Templeton and Rodgers

Trademark Trial and Appeal Board

Dec 21, 2004

No. 75544444 (T.T.A.B. Dec. 21, 2004)

Mailed: December 21, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Templeton and Rodgers
________
Serial No. 75544444
_______
James Phillip Chandler of The Chandler Law Firm for
Templeton and Rodgers.
Robert Coggins, Trademark Examining Attorney, Law Office
115 (Tomas Vlcek, Managing Attorney).
_______
Before Hohein, Chapman and Drost, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
On August 28, 1998, Templeton and Rodgers (a Virginia
joint venture -- composed of C. Stephen Templeton and
Kenneth D. Rodgers, both U.S citizens) filed an application
to register the phrase ONE PRICE BUYING on the Principal
Register for goods in International Class 16 which were
ultimately amended to read as follows:
“paper, namely, writing paper, memo
paper and bond paper; cardboard;
printed matter, namely, books,
magazines, brochures and pamphlets in
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 75544444
2
the field of marketing of goods; cloth,
tape and wire for bookbinding;
unmounted and mounted photographs;
stationery; instructional and teaching
materials in the field of marketing of
goods; plastic materials for packaging
goods, namely, bubble packs.”
The application was filed based on Section 1(a) of the
Trademark Act, 15 U.S.C. §1051(a), with applicant claiming
a date of first use anywhere and first use in commerce of
June 1996. During the course of the examination of the
application, applicant amended the basis of its application
to Section 1(b), 15 U.S.C. §1051(b), with applicant
asserting a bona fide intention to use the mark in commerce
on the involved goods. (See applicant’s responses dated
September 13, 1999 and August 7, 2000.) Applicant has
voluntarily disclaimed the words “ONE PRICE.” See Section
6(a) of the Trademark Act, 15 U.S.C. §1056(a).
The Examining Attorney refused to register the mark as
merely descriptive of applicant’s goods under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1).
When the refusal to register was made final, applicant
appealed to the Board. Both applicant and the Examining
Attorney have filed briefs; an oral hearing was not
requested.
The Examining Attorney contends that the proposed mark
merely describes a significant feature of applicant’s
Ser. No. 75544444
3
identified goods, specifically their purpose and subject
matter, particularly in relation to the items “printed
matter, namely, books, magazines, brochures and pamphlets
in the field of marketing of goods,” and “instructional and
teaching materials in the field of marketing of goods. He
further argues as follows (brief, p. 7):
The facts of this case demonstrate that
the proposed mark ONE PRICE BUYING,
when used in connection with the
applicant’s goods, will be understood
by the relevant class of purchasers to
merely describe the goods. The
proposed mark ONE PRICE BUYING
describes the subject matter of the
applicant’s books, magazines,
brochures, pamphlets, and instructional
and teaching materials in the field of
marketing of goods; and describes a
feature of the other goods, namely
their use in marketing or selling goods
at a single price.
In support thereof, the Examining Attorney made of
record the following definitions from The American Heritage
Dictionary (Third Edition 1992):
(1) one adjective 1. Being a single
entity, unit, object, or living
being; not two or more…;
(2) price noun 1. The amount as of
money or goods, asked or given in
exchange for something else. 2.
The cost at which something is
obtained…; and
(3) buy verb … buying 1. To acquire
in exchange for money or its
equivalent… .
