National Auto Stores

Trademark Trial and Appeal Board

Feb 22, 2001

No. 75323980 (T.T.A.B. Feb. 22, 2001)

2/22/01
Paper No. 14
EJS
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re National Auto Stores
________
Serial No. 75/323,980
_______
Joseph M. Konieczny of Harding, Earley, Follmer & Frailey
for National Auto Stores.
Dominick John Salemi, Trademark Examining Attorney, Law
Office 107 (Thomas Lamone, Managing Attorney).
_______
Before Seeherman, Hohein and Chapman, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
National Auto Stores has applied to register the mark
ATA and design, shown below, for “training autoparts
installers” in Class 41, and “association services, namely,
promoting the interests of automotive parts installers; and
distributorship services in the field of automotive parts”
in Class 42.1
1 Application Serial No. 75/323,980, filed July 14, 1997, and
asserting a bona fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/323,980
2
Applicant has disclaimed exclusive rights to the words
AUTOMOTIVE and to SERVING THE PROFESSIONAL AUTOMOTIVE
REPAIR INDUSTRY. However, the Examining Attorney has made
final a requirement for the disclaimer of AUTOMITIVE
TECHNICIANS ALLIANCE, rather than just the word AUTOMOTIVE
in that phrase, and it is this requirement for a disclaimer
that is the subject of this appeal.
The appeal has been fully briefed; an oral hearing was
not requested.
Before discussing the substantive requirement for a
disclaimer, there are two procedural points which we must
address. In a request for reconsideration filed on
February 16, 1999, along with its notice of appeal,
applicant requested an amendment of the application to
replace the previous disclaimer of AUTOMOTIVE and SERVING
THE PROFESSIONAL AUTOMOTIVE REPAIR INDUSTRY with
disclaimers of AUTOMOTIVE TECHNICIANS and SERVING THE
PROFESSIONAL AUTOMOTIVE REPAIR INDUSTRY. In other words,
in the phrase for which a disclaimer is at issue,
Ser. No. 75/323,980
3
AUTOMOTIVE TECHINICIANS ALLIANCE, applicant offered a
disclaimer of not just the word AUTOMOTIVE, but AUTOMOTIVE
TECHNICIANS. In the next Office action the Examining
Attorney stated that he was considering the disclaimer
issue as it pertained to the word ALLIANCE, and maintained
the requirement for a disclaimer of the entire phrase.
In its appeal brief, supplemental appeal brief,2 and
reply brief, applicant has stated that “whether the word
‘technicians’ has been disclaimed is unclear on the
record.” Reply brief, p. 1. Applicant apparently bases
this statement on the fact that the Office records do not
reflect the entry of the disclaimer; applicant also states
that the Office action denying the request for
reconsideration does not indicate that the amendment was
entered.
Whether or not a clerical entry is made in a file or
the Office’s computer system is not determinative of
2 As noted above, applicant filed a request for reconsideration
along with its notice of appeal. It is the policy of the Board,
in such situations, to institute the appeal, suspend the appeal
proceeding, and remand the application to the Examining Attorney
for consideration of the request for reconsideration. See TBMP
§ 1204. Although it is the preferred practice in such a
situation that the applicant await the Board’s action remanding
the application to the Examining Attorney, in this case, prior to
the issuance of the Board’s order, applicant filed its appeal
brief. Accordingly, after the Examining Attorney denied the
request for reconsideration, the Board allowed applicant the
opportunity to file a supplemental appeal brief.
Ser. No. 75/323,980
4
whether a disclaimer was entered. Moreover, we think it is
clear from the Examining Attorney’s Office action acting on
the request for reconsideration that the disclaimer of
TECHNICIANS, or more specifically AUTOMOTIVE TECHNICIANS,
was accepted, since the Examining Attorney treated the only
issue remaining as whether the word ALLIANCE needed to be
disclaimed.
However, it appears from the statements made in
applicant’s briefs, and specifically its arguments that
TECHNICIANS is not descriptive, that it now wishes to
withdraw the previously offered disclaimer of this word.
