Motor Vehicle Software Corporation

Trademark Trial and Appeal Board

Sep 13, 2016

No. 86400704 (T.T.A.B. Sep. 13, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: September 13, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Motor Vehicle Software Corporation
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Serial No. 86400704
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Jessica Bromall Sparkman of Jeffer Mangels Butler & Mitchell LLP,
for Motor Vehicle Software Corporation.
Rebecca A. Smith, Trademark Examining Attorney, Law Office 110,
Chris A. F. Pedersen, Managing Attorney.
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Before Quinn, Taylor and Wolfson,
Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:
Motor Vehicle Software Corporation (“Applicant”) seeks registration on the
Principal Register of the term DRYVR (in standard characters) for the goods and
services listed below, as amended as to Classes 16 and 35:
Computer software and downloadable mobile applications
for processing, maintaining, managing, and renewing
vehicle registrations and title transfer, for accessing,
searching, managing, and renewing drivers [sic] license
and vehicle registration records, for accessing and
searching vehicle title and lien information databases, for
accessing and searching driver license and occupational
license databases, for collecting, tracking, and managing
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information relating to vehicle insurance verification, for
reviewing and managing SMOG checks and other vehicle
equipment-related requirements, for reviewing, managing,
and paying parking and traffic violations, for reviewing,
managing and paying toll fees and usage; downloadable
electronic publications, namely, guidebooks and
instruction manuals relating to vehicle registration
compliance and vehicle fleet inventory management
services in International Class 9;
Manuals and printed pamphlets, brochures, handouts,
workbooks, worksheets, leaflets, and informational flyers
in the field of computer software; publications, namely,
guidebooks and instruction manuals relating to vehicle
registration compliance and vehicle fleet inventory
management services in International Class 16;
Vehicle registration services; business consulting services
relating to the processing and maintenance of vehicle
registrations; business consulting services, namely,
providing assistance in the development of business
strategies relating to the processing and maintenance of
vehicle registrations in International Class 35;
Education services, namely, seminars, training, and
certification programs relating to the processing and
maintenance of vehicle registrations; training in the use
and operation of computer software in International Class
41; and
Providing online non-downloadable software for processing
and maintenance of vehicle registrations, for accessing and
searching drivers [sic] license and vehicle registration
records, for accessing and searching vehicle title and lien
information databases, for accessing and searching driver
license and occupational license databases, and for
collecting and tracking information relating to vehicle
insurance verification and vehicle equipment-related
requirements; providing a website featuring non-
downloadable software for processing and maintenance of
vehicle registrations, for accessing and searching drivers
license and vehicle registration records, for accessing and
searching vehicle title and lien information databases, for
accessing and searching driver license and occupational
license databases, and for collecting and tracking
Serial No. 86400704
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information relating to vehicle insurance verification and
vehicle equipment-related requirements in International
Class 42.1
The Trademark Examining Attorney has refused registration of Applicant’s mark
under Trademark Act Section 2(e)(1), 15 U.S.C. § 1052(e)(1), because the proposed
mark is merely descriptive of Applicant’s goods and 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. We affirm the refusal to register.
The Examining Attorney maintains that:
[T]he term DRYVR is simply a fanciful spelling of the term
DRIVER which is defined as “a person who drives a truck,
car, etc.”[2] The mark DRYVR and the term DRIVER are
pronounced the same and sound identical. The
goods/services are in the field of driver’s license
registration and are for drivers themselves to find
information about vehicle registration, records and title
information. The term refers to the target audience of the
goods/services (drivers themselves) and the subject matter
of the goods/services.
Applicant, on the other hand, contends that its applied-for mark, DRYVR, is
properly classified as suggestive, not descriptive of, as summarized by Applicant,
“goods and services that allow users to track information about car registrations, car
insurance, drivers’ licenses, and other items related to the bureaucracy associated

