Talking Car, Inc.

Trademark Trial and Appeal Board

Jul 3, 2001

No. 75121820 (T.T.A.B. Jul. 3, 2001)

7/3/01
Paper No. 22
DEB
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Talking Car, Inc.
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Serial No. 75/121,820
_______
Jeffrey A. Pine of Baniak Pine & Gannon for Talking Car, Inc.
Glenn G. Clark, Trademark Examining Attorney, Law Office 115
(Tomas V. Vlcek, Managing Attorney).
_______
Before Hanak, Bucher and Bottorff, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Talking Car, Inc. has filed an application to register the
mark TALKING CAR for “information services, namely, providing
encoded data pertaining to cars to automobile dealers.”1
Registration has been finally refused under Section 2(e)(1)
of the Trademark Act, 15 U.S.C. §1052(e)(1), on the basis that
when used in connection with applicant’s services, the term
TALKING CAR is merely descriptive of them. Hence, the sole
issue before us is whether or not the term TALKING CAR is mere
descriptive of applicant’s services.
1 Ser. No. 75/121,820, filed on June 14, 1996, for the services
recited above in International Class 39, is based upon an allegatio
of use in commerce since February 9, 1995.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB,
ly
n
Serial No. 75/121,820
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Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested.
We reverse the refusal to register.
By way of background, applicant includes a concise
description of its services in its appeal brief (citations
omitted):
Applicant’s use of “TALKING CAR” is for information
services, i.e., providing encoded data pertaining to
cars to automobile dealers. The service is provided
when an automobile dealer sends information pertaining
to an automobile to Applicant. The Applicant then
encodes and electronically stores the data in a
cartridge, and returns it to the dealer. The dealer
places the cartridge into an Audio Playback Unit (APU)
which is placed in the automobile to be sold. When a
potential purchaser depresses the start button on the
APU, the information is transmitted through the APU.
The applicant’s information services involve
converting the data received from the automobile
dealer to a cartridge that is used to audibly transmit
the information. Applicant does not sell automobiles,
let alone cars that talk.
(Appeal brief, pp. 3-4). In brief, a prospective customer
walking through a used car lot any hour of the night or day can
hear a spoken message (taken from a text drafted by the dealer)
of up to two minutes in length. The prospective customer simply
approaches a small, weatherproof digital announcer (having
limited reproduction capabilities and quality of sound) that is
hanging on the outside of the vehicle’s window, and pushes the
“play” button.
The Trademark Examining Attorney, on the other hand,
maintains that applicant’s composite mark is merely descriptive:
Serial No. 75/121,820
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… In the present case, the words comprising the
proposed mark are known words which are in common
usage in the trade as evidenced by the Lexis-Nexis
stories, Web sites of others and third party
registrations. The combination of the descriptive
words, TALKING and CAR, when considered in relation to
the services leaves nothing for speculation or
conjecture. No bizarre or incongruous meaning is
imparted by the combination of the descriptive words.
The combination simply results in a term that is
readily understood: a car that talks. As such, the
term sought to be registered, TALKING CAR, describes
the salient functions, features, uses and purposes of
the relevant services.
(Trademark Examining Attorney’s appeal brief, p. 9).
Then in its reply brief, applicant highlights the essence
of this dispute by responding to the language of the Trademark
Examining Attorney’s brief quoted above:
The Examining Attorney’s Appeal Brief suffers from the
same shortcomings as the previous refusals to register
the TALKING CAR mark: it fails to compare the mark at
issue to applicant’s services. As described in
Applicant’s opening brief, this is a fatal mistake.
The Examining Attorney sets forth an erroneous
presumption: that applicant’s services are the
equivalent of certain goods, and then compares the
mark to the incorrect description of goods. The marks
should have been compared to applicant’s (amended)
information services, in which Applicant provides
encoded data to automobile dealers, and not compared
to “cars that feature audio communications or means
for communicating spoken words” or “a car that talks.”
This was not done.
(Applicant’s reply brief, pp. 1-2).
According to the Trademark Examining Attorney, the record
shows that the purchasing public is accustomed to seeing the
word “talking” used to describe a variety of inanimate objects
(especially those that do not generally have an audio feature)
Serial No. 75/121,820
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producing voice-like sounds. Specifically, a series of NEXIS
stories used the combined term “talking car” in connection with
extant and futuristic automobiles, television commercials and
cars featured in television shows or movies. In each excerpt
below that the Trademark Examining Attorney extracted from the
record for his appeal brief, audio waves of some kind were
emanating, or appeared to be emanating, from an automobile:
“ … the process has been widely used, most notably in
Nick Perry’s Oscar-winning Wallace & Grommet shorts
and his series of talking car spots for Chevron.” The
Fort Worth Star-Telegram, (July 10, 1998).
