TTAB Test: Is TRAILERSHARING Merely Desctiptive of Trailer Rental Services?

The USPTO refused registration of the marks TRAILERSHARING under Section 2(e)(1), finding it merely descriptive of trailer rental services. It refused registration of U-HAUL TRAILER SHARING, U-HAUL TRAILERSHARING, U-HAUL TRAILER SHARE and U-HAUL TRAILERSHARE without a disclaimer of the word TRAILERSHARE and variations thereof. On appeal, Applicant U-Haul argued that because its services are offered for a fee, the ordinary meaning of "sharing" does not apply, and thus the term is at most suggestive. How do you think this came out? In re U-Haul International, Inc., Serial Nos. 86757544, 86757575, 86757589, 86757631 and 86757635 (November 17, 2017) [not precedential] (Opinion by Judge Michael B. Adlin].

Examining Attorney Michael J. Souders relied on dictionary definitions of "trailer" (a nonmotorized vehicle designed to be pulled behind a motor vehicle) and "share" (to allow someone to use or enjoy something that one possesses), as well as on U-Haul's online statement that it "is built on a model of sharing, where customers move each rental from one area to another to be shared continuously." The term "sharing" is also used by others with other types of vehicle rental, like "car sharing" (Wikipedia: "Carsharing or car sharing … is a model of car rental where people rent cars for short periods of time, often by the hour."), "truck sharing," and "RV sharing."

The Board had no doubt that "trailer sharing" is merely descriptive of a quality, feature, function, characteristic or purpose of applicant's services. "Indeed, all forms of the term at issue – TRAILERSHARING, TRAILER SHARING, TRAILERSHARE, and TRAILER SHARE – convey that Applicant 'shares' or rents 'trailers.'"

Applicant contended that "sharing" means "to allow another to use's one's  possession as part of a non-financial arrangement." According to applicant, it is using the term "as a metaphor, suggesting a more informal, personal and non-pecuniary relationship, rather than describing a financial transaction."

The Board was unmoved. First, applicant's services "allow someone to use or enjoy [trailers] that [Applicant] possesses." That is the dictionary definition of "sharing." The definition makes no mention of whether a financial payment is involved. Second, applicant's position is belied by its own specimen of use, which has the heading "Trailer Sharing" and states that its services "are built on a model of sharing," but goes on to refer to rentals for fees and asserts that "[s]hared use of U-Haul trailers reduces the cost ...."  The Board pointed out that evidence of the context in which the mark is used is probative of the reaction of prospective purchasers.

Furthermore the record included numerous example of the use of "sharing" by the media and by third parties to describe vehicle rentals for money.

Third-party registration evidence as to the treatment of the word "share" was inconclusive. However,  even if some prior registrations have some characteristics similar to applicant's mark, the Board is not Bound by the actions of examining attorneys in other cases.

And so the Board affirmed the Section 2(e)(1) refusal of TRAILERSHARING, and allowed applicant 30 days within which to submit an appropriate disclaimer in the other four cases.

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TTABlog comment: So U-Haul will receive four registrations, but with everything other than U-Haul disclaimed in the marks. Was it worth it? Please share this post with your friends - for free.

Text Copyright John L. Welch 2017.