of the mark as a whole (i.e., the mark sought to be
registered is a unitary mark), a disclaimer is not
necessary, and, in any event, the phrase “Complete Car Care
Experts” is not merely descriptive. Accordingly, the
issues in this appeal are whether the phrase “Complete Car
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Serial No. 78965665
Care Experts” forms a separate commercial impression apart
from the mark as a whole (i.e., whether it is part of a
unitary mark) and, if not, whether it is merely
descriptive.
The appeal has been fully briefed, and applicant and
the examining attorney appeared at an oral hearing.1
A. Whether the phrase “Complete Car Care Experts” is part
of a unitary mark?
“The Director may require the applicant to disclaim an
unregistrable component of a mark otherwise registrable.”
Section 6 of the Trademark Act of 1946, 15 U.S.C. §1056.
However, if the purportedly unregistrable component is part
of a unitary mark, a disclaimer is not required. TEMP
§1213.05 (5th ed. 2007).
A mark or portion of a mark is
considered ‘unitary’ when it creates a
commercial impression separate and
apart from any unregistrable component.
That is, the elements are so merged
together that they cannot be divided to
be regarded as separable elements.
TEMP §1213.05. In other words, a composite mark is unitary
when its components create a single and distinct commercial
impression or an inseparable whole. Dena Corp. v.
1 In its brief, applicant has not provided the case cites to
United States Patent Quarterly for the federal court cases it has
cited. “When cases are cited in a brief, the case citation
should include a citation to The United States Patent Quarterly
(USPQ), if the case has appeared in that publication.” TBMP
§801.03 (2d ed., revised 2004).
3
Serial No. 78965665
Belvedere International Inc., 950 F.2d 1555, 221 USPQ2d
1047, 1052 (Fed. Cir. 1991) (the mark has a distinct
meaning of its own independent of its component parts). If
the mark is unitary, then it cannot be divided into
registrable and unregistrable parts. When the composite
mark is a unitary mark, a disclaimer is not necessary
because the purportedly descriptive matter does not
comprise an unregistrable component of a mark otherwise
registrable. Dena Corp. v. Belvedere International Inc.,
221 USPQ2d at 1051-1052.
Whether a composite mark is unitary is a subjective
determination based on the commercial impression engendered
by mark. In re EBS Data Processing, Inc., 212 USPQ 964,
966 (TTAB 1981). See also Dena Corp. v. Belvedere
International Inc., 221 USPQ2d at 1052; In re Magic Muffler
Service, Inc., 184 USPQ 125, 126 (TTAB 1974) (the
determination of whether a mark is unitary is based on
reaction of the average purchaser to the display of the
mark).
In the composite mark sought to be registered, we find
that the phrase “Complete Car Care Experts” is a separable
element from the composite mark. The term “Complete Car
Care Experts” is displayed in an oval carrier that serves
as a line underneath the stylized AAMCO service mark.
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Serial No. 78965665
“Complete Car Care Experts” is a separate advertising
tagline that retains its meaning separate and apart from
the mark as a whole. It is presented in a different size
and font from the AAMCO service mark. Nothing combines or
melds the phrase “Complete Car Care Experts” to the AAMCO
service mark to create an inseparable whole.
The cases cited by applicant to support its contention
that the term “Complete Car Care Experts” is an indivisible
part of the mark sought to be registered are not very
helpful or instructive because, as noted above, the
determination is based on the commercial impression created
by the components of the marks at issue and, therefore,
each case is fact intensive.
Furthermore, we are not persuaded by applicant’s
argument that the letters “C-O” in AAMCO combined with the
phrase “Complete Car Care Experts” “is an alliterative,
unitary mark” analogous to the mark LIGHT N’ LIVELY. See
In re Kraft, Inc., 218 USPQ 571 (TTAB 1983). The
combination of AAMCO with the term “Complete Car Care
Experts” does not form alliteration. Alliteration is “the
commencement of two or more stressed syllables of a word
group either with the same consonant sound or sound group,
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Serial No. 78965665
as in from stem to stern.”2 AAMCO and “Complete Car Care
Experts” is not alliteration because they are structured
differently: the “C-O” in AAMCO is at the end of the word
while the “C-O” in “Complete” and “C” in “Car” and “Care”
are at the beginning of the words. The letters “C-O” in
AAMCO do not tie together AAMCO and the term “Complete Car
Care Experts.”
