Friday, August 28, 2015

Yet Another TTAB Test: Must "CLUB" Be Disclaimed for Vehicle Reservation Services?

The USPTO refused registration of the mark EMERALD CLUB for "reservation services for the rental and leasing of vehicles" (in class 39) because the applicant failed to comply with the requirement under Section 6(a) that it disclaim the word CLUB. The question, of course, was whether CLUB is merely descriptive of the recited services. Applicant argued that that the instant application should not be treated differently than its two registrations for related class 39 services, issued in 1988 and 1997, in which CLUB was not disclaimed in the term EMERALD CLUB. How do you think this came out? In re Vanguard Trademark Holdings USA LLC, Serial No. 85945488 (August 20, 2015) [not precedential].

Examining Attorney Gretta Yao relied on a dictionary definition of "club" as "“an organization that offers its subscribers certain benefits,as discounts, bonuses, or interest, in return for regular purchases or payments: a book club; a record club; a Christmas club." The Board agreed that "club" is merely descriptive of applicant's services: "as used in Applicant’s mark and in the context of the identified services, immediately informs consumers of a significant feature or characteristic of such services, namely, that the reservation services are provided as a benefit to members of a consumer loyalty program for vehicle rentals."

Applicant's website confirmed that it offers its identified reservation services as a benefit to members of its "Emerald Club." Third-party website evidence showed similar usage of "club" by Hertz, Avis, and Alamo.

Applicant claimed ownership of two registrations in class 39 - EMERALD CLUB for "automobile rental services" (issued in 1988) and EMERALD CLUB AISLE SERVICE (SERVICE disclaimed) for "automobile rental and reservation services" (issued in 1997) - without a disclaimer of CLUB. It argued that consistency required reversal of the subject refusal.

The Board, however, pointed out that applicant also owns four more recently-issued registrations for marks that included the words EMERALD CLUB for services in classes 35 and 39, in which CLUB is disclaimed. It further observed that trademarks are not "static," and that the eligibility of a mark for registration must be considered in light of the evidence that exists at the time registration is sought.

That CLUB is disclaimed in the more recently issued registrations, but not in the registrations that issued approximately 20 and 30 years ago for highly similar services, reflects recognition that consumer loyalty programs have evolved over the past few decades, including the rise of rental car clubs that offer many membership benefits, such as easier and quicker rental car reservations.

The disclaimer of CLUB in applicant's four most recent registrations supports a finding that the word has lost its source-identifying significance and is merely descriptive of the involved services.

And so the Board upheld the disclaimer requirement and affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: Do you think this case belongs in the WYHA Club?

Text Copyright John L. Welch 2015.


At 8:13 AM, Anonymous Anonymous said...

Makes sense.

At 9:56 AM, Anonymous Anonymous said...

They have the old registrations that show a long period of use. Should there not be some sort of exception to the disclaimer requirement for acquired distinctiveness?

Do they have any track record of abusing their prior registrations to attack anybody else using the word "club?"

Or is the bureaucracy simply doing its thing?

At 10:31 AM, Anonymous Anonymous said...

Oy. Complete waste of public and private resources. The ultimate answer is irrelevant (although it's obviously descriptive).

The real problem is that a win for Applicant would be meaningless as a practical matter. This mark will only be enforced and, independently, only successfully enforced around the EMERALD element.

Fighting over CLUB and spending taxpayer dollars to do so is a waste of time.

At 11:14 AM, Anonymous Carole Barrett said...

Great WYHA example.

At 2:26 PM, Anonymous Anonymous said...

@Anonymous-2 10:31 AM Inasmuch as the Trademark portion of the USPTO has been 100% fee funded since about 1983, guess it is the owners of U.S. trademark applications and registrations, including the members of the National Emerald Club, who are out any dollars on this one -- not the taxpayers.


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