TTABlog Test: Is CARSCAN Merely Descriptive of Automobile Diagnostic Services?

The USPTO refused to register the proposed mark CARSCAN for "Automobile diagnostic services provided on-line, via a computer network and by telephone," finding it to be merely descriptive under Section 2(e)(1). Applicant Innova argued that CARSCAN is at most suggestive because it "could allude to a multitude of automotive inspection services wholly unrelated to diagnostics," such as a visual survey for dents or a physical smog check, and therefore does not describe its online and telephone diagnostic services with particularity. How do you think this appeal came out? In re Innova Electronics Corporation, Serial No. 97851338 (September 29, 2026) [not precedential] (Opinion by Judge Mark Lebow).

The problem with applicant's argument is that "the test is not whether the mark, viewed in the abstract, could refer to other automotive activities."

Someone who knows that the services are “automobile diagnostic services provided on-line, via a computer network and by telephone” will understand CARSCAN to convey that those diagnostic services involve scanning cars. DuoProSS, 695 F.3d at 1254. The mark need not describe every detail of the identification.

Innova claimed ownership of an existing registration for CARSCAN for "automotive diagnostic devices, including code readers and scan tools," which issued without a descriptiveness refusal. Irrelevant, said the Board. "Each application, however, must be decided on its own record. *** The ’892 Registration covers goods, not the services here, and it does not bind us on this record."

Finally, Innova argued that its use of the mark for more than 17 years for diagnostic goods, and the absence of other live CARSCAN registrations owned by third parties, demonstrate a strong association between Innova and those goods and related services. The Board pointed out, however, that Innova did not claim acquired distinctiveness under Section 2(f). "Evidence that consumers associate a term with a particular source, and evidence of length of use, goes to acquired distinctiveness, not inherent distinctiveness."

And so, the Board sustained the refusal.

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TTABlogger comment: Looks like Innova may want to file a new application with a Section 2(f) claim.

Text Copyright John L. Welch 2026.