Ser. No. 75544444
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The Examining Attorney also made of record (i) copies
of several excerpted stories retrieved from the Nexis
database, (ii) printouts of pages from a few web sites, and
(iii) printouts of the first few pages of the results of
his search on the Google search engine of “one price
buying,” all to show that “one price buying” is used in
marketing to refer to the purchase of goods sold at a
single, non-negotiable price. Examples of these materials
are reproduced below:
Headline: It’s Xmas: Must Be Pizza; The
Domino’s Driver May Be America’s New
Holiday Symbol
…People buy Saturns because of the
savings gained from one-price buying, but
end up paying 26 percent above invoice
price -- compared with the 8 percent paid
by those poor slobs who negotiate. …
“Dallas Observer,” November 30, 2000;
Headline: Ford Dealership in Salt Lake
City Holds Its Own Amid Auto Collection
…Butterfield argues that the Auto
Collections are built on flawed
reasoning: the notion that vehicle
shoppers prefer one-price buying. The
Utah Auto Collection does not negotiate
vehicle price and will retain that
policy, Roberts, said. … “Automotive
News,” June 14, 1999;
Headline: Down But Not Out, A Report On 2
Small Station Wagons
…When the current generation Escort was
launched in 1991, Ford soon hit upon a
marketing strategy, which sold thousands
of Escorts in all its body styles: one-
price buying. This allowed the consumer
to buy any of the five Escort body styles
Ser. No. 75544444
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with a decent level of equipment for one
price. … “The Des Moines Register,”
December 3, 1995;
Headline: The New Sales Pitch: Dealers
Don’t Buy All These New Ways To Sell Cars
…A survey of 1,253 prospective auto
buyers released in February by the
Glendale, Calif., research company
Dohring Co. said 40 percent of auto
buyers now prefer one-price buying, up
from 33 percent a year earlier. However,
78 percent said they had negotiated the
price of their most recent purchase,
suggesting that haggling is still the
norm. … , “Crain’s Detroit Business,”
August 25, 1997;
Headline: IBP Says New Law Likely To
Produce One-Price Buying
Depending on the Nebraska attorney
general’s interpretation of a new law,
meatpacking giant IBP Inc. may soon
change the way it buys hogs in this
state. … Packers said the one-price
policy was needed to fend off potential
lawsuits. … “Omaha World-Herald,” July
11, 1999;
CarSuperStore-com
An open letter from Dan Perkins:
…That’s why we are changing to ONE PRICE
buying at Dan Perkins Chevrolet-Geo, Dan
Perkins, Subaru, Saturn…
www.carsuperstore.com;
NMMA Boating Statistics, Challenges,
Opportunities
Growth = Better Selling, Marketing
…One of the most surprising findings of
the research was the interest of boat
buyers to negotiate price rather than be
offered a “one-price” system. This is
not to say buyers want to haggle, but
there is a perception that a negotiated
price will be lower than a fixed one. …
Despite all the positives attributed to
Ser. No. 75544444
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“one price” buying, a recent study of
“baby boomer” car buyers indicated that
55 percent still prefer to negotiate
price.
63.236.237/facts/boatingstats/challenges/
growth.html; and
TEMPLETON
The Regional Dodge-Olds Superstore
8598 Leesburg Pike Tysons Corner, Va.1
…website: http//www.onepricebuying.com
One Price Buying
…Maybe you’ve seen it in the paper or on
TV, we have an entirely different way of
selling cars … … ONE PRICE BUYING. … And
it’s the same ONE LOW PRICE whether
you’re the bank president, the bank
manager, or a single mother of two. …
www.fairfaxguide.com/templetondodgeoldsmo
bile.html.
In addition, the Examining Attorney refers to
applicant’s use of the phrase ONE PRICE BUYING as shown on
the specimens it filed with the application (although the
application is now based on applicant’s assertion of a bona
fide intention to use the mark in commerce on the
identified goods). The specimens are four separate
advertisements, three of which are for a Templeton Dodge-
Oldsmobile auto dealership (at Tysons Corner, Virginia),
and one is for a Ken Rodgers’ Ford dealership in Corinth,
Mississippi.
1 The above is the same address as applicant lists in its
involved application Serial No. 75544444.
Ser. No. 75544444
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Finally, the record includes the following request for
information pursuant to Trademark Rule 2.61(b) by the
Examining Attorney (Office action dated February 6, 2001,
p. 2):
“To permit proper consideration of this
application, the applicant must submit
information as to whether any of its
identified goods will be associated
with the marketing or selling of
automobiles.”
Applicant’s response includes the following
(applicant’s August 6, 2001 response, p. 2):
“The mark ‘ONE PRICE BUYING’ is
arbitrary and not descriptive of any
particular articles in commerce. The
term is not associated with any
particular goods including
automobiles.”
