Wednesday, December 07, 2011

Test Your TTAB Judge-Ability: Is This Descriptive Mark Sufficiently Stylized To Merit a Principal Registration?

I understand that the TTAB is looking to hire another Administrative Trademark Judge. Here's a chance to prove you've got what it takes. This applicant sought to register the mark shown immediately below for "car auction services" [AUCTION SERVICES disclaimed]. The Examining Attorney refused registration under Section 2(e)(1) on the ground of mere descriptiveness. On appeal, Applicant narrowed the issue to whether the stylization of the mark is "sufficient striking, unique or distinctive so as to create a commercial impression separate and apart from the unregistrable components of the mark." In other words, with all the words disclaimed, is this mark sufficiently stylized to merit a Principal Registration? In re Kar Auction Services, Inc., Serial No. 77852072 (December 1, 2011) [not precedential].

The Board observed that the question at hand is, by nature, fact-specific. Third-party registrations and/or rejected third-party applications carry little weight.

Applicant relied on the Board's decisions on the four marks depicted below, but the Board distinguished the last two cases on their facts:

Applicant also relied on the "IT BAG case" [TTABlogged here]:

The Examining Attorney submitted examples of marks whose refusal was affirmed by the Board:

From these examples, the Board noted, it is evident that the determination at hand is "fact specific and somewhat subjective," and further observing that "[a]s the design aspect decreases it becomes more difficult to discern where to draw the line."

Here, the separation of K and R in Applicant's mark "creates a structural space that given the word KAR a logo/design feel." This differs from the examples cited by the Examining Attorney, in which the words are merely written in a different font.

Overall, we find that the stylization and presentation of applicant’s mark falls more closely within the boundaries of the examples where the presentation of the marks was found to create a separate commercial impression.

And so the Board affirmed the refusal to register on the mere descriptiveness ground, absnet a disclaimer; it gave Applicant thirty days to submit a disclaimer of CAR AUCTION SERVICES, in which case this decision will be set aside.

TTABlog comment: Well, how did you do? Are you TTAB material?

Text Copyright John L. Welch 2011.


At 12:17 PM, Anonymous Anonymous said...

Disclaimers can be strange. So why do they have to disclaim "car" when it is not even a part of the mark?

At 12:22 PM, Anonymous Anonymous said...

I think Applicant got off to a bad start and made a mistake by including "AUCTION SERVICES" as part of its mark. I try to avoid including descriptive or generic words if they are unnecessary. Especially when the words in the mark are the same as the services in the ID.
If they had just started with the logo alone, I suspect the examiner would have approved this with a disclaimer of "car."


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