Viewing the mark in its entirety, we find that
applicant’s mark is not a unitary mark and that the phrase
“Complete Car Care Experts” is a separable element from the
composite mark which must be disclaimed if it is determined
that it is merely descriptive.
B. Whether “Complete Car Care Experts” is merely
descriptive?
A term is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1) of the
Trademark Act of 1946, 15 U.S.C. §1052(e)(1), if it
forthwith conveys an immediate idea of an ingredient,
quality, characteristic, feature, function, purpose or use
of the goods or services. In re Abcor Development Corp.,
588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). A term
need not immediately convey an idea of each and every
2 The Random House Dictionary of the English Language
(Unabridged), p. 56 (2nd ed. 1987).
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Serial No. 78965665
specific feature of the applicant’s goods or services in
order to be considered to be merely descriptive; rather, it
is sufficient that the term describes one significant
attribute, function or property of the goods or services.
In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re
MBAssociates, 180 USPQ 338 (TTAB 1973). Whether a term is
merely descriptive is determined not in the abstract, but
in relation to the goods or services for which registration
is sought, the context in which it is being used on or in
connection with the goods or services, and the possible
significance that the term would have to the average
purchaser of the goods or services because of the manner of
its use; that a term may have other meanings in different
contexts is not controlling. In re Bright-Crest, Ltd., 204
USPQ 591, 593 (TTAB 1979). In other words, the question is
not whether someone presented with only the mark could
guess what the goods or services are. Rather, the question
is whether someone who knows what the goods or services are
will immediately understand the mark as directly conveying
information about them (i.e., whether someone familiar with
applicant’s motor vehicle repair and maintenance services
will understand the phrase “Complete Car Care Experts” to
convey information about the services). In re Tower Tech
Inc., 64 USPQ2d 1314, 1317 (TTAB 2002).
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Serial No. 78965665
To support her argument that “Complete Car Care
Experts” used in connection with the repair and maintenance
of motor vehicles is merely descriptive, the Examining
Attorney submitted the following evidence:
1. The definition of the word “expert” as “having,
involving, or displaying special skill or knowledge derived
from training or experience.” A synonym is “proficient.”3
2. The definition of the word “complete” as “having
all necessary parts, elements, or steps,” “highly
proficient
”, or “fully carried out:
THOROUGH ”.4
3. An online coupon for the GOODYEAR Tire Center in
the September 2007 online coupon book of the Tampa Bay
Newspapers (www.tbnweekly.com) identifying the advertiser
as “Your Complete Car Care Experts.”
4. An excerpt from the Majestic Mobile Detail
website (www.majesticmobiledetail.com) with the following
information (emphasis added):
Keep your vehicle in showroom condition
with top-quality auto detailing and car
wash services from our mobile car care
experts in Woodbridge, Virginia.
3 Merriam-Webster Online (www.m-w.com).
4 Id.
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Serial No. 78965665
5. A listing of links in the YAHOO! Yellow Pages
(yahoo.com) including one from AAMCO Transmission, Inc.
“The Experts in Transmissions and Complete Car Care.”
6. An excerpt from the ARW Auto Care &
Reconditioning website (arwautocarelowell.net) identifying
itself as “Car Care Experts!”
7. An excerpt from the Griots Garage website
(griotsgaragecatalog.com) referencing two employees as “our
call center car care experts.”
8. An excerpt from the RadAir website (radair.com)
featuring the tagline “Complete Car Care,” in connection
with its vehicle repair and maintenance services.
9. An excerpt from the 3D Complete Car Care website
(3dcarcare.com), a full service vehicle repair center. The
trade name of the company is 3D Complete Car Care.
10. A business listing in Citysearch website
(citysearch.com) for Auto Check Complete Car Care, “an auto
shop specializing in engine and transmission overhauls.”