1 Application Serial No. 86400704 was filed on September 19, 2014, based upon 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. §1052(b).
2 (www.merriam-webster.com/dictionary/driver) Attachment to Office Action dated January
6, 2015.
Serial No. 86400704
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with car ownership”; and that any doubt about whether the term is descriptive or
suggestive should be resolved in Applicant’s favor.
A mark is deemed to be merely descriptive, within the meaning of Section 2(e)(1),
if it immediately conveys knowledge of a quality, feature, function, characteristic or
purpose of the goods and services for which it is used. In re Bayer Aktiengesellschaft,
488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007) (quoting In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009) (Fed. Cir. 1987)); and In re Abcor Development, 588 F.2d 811,
200 USPQ 215, 217-18 (CCPA 1978). A mark need not immediately convey an idea of
each and every specific feature of the goods and services in order to be considered
merely descriptive; rather, it is sufficient that the mark describes one significant
attribute, function or property of the goods and services. In re Chamber of Commerce
of the United States of America, 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir.
2012); In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); and In re MBAssociates, 180
USPQ 338 (TTAB 1973). Whether a mark is merely descriptive is determined not in
the abstract, but in relation to the goods and services for which registration is sought,
the context in which it is being used on or in connection with the goods and services,
and the possible significance that the mark would have to the average purchaser of
the services because of the manner of its use. In re Bright-Crest, Ltd., 204 USPQ 591,
593 (TTAB 1979). It is settled that “[t]he 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 understand the
Serial No. 86400704
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mark to convey information about them.” In re Tower Tech Inc., 64 USPQ2d 1314,
1316-17 (TTAB 2002).
The Examining Attorney has supported the refusal with the dictionary definition
of “driver” which is defined, in relevant part, as “a person who drives a car, truck etc.”
or “a person whose job is to drive a vehicle (such as a taxi, truck, or bus).3 She also
has supported her position with various third-party registrations of marks including
the term “DRIVER” where that term has been disclaimed or the mark was registered
under Trademark Act Section 2(f) based on a showing of acquired distinctiveness.
While the third-party registrations are not evidence that the registered marks are
actually in use, they may be given some weight to show the meaning of a mark, or a
term in the mark, in the same way that dictionaries are used. In re Box Solutions
Corp., 79 USPQ2d 1953, 1955 (TTAB 2006) (“[T]hird-party registrations can be used
in the manner of a dictionary definition to illustrate how a term is perceived in the
trade or industry.”). These registrations include by way of example:
Registration Number Mark Goods/Services4
3559915 DRIVER RESCUE Automobile association
services
3177949 DRIVER SCORE Compiling and analyzing
vehicle usage data for business
use
3957753 ARI DRIVER INSIGHTS Educational services, namely,
providing on-line classes,
seminars, … in the field of
vehicle fleet driving
4229286 JUST THE DRIVER Chauffeur driven care hire
services; chauffeur services
4338031 DRIVER WHIZ Downloadable software for use
in scanning computer systems
settings and updating driver

3 Attachment to Office Action dated January 6, 2015.
4 The identifications have been edited and/or annotated, where appropriate.
Serial No. 86400704
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software … and monitoring
computer and driver
performance
4454061 EVERYDAY DRIVER Providing consumer
information and related news
in the field of cars,
automobiles, and motor
vehicles
4534909 STAR DRIVER Promoting public awareness of
safe driving habits
4536619 DRIVER BUDDY Automated systems, namely,
software, hardware and
communications devices for
planning, scheduling,
controlling, monitoring and
providing information on
transportation assets and
parts thereof
4654411 ROADWISE DRIVER Providing driver education and
traffic safety information and
training for seniors
4276397 DRIVER SCIENCE Financial risk management
consulting services related to
driver behavior, namely,
management and reduction of
the financial risk created by
drivers by reducing risky
driving behavior
We find the record supports a finding that DRYVR is merely descriptive of the
intended user of Applicant’s goods and services, which by Applicant’s summation are
“tools that can be used to track certain information about, and perform certain actions
in relation to, car registration, insurance, drivers’ licenses, inspections and other
similar items.5
The Board has previously found that a term is merely descriptive if describes the
intended user or consumer of the relevant goods or services. See In re Planalytics,
Inc., 70 USPQ2d 1453, 1456 (TTAB 2004) (with respect to the mark GASBUYERS for
“providing online risk management services in the field of pricing and purchasing

