Classic Capital, Inc.

Trademark Trial and Appeal Board

Aug 15, 2016

No. 86334513 (T.T.A.B. Aug. 15, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: August 15, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Classic Capital, Inc.
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Serial No. 86334513
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Paul D. Supnik, Law Office of Paul D. Supnik,
for Classic Capital, Inc.

Esther Borsuk, Trademark Examining Attorney, Law Office 103,
Michael Hamilton, Managing Attorney.
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Before Cataldo, Lykos, and Hightower,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
Applicant Classic Capital, Inc. seeks registration on the Principal Register of
CLASSIC CAR CAPITAL, in standard characters, as a mark for (as amended)
“consumer lending and financing services for classic, vintage and historical cars” in
International Class 36.1 The Trademark Examining Attorney refused registration of
Applicant’s proposed mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C.

1 Application Serial No. 86334513 was filed on July 11, 2014, based on Applicant’s allegation
of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b).
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§ 1052(e)(1), on the ground that Applicant’s mark is merely descriptive of Applicant’s
services. When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. Applicant then requested and was granted
remand to the Examining Attorney to amend the recitation of services. The
amendment was entered and appeal resumed once again. We affirm the refusal to
register.
A term is merely descriptive within the meaning of Section 2(e)(1) if it
immediately conveys knowledge of a quality, feature, function, or characteristic of the
goods or services with which it is used. In re Chamber of Commerce of the U.S., 675
F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012). Whether a mark is merely
descriptive is determined in relation to the goods or services for which registration is
sought, the context in which the mark is used, and the possible significance the term
would have to the average consumer because of the manner of its use or intended use.
In re TriVita, Inc., 783 F.3d 872, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015); In re
Chamber of Commerce of the U.S., 102 USPQ2d at 1219.
Descriptiveness is not considered in the abstract or on the basis of guesswork. In
re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007); In
re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). That is, it is well-established that
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 and services are will understand the mark to convey information about
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them.”’ DuoProSS Meditech Corp. v. Inviro Med. Devices Ltd., 695 F.3d 1247, 103
USPQ2d 1753, 1757 (Fed. Cir. 2012) (quoting In re Tower Tech. Inc., 64 USPQ2d
1314, 1316-17 (TTAB 2002)). That a term may have different meanings in other
contexts is not controlling. In re RiseSmart Inc., 104 USPQ2d 1931, 1933 (TTAB
2012). A mark need not immediately convey an idea of each and every specific feature
of the services in order to be considered merely descriptive; it is enough if it describes
one significant attribute, function or property of the services. See In re Gyulay, 820
F.2d 1216, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987); In re Fat Boys Water Sports LLC,
118 USPQ2d 1511, 1512 (TTAB 2016).
Applicant does not dispute that CLASSIC CAR, the first two terms in its proposed
mark, is merely descriptive in association with its services. Indeed, the generic nature
of that phrase is evident both from Applicant’s identification of services – “consumer
lending and financing services for classic, vintage and historical cars” – and from
information Applicant submitted demonstrating the nature of its services, which
states that Applicant “provides Financing To Fuel Your Life’s Passion as a classic car
collector and owner”:2

2 February 16, 2015 Response to Office Action at 2.
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Rather, Applicant focuses on the term CAPITAL, arguing that it is “only slightly
suggestive” of its identified services because “capital” has multiple meanings that do
not have a direct relationship to consumer lending and financing for classic cars.3
The Examining Attorney submitted dictionary definitions of “capital” that include
“wealth (money or property) owned or used in business by a person, corporation, etc.”4
The Examining Attorney also made of record several registrations, each with
CAPITAL disclaimed, for services similar to Applicant’s in whole or in part, including
the following:
• CHRYSLER CAPITAL for “automotive financing services”5
• NEXTGEAR CAPITAL for “automobile financing services”6
• FRANKLIN CAPITAL CORPORATION for “automobile financing services”
(disclaiming CAPITAL CORPORATION)7
• WINDSET CAPITAL for “financing and loan services”8
• UPS CAPITAL for “financing services”9
• KALAMATA CAPITAL for “financing services”10
• HEADWAY CAPITAL for “arranging of loans; credit and loan services;
financial services, namely, money lending; financing and loan services”11

3 See Appeal Brief at 6, 11 TTABVUE 9.
4 October 29, 2014 Office Action at 2, from the online Collins American English Dictionary
(www.collinsdictionary.com).
5 February 27, 2015 Final Office Action at 7-8 (Registration No. 4448601).
6 Id. at 9-10 (Registration No. 4518899).
7 Id. at 4-6 (Registration No. 3372290).
8 Id. at 11-13 (Registration No. 4561461).
9 Id. at 2-3 (Registration No. 3083107).
10 Id. at 14-15 (Registration No. 4633929).
11 Id. at 16-17 (Registration No. 4634374).
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Such third-party registrations show that CAPITAL has descriptive significance when
applied to lending and financing services. See Inst. Nat’l des Appellations D’Origine
v. Vintners Int’l Co., 958 F.2d 1574, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992); In re Box
Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006). It is thus clear from the record
that CAPITAL is descriptive of loan and finance services, i.e., providing capital.
Finally, Applicant argues that the alliteration and cadence of its proposed mark
render it not merely descriptive.12 We disagree. We find the terms CLASSIC CAR
CAPITAL to be highly descriptive in relation to Applicant’s services and to retain the
same descriptive significance in combination. Thus, the resulting combination also is
merely descriptive. See, e.g., DuoProSS, 103 USPQ2d at 1758 (SNAP SIMPLY
SAFER merely descriptive for cannulae, needles, and syringes despite alliteration);
see also In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1823 (TTAB 2012) (“If each
component retains its merely descriptive significance in relation to the goods or
services, the combination results in a composite that is itself merely descriptive.”).
Based on the evidence of record, we find that a consumer of lending and financing
services for classic cars would immediately recognize CLASSIC CAR CAPITAL to
convey information about those services. Because the proposed mark, considered as
a whole, immediately conveys knowledge of features and characteristics of the
Applicant’s services, it is merely descriptive under Trademark Act Section 2(e)(1).
Decision: The refusal to register is affirmed.

12 Appeal Brief at 7-8, 11 TTABVUE 10-11.