“Radio ads set to air next week will feature a talking
car (that’s right, a talking car) complaining to a
mechanic about stop-and-go traffic. The car says it
needs a vacation.” Newsday (New York, NY), (June 20,
1998).
“Designed by advertising agency Young & Rubicam, the
television commercials debuted in May 1995 and
features talking cars with personalities.” San
Francisco Business Time (December 19, 1997).
“One of the highlights of the show was the debut of a
prototype ‘talking car,’ a combined effort of IBM, Sun
Microsystems Inc., Devco Electronics and Netscape
Communications Corp.” Business Journal- San Jose
(November 24, 1997).
“Clearly, there is a slippery slope principle here:
Start out with smart houses and talking cars and
computers that act like TVs, and you end up with
operatic doorbells. What next? A tea kettle that
plays ‘I’m a …’ ” The Boston Globe, (March 1, 1998).
“Just when we were getting used to the idea of talking
refrigerators and talking cars, along comes the
talking urinal.” Star Tribune (Minneapolis, MN),
(April 11, 1998).
Consistent with the last two excerpts above, the Trademark
Examining Attorney extracted additional articles from the NEXIS
Serial No. 75/121,820
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database showing the word “talking” used more broadly with other
goods having an audio communications component.2 He also
supplemented this NEXIS evidence with evidence from specific Web
sites demonstrating the use of “Talking” plus the name of
various inanimate objects,3 as well as registrations where third
party trademark owners had disclaimed the word “Talking” apart
from the composite mark as shown.4
As to the second word in this composite mark, the Trademark
Examining Attorney says briefly that “the word ‘car’ describes
the subject matter on which the services are used.” (Trademark
Examining Attorney’s appeal brief, p. 5).
In addition, as seen in the quotation above, the Trademark
Examining Attorney insists that joining these two individually
descriptive words, TALKING and CAR, into the combined term
TALKING CAR does not impart any new or incongruous meaning, when
used in connection with applicant’s services, and that no
2 The evidence included references to “talking sign,” “talking
advertisement,” “talking map,” “talking greeting cards,” “talking
cards,” “talking dolls,” “talking compass,” and “talking doorbell.”
3 In addition to repeating some of the terms listed supra from the
NEXIS hits, the Web references include “talking car alarm,” “talking
figures” (i.e., dolls), and “talking toys.”
4 For example, Reg. No. 2,173,870 for TALKING TOTS for “dolls”;
Reg. No. 2,005,341 for TALKING DISCOVERY DOODLER for “table top
electronic drawing and coloring toy with sound capability”; and Reg.
No. 1,330,167 for TALKING BOOKWORM and design for “phonograph records
or prerecorded audio tapes and children’s books sold as a unit for
reading development.”
Serial No. 75/121,820
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imagination is required to understand the significance of such
term in relation to such services.
It is well settled that a term is considered to be merely
descriptive of goods or services, within the meaning of Section
2(e)(1) of the Trademark Act, if it forthwith conveys
information concerning any significant ingredient, quality,
characteristic, feature, function, purpose or use of the goods
or services. See In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009
(Fed. Cir. 1987), and In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215, 217-18 (CCPA 1978). It is not necessary that
a term describe all of the properties or functions of the goods
or services in order for it to be considered to be merely
descriptive thereof; rather, it is sufficient if the term
describes a significant attribute or idea about them. Moreover,
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 those 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. See
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). Thus,
"[w]hether consumers could guess what the product [or service]
is from consideration of the mark alone is not the test." In re
American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
Serial No. 75/121,820
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However, a mark is suggestive if, when the goods or
services are encountered under the mark, a multistage reasoning
process, or the utilization of imagination, thought or
perception, is required in order to determine what attributes of
the goods or services the mark indicates. See, In re Abcor
Development Corp., supra at 218, and In re Mayer-Beaton Corp.,
223 USPQ 1347, 1349 (TTAB 1984). As has often been stated,
there is a thin line of demarcation between a suggestive mark
and a merely descriptive one, with the determination of which
category a mark falls into frequently being a difficult matter
involving a good measure of subjective judgment. See In re
Atavio, 25 USPQ2d 1361 (TTAB 1992) and In re TMS Corp. of the
Americas, 200 USPQ 57, 58 (TTAB 1978). The distinction,
furthermore, is often made on an intuitive basis rather than as
a result of precisely logical analysis susceptible of
articulation. See In re George Weston Ltd., 228 USPQ 57, 58
(TTAB 1985).
Although perhaps a close question, in the present case we
are constrained to agree with applicant that the term TALKING
CAR is suggestive rather than merely descriptive of its
services. While applicant’s services ultimately may be said to
permit a used car sitting out on the used car lot to “talk” to
the prospective customer, the term TALKING CAR does not
immediately, and without conjecture or speculation, indicate the
Serial No. 75/121,820
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purpose or function of applicant's services or forthwith convey,
with the requisite particularity, a significant feature or other
aspect of the services.