11. An excerpt from applicant’s website (aamco.com)
with the following display:
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Serial No. 78965665
11. An excerpt from the CarFax website (carfax.com)
identifying partners that offer CarFax services, including
applicant. The CarFax listing for applicant describes
applicant as follow: “AAMCO centers are expert in both
transmission and complete car care with over 800 locations
across North America.” (Emphasis added).
12. Excerpts from applicant’s franchisees that use
the term “Complete Car Care Experts” descriptively.
Examples are set forth below.
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Serial No. 78965665
Based on the preceding evidence, we find that the
phrase “Complete Car Care Experts” when used in connection
with “maintenance and repair services for motor vehicles,
motor vehicle parts and motor vehicle accessories”
immediately informs the purchaser, without any need for a
multistep reasoning process, that the services at issue are
automobile repair and maintenance services rendered by
automotive specialists. In re Major League Umpires,
60 USPQ2d 1059, 1060 (TTAB 2001) (“[i]t is well established
that at term which describes the provider of goods or
services is also merely descriptive of those goods and
services”).
Applicant contends, on the other hand, that the term
“Complete Car Care Experts” is trade puffery. “Puffing” is
“[t]he expression of an exaggerated opinion - - as opposed
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Serial No. 78965665
to a factual misrepresentation - - with the intent to sell
a good or service. Puffing involves expressing opinions,
not asserting something as a fact. Although there is some
leeway in puffing goods, a seller may not misrepresent them
or say that they have attributes that they do not possess.”
Black’s Law Dictionary (8th ed. 2004).5 Applicant’s use of
“Complete Car Care Experts” is not trade puffery. It is a
statement of fact, not an exaggerated opinion. Applicant’s
franchisees state that they are “Transmission & Complete
Car Care Experts” and “Your transmission and complete car
care experts.” In fact, in its brief, applicant asserts
the following:
“COMPLETE CAR CARE EXPERTS” is a
unitary slogan chosen to convey
Applicant’s heightened expertise, as
well as the overall quality and
experience of Applicant’s services.6
* * *
For Applicant, it should only be said
that the unitary slogan “COMPLETE CAR
CARE EXPERTS” conveys Applicant’s
ability to provide top-level, desirable
and diverse services in a competitive
environment. Most importantly, the
“COMPLETE CAR CARE EXPERTS” element of
5 See also McCarthy On Trademarks and Unfair Competition §27:38
(2009) (“‘Puffing’ is exaggerated advertising, blustering, and
boasting upon which no reasonable buyer would rely and is not
actionable under § 43(a). ‘Puffing’ may also consist of a
general claim of superiority over a comparative product that is
so vague, it will be understood as a mere expression of
opinion”).
6 Applicant’s Brief, p. 12.
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Serial No. 78965665
Applicant’s unique and unitary mark,
[], connotes a heightened level of
services, the likes of which are
unparalleled in the industry, through
Applicant’s ability to caters (sic) to
the diverse needs of motor vehicle
owners.7
Not only do we find applicant’s statements credible
(applicant selected the phrase to convey “Applicant’s
heightened expertise, as well as the overall quality and
experience of Applicant’s services” and the phrase conveys
“Applicant’s ability to provide top-level, desirable and
diverse services in a competitive environment”), but we
find that consumers will have the same perception. The
clear import of the phrase is that applicant renders motor
vehicle maintenance and repair services by proficient
mechanics.
Furthermore, applicant’s argument that “competitors
are not deprived of the use of the individual terms in
Applicant’s slogan, but only from the use of the slogan
itself” is not supported by the evidence.8 The evidence of
record shows one third party using “Complete Car Care
Experts,” three third parties using “Car Care Experts,” and
three third parties using “Complete Car Care.” In view of
7 Applicant’s Brief, p. 13. The claim that applicant’s level of
services are “unparalleled in the industry” is puffery.
8 Applicant’s Brief, p. 14.
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Serial No. 78965665
this evidence, as well as our finding that the entire
phrase is merely descriptive, applicant’s failure to
disclaim the exclusive right to use the phrase “Complete
Car Care Experts” could inhibit applicant’s competitors
from using the descriptive phrase.