An applicant should not be forced to accept a registration
which it does not want, and therefore, because it appears
that applicant wishes to register its mark without a
disclaimer of the word TECHNICIANS, we will proceed with
our decision on the assumption that the offer of this
particular disclaimer has been withdrawn.
The second procedural point relates to applicant’s
objections to third-party registrations submitted by the
Examining Attorney as part of his denial of applicant’s
request for reconsideration. Applicant asserts that this
evidence is untimely, pointing to TMEP § 1106.07(a), which
in turn refers to Trademark Rule 2.142(d). That rule
provides that the record in the application should be
Ser. No. 75/323,980
5
complete prior to the filing of the appeal. However,
although in this case applicant had filed its appeal prior
to the Office action, with its appeal it had filed a
request for reconsideration, and, as noted previously, the
Board had remanded the application to the Examining
Attorney to consider the request. As part of the
examination of the request for reconsideration, the
Examining Attorney was entitled to submit new evidence
directed to the issue of the propriety of the disclaimer of
the word ALLIANCE, the remaining word in the phrase which
applicant had not disclaimed. See TBMP § 1204.
This brings us to the substantive issue in this
appeal. The Examining Attorney has required that applicant
disclaim the entire phrase AUTOMOTIVE TECHNICIANS ALLIANCE
in its mark on the ground that it is merely descriptive.
Section 6(a) of the Trademark Act provides, inter alia,
that “the Director may require the applicant to disclaim an
unregistrable component of a mark otherwise registrable.”
Section 2(e)(1) of the Act prohibits the registration of
marks which are merely descriptive of an applicant’s goods,
and Section 3 extends this provision to marks for services.
It is the Examining Attorney’s position that the
phrase AUTOMOTIVE TECHNICIANS ALLIANCE is merely
descriptive because AUTOMOTIVE TECHNICIANS is a term of art
Ser. No. 75/323,980
6
in the automobile repair industry and this term, when
combined with the word ALLIANCE, a word similar to
association or affiliation, results in a phrase which
literally means an association of auto repair specialists.
In support of this position, the Examining Attorney has
made of record excerpts from numerous articles taken from
the NEXIS database3 in which the term “automotive
technician(s)” is found, including the following:
Finding a mechanic
Two out of three Americans don’t trust
automotive technicians, according to a
recent survey by National Automotive
Parts Association.
“The Indianapolis Star,” July 26, 1998;
Automotive technician
Automotive repair has spun into the
computer age, said Jo Erp, 39, a Dakota
County Technical College graduate.
…
Erp achieved her lifelong goal of
becoming an automotive technician by
gaining a spot in a program sponsored
by General Motors.
“Star Tribune,” (Minneapolis, MN),
July 12, 1998;
…technology course sponsored by
Chrysler Corp. and General Motors Corp.
as a successful venture. Students
train to become automotive technicians
in the program, which stresses on-the-
job mentoring.
“Educating for Employment,” June 19,
1998;
3 The search for “automotive technician” found 1434 stories.
The Examining Attorney submitted the first thirty.
Ser. No. 75/323,980
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History turns into something like a
computerized car—simple to use and
impossible to fix.
Automotive technicians are listed in
the phone book. But who are you going
to call when your history breaks down?
“The New York Times,” June 18, 1998;
Mr. Aaskov was an automotive technician
for Performance Motors of Falmouth for
several years. He traveled to Germany
to attended [sic] school at the
Mercedes-Benz plant….
“Portland Press Herald,” June 18, 1998;
Because most of us are not certified
automotive technicians, when we talk to
our technician about vehicle repairs,
it’s not unlike trying to feel
knowledgeable about dealing in rocket….
“Sacramento Bee,” June 5, 1998; and
…turning down a pair of $5,000
scholarships at two other colleges—to
earn certification as an automotive
technician.
He plans to concentrate his studies
toward General Motors vehicles….
“The Indianapolis News,” June 2, 1998.