Applicant urges reversal, arguing that the mark must
be viewed in its entirety, not as three separate words;
that when so viewed, this combination of words is
suggestive rather than descriptive; that the words do not
immediately convey information about applicant’s goods, but
rather consumers would have to use imagination to “reach a
certain conclusion” (brief, p. 4); that the phrase “ONE
PRICE BUYING” is not descriptive of applicant’s identified
goods, and the Examining Attorney has not established “any
contextual link of the phrase to the class of goods for
which registration is sought” (brief, pp. 7-8); that the
Ser. No. 75544444
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mark is wholly arbitrary with regard to the identified
International Class 16 goods; that a registration issued to
applicant would not preclude competitors “from describing
their paper, printed material and other products for what
they are” (brief, p. 10); and that doubt is resolved in
applicant’s favor.
Applicant specifically argues as follows (brief, pp.
5-6):
This refusal is based on incorrect and
conclusory remarks by the examiner.
First, the examiner incorrectly states
that ONE PRICE BUYING refers to the
sale of goods at a single non-
negotiable price. Second, the examiner
incorrectly concludes that “it is
reasonable to assume that the printed
matter will contain information on one
price buying” and that “in such an
event the mark is descriptive of the
subject matter of the goods.” It is
submitted that it is not reasonable to
draw such a conclusion. There is no
evidence tendered toward this
supposition. The examiner’s response
is conclusory and as such, an
inadequate basis for a final refusal to
register the proposed mark.
The test for determining whether a term or phrase is
merely descriptive is whether the term or phrase
immediately conveys information concerning a significant
quality, characteristic, function, ingredient, attribute or
feature of the product or service in connection with which
it is used or is intended to be used. See In re Nett
Ser. No. 75544444
9
Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir.
2001); In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215 (CCPA 1978); In re Eden Foods Inc. 24 USPQ2d 1757
(TTAB 1992); and In re Bright-Crest, Ltd., 204 USPQ 591
(TTAB 1979).
Further, it is well-established that the determination
of mere descriptiveness must be made not in the abstract or
on the basis of guesswork, but in relation to the goods or
services for which registration is sought, the context in
which the term or phrase is being used or is intended to be
used on or in connection with those goods or services, and
the impact that it is likely to make on the average
purchaser of such goods or services. See In re
Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB 1995); and In
re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991).
Consequently, “[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). Rather, the question is
whether someone who knows what the goods or services are
will understand the term or phrase to convey information
about them. See In re Home Builders Association of
Greenville, 18 USPQ2d 1313 (TTAB 1990).
Ser. No. 75544444
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A term or phrase need not be merely descriptive of
every recited item in the identification of goods (or
services). Rather, the term or phrase is properly refused
registration as merely descriptive if it is merely
descriptive of any of the identified goods (or services).
See In re Quik-Print Copy Shop, Inc., 616 F.2d 523, 205
USPQ 505 (CCPA 1980); and In re Patent & Trademark Services
Inc., 49 USPQ2d 1537 (TTAB 1998).
In this case, the Examining Attorney has met the
burden of establishing a prima facie case of mere
descriptiveness, particularly with respect to the phrase
“one price buying” in relation to those of applicant’s
goods identified as “printed matter, namely, books,
magazines, brochures and pamphlets in the field of
marketing of goods” and “instructional and teaching
materials in the field of marketing of goods.” In fact,
this record includes ample evidence that in the context of
those particular goods, the phrase is merely descriptive
and would be so understood by purchasers of applicant’s
goods, as well as by people in the marketing and
advertising trade or industry. See e.g., references to
“one price buying” in general circulation publications as
well as in advertising/marketing trade publications; uses
of the phrase on several third-party websites; and
Ser. No. 75544444
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applicant’s own use of the phrase as shown on its website
and in the specimens originally submitted with its
application.