As indicated above, we do not find applicant’s
reference to “analogous Principal Registrations”
particularly relevant or instructive in rebutting our
finding that the phrase “Complete Car Care Experts” is
merely descriptive. It is well settled that we must decide
each case on its own merits. In re Nett Designs Inc., 236
F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (THE
ULTIMATE BIKE RACK for bicycle racks is a laudatory,
descriptive term).
Even if some of the 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.
In re Nett Designs Inc., 57 USPQ2d at 1566.
Finally, we disagree with applicant’s contention that
“[a]s a unitary, suggestive slogan, the registrability of
‘COMPLETE CAR CARE EXPERTS’ is governed by a relatively
different standard for determining possible descriptiveness
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Serial No. 78965665
than that for conventional trademarks or service marks.”9
Applicant has not cited, and we have not found, any cases
that state that there is a different standard for
determining whether slogans are merely descriptive than for
“conventional trademarks or service marks.” The TMEP
provides that “[s]logans that are considered to be merely
informational in nature, or to be common laudatory phrases
or statement that would ordinarily be used in business or
the particular trade or industry, are not registrable.”
TMEP §1203(s) (5th ed. 2007). Professor McCarthy says that
“[a] slogan can be put into the ‘descriptive’ category if
it directly points out or refers to a characteristic of the
goods, rather than acts as an arbitrary or merely
suggestive mark.” McCarthy On Trademarks and Unfair
Competition §7:22 (4th ed. 2009).
The cases cited by applicant do not support its
different standard argument. The issue in In re
Hallicrafters Co., 153 USPQ 376 (TTAB 1967), In re Sotille,
156 USPQ 655 (TTAB 1968), and In re National Training
Center of Lie Detection, Inc., 226 USPQ 798 (TTAB 1985),
was whether the subject matter sought to be registered
9 Applicant’s Brief, p. 16. We note that a suggestive slogan
would be registrable, so we interpret applicant’s argument to be
that there is a different standard for determining whether a
unitary slogan is descriptive than for conventional trademarks.
15
Serial No. 78965665
functioned as a trademarks, not whether the marks were
merely descriptive. In Sotille, the Board specifically
held that “[i]f a slogan is used as a mark, registration is
mandatory unless it is prohibited for one of the reasons
set forth in Section 2 of the Act of 1946.” In re Sotille,
156 USPQ at 656. Having found that the slogan functioned
as a mark, the Board also found that the slogan was
suggestive. Not only was this finding dicta, but the Board
did not state that it was using a different standard to
determine whether a slogan is merely descriptive.
Applicant also cited Roux Laboratories, Inc. v.
Clairol Inc., 427 F.2d 823, 166 USPQ 34, 36 (CCPA 1970).
However, in that case, the court reaffirmed that the test
for determining whether a slogan is descriptive is “whether
the slogan remains merely or only descriptive.” The court
did hold that because the mark at issue is a slogan (HAIR
COLOR SO NATURAL ONLY HER HAIR DRESSER KNOWS FOR SURE)
there is a different standard for assessing whether it is
merely descriptive.
In view of the foregoing, we find that the phrase
“Complete Car Care Experts” used in connection with
“maintenance and repair services for motor vehicles, motor
vehicle parts and motor vehicle accessories” is merely
16
Serial No. 78965665
descriptive. A disclaimer of the phrase “Complete Car Care
Experts” is therefore appropriate.
Decision: The refusal to register the mark AAMCO
COMPLETE CAR CARE EXPERTS based on applicant’s refusal to
disclaim the exclusive right to use the phrase “Complete
Car Care Experts” is affirmed. However, if applicant
submits the required disclaimer of “Complete Car Care
Experts” to the Board within thirty days of the mailing
date of this decision, the decision will be set aside as to
the affirmance of the disclaimer requirement.10 See
Trademark Rule 2.142(g).
10 The standard printing format for the required disclaimer text
in this application is as follows: “No claim is made to the
exclusive right to use ‘Complete Car Care Experts’ apart from the
mark as shown.” TMEP §1213.08(a)(i) (5th ed. 2007).
17