5 7 TTABVUE 6.
Serial No. 86400704
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decisions for natural gas,” the Board held that “Applicant’s identification of services
makes it clear that its services are directed to those who are in the field of making
purchasing decisions for natural gas. The evidence supports the conclusion that these
people would be referred to as gas buyers.”). See also Hunter Publ’g Co. v. Caulfield
Publ'g Ltd., 1 USPQ2d 1996 (TTAB 1986) (SYSTEMS USER found merely descriptive
of a trade journal directed toward users of large data processing systems; evidence
sufficient to establish distinctiveness under Trademark Act §2(f)); In re Camel Mfg.
Co., Inc., 222 USPQ 1031 (TTAB 1984) (MOUNTAIN CAMPER held merely
descriptive of retail mail-order services in the field of outdoor equipment and
apparel). The term DRYVR falls within this line of decisions as it would readily be
perceived as an intentional misspelling of the word “driver,” and merely describes a
person who would be interested in the identified goods and services which, as
Applicant succinctly notes, are goods and services that allow users to track
information about car registrations, car insurance, drivers’ licenses, and other items
related to the bureaucracy associated with vehicle ownership and operation.
Contrary to Applicant’s contention, we do not find the “unique spelling” of its
proposed mark sufficient to cause prospective consumers who encounter the mark to
“pause and think.” Rather, we find the spelling not so novel that the term “dryvr”
would not be recognized as and understood to be the phonetic equivalent of the word
“driver.” It has been long been held that a novel spelling or an intentional misspelling
that is the phonetic equivalent of a merely descriptive word or term is also merely
descriptive if purchasers would perceive the different spelling as the equivalent of the
Serial No. 86400704
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descriptive word or term. See In re Hercules Fasteners, Inc., 203 F.2d 753, 97 USPQ
355 (CCPA. 1953) (holding “FASTIE,” phonetic spelling of “fast tie,” merely
descriptive of tube sealing machines); Andrew J. McPartland, Inc. v. Montgomery
Ward & Co., 164 F.2d 603, 76 USPQ 97 (CCPA 1947) (holding “KWIXTART,” phonetic
spelling of “quick start,” merely descriptive of electric storage batteries); In re
Carlson, 91 USPQ2d 1198 (TTAB 2009) (holding “URBANHOUZING” phonetic
spelling of “urban” and “housing,” merely descriptive of real estate services); In re
State Chem. Mfg. Co., 225 USPQ 687 (TTAB 1985) (holding “FOM,” phonetic spelling
of “foam,” merely descriptive of foam rug shampoo); see also TRADEMARK MANUAL OF
EXAMINING PROCEDURE (“TMEP”) §1209.03(j) (2016).
Likewise, we also disagree with Applicant’s assertion that consumers, upon
viewing DRYVR in the context of the recited goods and services, would “need to take
one mental step between seeing the mark, and understanding the nature of
Applicant’s goods and services.” The goods and services are identified broadly enough
that it is clear that they are directed, in whole or in part, to consumers who are
drivers. In fact, Applicant acknowledges this fact when it states that “drivers are just
one of the many groups that may use Applicant’s Goods and Services ….” The fact
that more than one group of consumers may avail themselves of Applicant’s goods
and services “to navigat[e] the bureaucracy of car ownership” does not alter the fact
that Applicant’s applied-for mark DRYVR immediately describes a significant group
of intended consumers of the identified goods and services.
Serial No. 86400704
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In response to the Examining Attorney’s proffered third-party registrations,
Applicant submitted the following third-party Principal Register registrations for
marks without either a claim pursuant to Section 2(f) or a disclaimer of the term
“driver,”6 arguing that “[t]he existence of these third-party registrations suggests that
the mere fact that ‘driver’ may be an intended user of the registered [recited] goods
and services is not sufficient to render marks containing the word driver merely
descriptive.” 7 TTABVUE 8.
Registration No. Mark Goods/Services
4716546 DRIVER UP financing and loan services
4716547 financing and loan services
3988964 AlertDriver vehicle safety equipment
4876696 ANALYTICSDRIVER various goods and services in
the field of customer services
management, consultation
services in the automotive in
dealership industry
3866192 BESTDRIVERJOBS periodicals featuring
employment information
relating to truckers and
trucking-related businesses
4549867 BlueDriver electronic wireless vehicle
senor for monitoring vehicle
usage
4775675 DRIVERNOTES software to track automobile
drivers’ behavior
3932753

pre-paid vehicle maintenance
service plans
4543108 DRIVER’SALERT educational services, namely,
fleet driver safety training
4589981 DRIVER’S SEAT automobile dealership services,
automobile financing and
automobile leasing services
4648038 DRIVERSHIELD automobile club services
4648515 DRIVERSOURCE employment staffing services
featuring professional drivers