Applicant contends, and we agree, that we must consider
this mark as applied to these services. As seen in the recital,
these are information services directed to used car dealers –
not to the customer or prospective customer of the used
automobile.5 Unlike the analogies the Trademark Examining
Attorney has drawn to uses taken from NEXIS, Web and third-party
uses, the instant case does not involve a mark for the named
goods.
For example, in reviewing the evidence of record, “Talking
car alarm” (see footnote 3 supra) would have to be considered
highly descriptive, if not generic, for an automobile alarm
having a sensor that triggers a voice module. Similarly,
“Talking doll” is obviously generic for an entire category of
toy dolls. In fact, in most of the examples in the record where
the word “talking” is modifying a noun, it is being used in
reference to goods, not services. In the rare example of a
service mark having such a construction (e.g., “TALKING ADS and
design” for telemarketing services), the service involved is
5 In fact, there is no reason to assume that the prospective
customer of a used car would even be apprised of the involved service
mark when confronted with the audio playback unit.
Serial No. 75/121,820
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actually telephone advertising – the very term (in its shortened
form) being modified within the expression.
Similarly, applicant seems to concede that if one is
referring to goods in the nature of an automobile or auto
component having an electronic speech module or something else
akin to a talking voice, then “talking car” may well directly
and immediately describes a significant function of such goods.
The NEXIS examples placed into the record by the Trademark
Examining Attorney reflect a variety of ways in which this term
may well be used descriptively – whether it be a reference to a
well-known car in a movie, a TV series, or a clever television
ads, or used in connection with state-of-the-art vehicle
telematics. Hence, the record does show sufficiently broad
usage of this combined term as applied to automobiles, that if
the goods herein were cars or car components, we would probably
find this term to be merely descriptive. That is, we agree with
the Trademark Examining Attorney that even though most cars are
still not known to provide information about themselves by
emitting speech, we find that the composite mark, TALKING CAR,
no longer contains the requisite element of incongruity as
applied to a car which in fact “talks,” as to avoid the label of
“merely descriptive.”
Where applicant and the Trademark Examining Attorney
disagree is whether this matter remains merely descriptive under
Serial No. 75/121,820
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the Lanham Act when the same term is applied to applicant’s
services – services that ultimately do enable a used car to
provide information, in a talking voice, to potential
purchasers. The Trademark Examining Attorney takes the arguable
position that a significant feature of applicant’s services is
the information about the car that this recited service enables
the digital play-back unit attached to the window of a used car
to impart to potential purchasers of the used car, by “talking.”
Here we agree with applicant that some imagination is
required to connect applicant’s chosen mark with the benefits
applicant offers. Cf. Golden Door, Inc. v. Odisho, 646 F.2d
347, 208 USPQ 638 (9th Cir. 1980) [GOLDEN DOOR is suggestive of
health and beauty spa]; West & Company, Inc. v. Arica Institute,
Inc., 557 F.2d 338, 195 USPQ 466 (2nd Cir. 1977) [While the word
PSYCHOCALISTHENICS suggests a number of things about physical
exercises, it does not describe any one thing in particular, and
hence is suggestive]; In re HUNT, d.b.a. The Fontaine
Organization, 132 USPQ 564 (TTAB 1962) [MARRIAGE PROPONENTS
suggestive for prospective marriage partner services inasmuch as
applicant itself does not make marriage proposals]; In re Aid
Laboratories, Inc., 221 USPQ 1215, 1216 (TTAB 1983) [PEST PRUF
merely suggests a possible end result of the use of animal
shampoo having insecticide properties]; In re Frank J. Curran
Co., 189 USPQ 560 (TTAB 1975) [CLOTHES FRESH suggestive of an
Serial No. 75/121,820
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end result of the use of spray deodorant product for clothes];
and In re C. J. Webb, Inc., 182 USPQ 63, 64 (TTAB 1974)
[BRAKLEEN is suggestive of a desired result of a brake cleaner].
In the instant case, making this connection will involve a
multistage reasoning process, even on the part of relatively
knowledgeable and sophisticated purchasers. Accordingly, we
find that the term TALKING CAR is, at best, suggestive of the
end result of the use of applicant’s services rather than merely
descriptive of its services.
However, to the extent that there may be any doubt as to
our conclusion, we resolve such doubt, in accordance with the
Board’s practice, in favor of the publication of applicant’s
mark for opposition. See In re Aid Laboratories, Incorporated,
supra; In re Conductive Systems, Inc., 220 USPQ 84, 86 (TTAB
1983); In re Morton-Norwich Products, Inc., 209 USPQ 791 (TTAB
1981); and In re Gourmet Bakers, Inc., 173 USPQ 565 (TTAB 1972).
Decision: The refusal under Section 2(e)(1) is reversed.