The Examining Attorney also made of record numerous
third-party registrations for marks which contain the word
ALLIANCE, and in which the word ALLIANCE has been
disclaimed. For example, NATIONAL AIR FREIGHT TRUCKING
ALLIANCE is disclaimed in NAFTA NATIONAL AIR FRIEGHT
TRUCKING ALLIANCE and design for association services,
namely, promoting the interests of air freight trucking
companies; HOME CARE ALLIANCE is disclaimed in NORTH
AMERICAN HOME CARE ALLIANCE for association services,
Ser. No. 75/323,980
8
promoting the interests of providers and beneficiaries of
home care services and products, and this registration is
on the Supplemental Register, an acknowledgment that the
mark as a whole is merely descriptive; INTERNATIONAL
ALLIANCE OF HEALTHCARE EDUCATORS is disclaimed in
INTERNATIONAL ALLIANCE OF HEALTHCARE EDUCATORS and design
for association services, namely, promoting the interests
of healthcare instructors; and INTELLECTUAL PROPERTY
ALLIANCE is disclaimed in INTERNATIONAL INTELLECTUAL
PROPERTY ALLIANCE, registered under Section 2(f), for,
inter alia, educational services, namely, arranging and
conducting seminars in the field of copyright protection.
In addition, the Examining Attorney, in his appeal brief,
quoted a definition of “alliance” as meaning “an
association or union formed for the furtherance of the
common interests and aims of the members.”4 Although the
submission of evidence with an appeal brief is untimely
under Trademark Rule 2.142(d), we have considered such
definition since the Board may properly take judicial
notice of dictionary definitions. See University of Notre
Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213
4 Webster’s Third New International Dictionary, unabridged,
© 1976.
Ser. No. 75/323,980
9
USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).
We also note that during the prosecution of its
application applicant has provided definitions of
“alliance,” which include “a union, relationship, or
connection by kinship, marriage, or common interest” and “a
congruence of quality or type; affinity.”5
A term is merely descriptive, and therefore
unregistrable under the provisions of Section 2(e)(1), if
it immediately conveys information concerning a quality,
characteristic, function, ingredient, attribute or feature
or a product or service. In re Venture Lending Associates,
226 USPQ 285 (TTAB 1985). See also In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
We agree with the Examining Attorney that the phrase
AUTOMOTIVE TECHNICIANS ALLIANCE is merely descriptive of
the identified services, and must be disclaimed. It
immediately tells consumers of these services that they
involve an association directed to automotive technicians.
The NEXIS evidence shows AUTOMOTIVE TECHNICIANS is a
5 The American Heritage Dictionary, 2d coll. ed., © 1985.
Applicant has also submitted a dictionary definition of
“technician” as meaning “an expert in a technique, as: a person
whose occupation requires training in a specific technical
process; a dental technician; b. one who is known for skill in an
intellectual or artistic technique.” Id.
Ser. No. 75/323,980
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recognized term to refer to auto mechanics/automotive parts
installers. Automotive technicians are obviously the users
of applicant’s training services and its association
services, and the purchasers of its distributorship
services. Further, the dictionary definitions submitted by
applicant show that ALLIANCE describes applicant’s
association services, and its services of training
automotive technicians, which are a union of people sharing
a common vocational interest. The third-party
registrations in which the word ALLIANCE is disclaimed
support the descriptiveness of this word in connection with
a wide variety of services, including association services,
and indicate that no one party is entitled to exclusive
rights to register this word.
Applicant’s arguments discuss whether TECHNICIANS
ALLIANCE is merely descriptive, and essentially ignore the
fact that it is the entire phrase, AUTOMOTIVE TECHNICIANS
ALLIANCE, which is the subject of the disclaimer
requirement. Therefore, its analysis is flawed. For
example, applicant argues that looking at the dictionary
definitions of “technician” and “alliance,” the term
TECHNICIANS ALLIANCE “may suggest a union of international
dental technicians.” Supplemental brief, p. 4.
Ser. No. 75/323,980
11
Decision: The requirement for a disclaimer of
AUTOMOTIVE TECHNICIANS ALLIANCE is affirmed. However, if
applicant submits the required disclaimer within 30 days of
the mailing date of this decision, the decision will be set
aside, and the application passed to publication.
Trademark Rule 2.142(g).