Tuesday, November 18, 2008

TTAB Says "INTERNET AUTO RENT & SALES" Not Generic, But Merely Descriptive and Lacks Acquired Distinctiveness

In this TTAB triple header, the Board considered the issues of genericness, mere descriptiveness, and acquired distinctiveness in connection with the term INTERNET AUTO RENT & SALES for "retail store services featuring new and used vehicles" and "leasing and rental of new and used vehicles" [AUTO RENT & SALES disclaimed]. It answered no, yes, and no. In re Internet Auto Rent & Sales, Serial No. 76516353 (November 7, 2008) [not precedential].

Genericness: Ruling that the CAFC's American Fertility "phrase" test is controlling, the Board found no evidence that the public has used the phrase INTERNET AUTO RENT & SALES, and "almost no evidence that the public has even used the term INTERNET AUTO RENT." Quoting American Fertility:

"The Board cannot simply cite definitions and generic uses of the constituent terms of a mark, or in this case, a phrase within the mark, in lieu of conducting an inquiry into the meaning of the disputed phrase as a whole to hold a mark, or a phrase within ... the mark, generic."

The Board concluded that the PTO had not shown by clear evidence that the term INTERNET AUTO RENT & SALES is a generic term for the identified services.

Descriptiveness: Based on Applicant's own website, the Board found that INTERNET AUTO RENT & SALES is merely descriptive of the services. The website allows a user to request a quote and to fill out a credit application online, displays photos of available autos, and provides a coupon that offers "an additional $100 off your already low Internet price" if the customer asks for the "Internet department."

"Applicant is providing quotes, locating vehicles, and beginning the financing process on the Internet. Therefore, the term 'Internet' is at least merely descriptive of applicant's services that utilize the Internet."

Various Internet websites evidenced the use of the term "Internet Auto Sales," and other websites demonstrated that vehicles are rented and sold on the Internet by the same establishments.

Applicant feebly argued that "Internet" has multiple meanings and is a "completely random term" for its business. The Board, to the contrary, concluded that "Internet" has a "well-recognized meaning," one that consumers will understand as describing a key feature of Applicant's services. It was "convinced" that Applicant's mark merely describes Applicant's services "inasmuch as applicant's services include renting or selling automobiles and other vehicles through the use of the Internet."

Acquired Distinctiveness: Applicant claimed use of its mark since 1996, with more that $1 million in advertising expenditures and tens of millions of dollars in annual sales.

The Board noted that, for a "highly descriptive" term, five years of use is not, by itself, sufficient to show acquired distinctiveness. As to the advertising and sales figures, the Board was unable to determine "whether these activities have had any impact on purchasers." Increased sales may reflect the popularity of the product rather than recognition of the mark. In short, the evidence did not provide "any details about the success of its advertising to show that the purchasing public has come to recognize applicant's term as a trademark/service mark for its services."

Conclusion: The Board affirmed the refusal to register under Section 2(e)(1), affirmed the rejection of Applicant's 2(f) evidence as insufficient, and reversed the genericness refusal. It then granted Applicant's conditional amendment to the Supplemental Register.

Text Copyright John L. Welch 2008.


Post a Comment

<< Home