6 We note that Registration No. 4365723 for the mark DRIVER REHAB for entertainment
services in the nature of creation and production of content featuring information, images,
video, audio, commentary and opinions in the field of automobiles includes a disclaimer of
the word “DRIVER.”
Serial No. 86400704
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3988965 EconoDriver vehicle safety equipment,
namely, and electronic wireless
vehicle monitor
4031080 iDriver downloadable newsletter in the
field of automotives
4494216

educational software and
services in the fields of
automobile driver training,
safety, education and
instruction
3988963 SafeDriver vehicle safety equipment,
namely a wireless vehicle
monitor
4354439 TRADEDRIVER providing use of temporary
software for the calculation of
automobile trade value
4747839 WE’RE ON THE DRIVER’S
SIDE
motor fuel
4193990 DRIVER PLEASE chartering of cars and buses;
chauffeur services
4302715 DriverPoint vehicle telematics systems;
compiling monitoring and
analyzing telematic data for
fleet vehicle management;
training services to drivers and
operators of commercial and
government fleet vehicles;
vehicle and driver telematics
services, in the nature of
providing information
concerning safety risks on
driving behavior
4753531 FREQUENT DRIVER
PROGRAM
(PROGRAM disclaimed)
online customer loyalty
program to customers and
users who travel by driving,
walking, running or biking, or
stay within any reward region
4367585 TRUNK DRIVERS car transport, chauffeur driven
car hire services
4397642 TXTFREEDRIVER promoting public awareness
about driver safety and public
safety

We find these registrations not particularly probative. First, most of the cited
registrations, i.e., Registration Nos. 3988964, 4876696, 3866192, 4549867, 4775675,
3932753, 4543108, 4589981, 4648515, 4747839, 4193990, 3988965, 4031080,
3988963, 4354439, 4302715, 4367585 and 4397642, are for compound marks that
Serial No. 86400704
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include a registrable component and, as such, no disclaimer is required. See e.g., In
re EBS Data Processing, Inc., 212 USPQ 964, 966 (TTAB 1981) (finding that “[a]
disclaimer of a descriptive portion of a composite mark is unnecessary . . . if the
elements are so merged together that they cannot be regarded as separable elements
. . . for example, . . . by combining two words or terms, one of which would be
unregistrable by itself . . .”). Likewise, Registration Nos. 4747839 and 4193990 are
unitary phrases or slogans for which a disclaimer is not required. See TMEP §§
1213.05(b) and 1213.05 (b)(i). Nonetheless, three of the registrations, for the
compound marks “SafeDriver” and “AlertDriver and the phrase “Frequent Driver
Program,” arguably do describe the intended user of the goods or services stated in
the respective registrations. More importantly, however, third-party registrations are
not conclusive on the question of descriptiveness. Each case must stand on its own
merits, and a mark that is merely descriptive should not be registered on the
Principal Register simply because other such marks appear on the register. In re Nett
Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if prior
registrations had some characteristics similar to [applicant's] application, the PTO's
allowance of such prior registrations does not bind the Board or this court.”); In re
Scholastic Testing Service, Inc., 196 USPQ 517, 519 (TTAB 1977). Herein, Applicant’s
proposed mark does not include any additional registrable matter; rather, it consists
solely of a single descriptive term.
Lastly, Applicant is correct that where there is doubt as to the character of a
merely descriptive mark, that doubt must be resolved in favor of the Applicant.
Serial No. 86400704
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Suffice it to say, we have no doubts as to the descriptiveness of DRYVR when used in
connection with Applicant’s identified goods and services.
Decision: The refusal to register Applicant’s mark DRYVR pursuant to Section
2(e)(1) of the Trademark Act is affirmed as to all classes.