The phrase ONE PRICE BUYING, considered as a whole,
when used on applicant’s goods (particularly those goods
specifically relating to the field of marketing), is merely
descriptive of a significant feature thereof -- the
marketing of goods via a single, non-negotiable price. In
applicant’s own words ONE PRICE BUYING relates to a single
price -- “No haggling. No games. No hassle.” (from its
website), and “We won’t waste your time or your money. Now
just pick the car or truck you want and get the lowest
possible price from the start. No negotiating. No
haggling. No games.” (from its specimens).2
We find that the purchasing public would readily
understand, without imagination or conjecture, that the
phrase ONE PRICE BUYING refers to the marketing and selling
of goods at a single, fixed price; and they would certainly
2 We note with respect to the question asked by the Examining
Attorney as to whether applicant’s International Class 16 goods
will be associated with the marketing or selling of automobiles,
applicant answered the question, but applicant did so in an
evasive, disingenuous manner, stating that “the term is not
associated with any particular goods including automobiles.” To
the extent that applicant, however, was asserting that the term
is not associated solely with the automobile industry, we agree
that the record before us shows that such is true inasmuch as the
phrase ONE PRICE BUYING is a general marketing concept used in
several industries.
Ser. No. 75544444
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understand the phrase to mean that in relation to
applicant’s printed publications and instructional
materials which are identified as being in the field of
marketing of goods.
Applicant argues that the Examining Attorney’s
conclusions that applicant’s printed matter and
instructional materials will contain information on “one
price buying” and thus that the phrase is merely
descriptive of the subject matter of these publications
which relate to marketing of goods are unsupported and
unreasonable. We do not agree. Applicant had the
opportunity to clearly explain what these goods will or
will not entail, and it opted not to clarify the record
with regard thereto. Not only was applicant’s response to
the Examining Attorney’s inquiry about the goods nebulous
in nature, but also, applicant did not expressly deny that
its involved goods will be about “one price buying.” Thus,
we find it reasonable to conclude that applicant’s printed
materials and instructional materials in the field of
marketing of goods will involve the marketing concept of
“one price buying” as the literal subject matter thereof --
whether used in training applicant’s employees in
applicant’s apparent car dealership, or as marketing to
consumers on the showroom floor. Because the marketing
Ser. No. 75544444
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concept of “one price buying” will be the subject matter of
applicant’s printed materials, it is merely descriptive of
those goods. See In re National Recreation Assn., Inc.,
181 F.2d 221, 85 USPQ 281 (CCPA 1950); In re Waverly Inc.,
27 USPQ2d 1620 (TTAB 1993); In re Gracious Lady Service,
Inc., 175 USPQ 380 (TTAB 1972); and In re Nippon Kokan
Kabushiki Kaisha, 171 USPQ 63 (TTAB 1971).
Applicant’s reliance on the case of In re Dial-A-
Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807
(Fed. Cir. 2001), for the proposition that “the board
cannot simply cite definitions and generic uses of the
constituent terms of a mark; it must conduct an inquiry
into the meaning of the disputed phrase as a whole” (brief,
p. 7) is misplaced in the context of the case now before
us. The portion of the Court’s decision quoted by
applicant relates to the Court’s discussion of whether the
term involved therein (1-888-M-A-T-R-E-S-S) was generic.
In the application now before the Board, the Examining
Attorney has refused registration on the basis of mere
descriptiveness, not genericness.
Based on the record, we find that the phrase ONE PRICE
BUYING, when used on the involved goods (particularly the
printed matter and instructional materials relating to the
field of marketing of goods), immediately conveys to the
Ser. No. 75544444
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purchasing public the idea of the marketing feature of a
set, non-negotiable price. See In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Omaha National
Corporation, 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987);
In re Intelligent Instrumentation Inc., 40 USPQ2d 1792
(TTAB 1996); In re Time Solutions, Inc., 33 USPQ2d 1156
(TTAB 1994); and In re Copytele Inc., 31 USPQ2d 1540 (TTAB
1994).
Decision: The refusal to register on the ground that
the mark is merely descriptive under Section 2(e)(1) is
affirmed.