AEW, Inc.

Trademark Trial and Appeal Board

May 7, 1999

No. 74447347 (T.T.A.B. May. 7, 1999)

Paper No. 16
CEW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MAY 7, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re AEW, Inc.
___________
Serial No. 74/447,347
___________
John K. Donaghy, Esq., attorney for applicant.
Peter Cataldo, Trademark Examining Attorney, Law Office 103
(Michael Szoke, Managing Attorney).
____________
Before Hohein, Walters and Chapman, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
AEW, Inc. has filed a service mark application to
register on the Principal Register the mark shown below for
“retail auto parts stores.”1

1 Serial No. 74/447,347, in International Class 42, filed October 15,
1993, based on use of the mark in commerce, alleging dates of first use
as of June 20, 1961, and first use in commerce as of June 3, 1963.
This is an application to register as a concurrent user. Should the
issues on appeal herein be determined ultimately in favor of applicant,
the concurrent use issue will be addressed following the close of the
opposition period, if no oppositions are filed, or following the
dismissal of any oppositions that may be filed. See, Trademark Rule
2.99, 37 CFR 2.99. The application also includes the seemingly
inconsistent statements “the lining in the drawing is a feature of the
mark” and “the color blue is intended by the lining.” Should the
issues on appeal herein be determined ultimately in favor of applicant,
Serial No. 74/447,347
2
The Trademark Examining Attorney initially required,
under Section 6 of the Trademark Act, 15 U.S.C. 1056, a
disclaimer of DISCOUNT AUTO PARTS STORES apart from the
mark as a whole on the ground, under Section 2(e)(1) of the
Trademark Act, 15 U.S.C. 1052(e)(1), that this portion of
applicant’s mark is merely descriptive in connection with
its services. Subsequently, applicant claimed that the
DISCOUNT AUTO PARTS STORES portion of its applied-for mark
has acquired distinctiveness under Section 2(f) of the
Trademark Act, 15 U.S.C. 1052(f). In support of its claim,
applicant submitted the declaration of David Burmeister,
comptroller of applicant, attesting to advertising and
promotional expenditures in connection with the mark.
Additionally, applicant submitted samples of its
advertising materials.
The Trademark Examining Attorney has finally required
a disclaimer of the DISCOUNT AUTO PARTS STORES portion of
applicant’s applied-for mark, under Section 6 of the

this inconsistency should be resolved in order for this application to
be otherwise in condition for publication.
Serial No. 74/447,347
3
Trademark Act, 15 U.S.C. 1056, on the ground, under Section
2(e)(1) of the Trademark Act, 15 U.S.C. 1052(e)(1), that
this portion of applicant’s mark, when used in connection
with retail auto parts store services, is generic and,
thus, incapable of a source-identifying function as part of
the applied-for mark. The Examining Attorney rejected
applicant’s Section 2(f) claim of acquired distinctiveness,
and evidence in support thereof, on the ground that because
DISCOUNT AUTO PARTS STORES is generic, no amount of
evidence is sufficient to establish acquired
distinctiveness thereof. Applicant has appealed. Both
applicant and the Examining Attorney have filed briefs, but
an oral hearing was not requested.
The issues before us are whether the DISCOUNT AUTO
PARTS STORES portion of applicant’s mark, when used in
connection with retail auto parts store services, is
generic,2 or, if not generic, whether, under Section 2(f),
the DISCOUNT AUTO PARTS STORES portion of applicant’s mark
has acquired distinctiveness.3

2 If generic, this portion of applicant’s mark is considered incapable
of indicating source and cannot attain trademark significance. See, In
re Merrill Lynch, Pierce, Fenner, and Smith, Inc., 828 F.2d 1567, 4
USPQ2d 1141 (Fed. Cir. 1987).
3 Because applicant amended its application to assert a claim of
acquired distinctiveness, under Section 2(f), in relation to the
DISCOUNT AUTO PARTS STORES portion of its mark, applicant has conceded
this portion of the mark to be merely descriptive. Thus, if not
generic, the only question is whether it is registrable on the basis of
Serial No. 74/447,347
4
Genericness
We turn, first, to the issue of genericness. The
Examining Attorney contends that the identification of
services and the evidence made of record by applicant
clearly establish that “applicant’s retail stores make
available auto parts at a discount [and] [i]t is difficult
to imagine a more succinct expression to describe such
services than ‘discount auto parts stores.’” In other
words, the Examining Attorney states that “discount auto
parts stores” identifies the central characteristic of
applicant’s services. The Examining Attorney contends,
further, that excerpts in the record of articles from the
LEXIS/NEXIS database “demonstrate that in the auto parts
business, the term ‘discount auto parts stores’ is used as
the commonly accepted term to identify stores that sell
auto parts at a discount [and that] the term ‘discount auto
parts stores’ is recognized by the relevant consuming
public to be a generic term as applied to such stores ….”
The following are several examples of these excerpts from
the LEXIS/NEXIS database:
“I bought … at discount auto parts stores – and a
buck or so more at hardware stores.” Chicago
Tribune, May 10, 1992.

acquired distinctiveness. See, In re Leatherman Tool Group Inc., 32
USPQ2d 1443 (TTAB 1994).
Serial No. 74/447,347
5
Trak Auto Corp., which operates more than 100
discount auto parts stores in the Los Angeles
area …” The Washington Times, May 6, 1992.
“… E.P.B. had done the oil change, lube and
service himself, and even if he had bought
everything he needed at a discount auto-parts
store, it would have cost him about $38.95.”
Newsday, January 15, 1994.
“ADAP operates about 70 discount auto parts
stores in the Northeast and employs about 800
people system-wide.” The Boston Globe, September
30, 1988.
The Examining Attorney also submitted several third
party registrations of marks containing, respectively, the
disclaimed terms “discount auto stores,” “discount auto
parts,” “auto parts,” and “auto parts stores” for auto
parts, auto parts stores and related services.4
Applicant states, in its brief, that, since 1963 it
has used the names “Discount Auto Parts Stores” and “DAPS
Discount Auto Parts Stores” in connection with its chain of
fourteen auto parts stores; that DAPS is an acronym for
“Discount Auto Parts Stores”; that the mark is prominently
displayed on its store fronts; and that it “has expended
large sums of money in advertising the trade names
‘Discount Auto Parts Stores’ and its acronym ‘DAPS,’ and in
acquainting the members of the public with the services and

4 We have not considered these registrations as evidence of use of the
registered marks.
Serial No. 74/447,347
6
business presently owned by the Applicant.” Applicant
contends the following:
The terms “Discount,” “Auto,” “Parts” are each
descriptive of the characteristics or qualities
of Applicant’s goods or services. Even if one or
more of the words “Discount,” “Auto,” “Parts” and
“Stores” could be classified as generic when used
alone, the terms as combined result in a
combination of terms that is at most descriptive
of Applicant’s services and entitled to
protection by virtue of the secondary meaning
which Applicant’s name or mark has acquired in
the Marketing Area.
Applicant contends, further, that the Examining Attorney
has not demonstrated that the term “discount auto parts
stores” is the name of a class of services or that it would
be so recognized by the relevant public; and that any doubt
on the issue of genericness should be resolved in
applicant’s favor.
The critical issue in genericness cases is whether
members of the relevant public principally use or
understand the term sought to be registered to refer to the
category or class of goods or services in question. In re
Recorded Books, Inc., 42 USPQ2d 1275 (TTAB 1997); and In re
Women’s Publishing Co. Inc., 23 USPQ2d 1876, 1877 (TTAB
1992). Our primary reviewing court has set forth a two-
step inquiry to determine whether a mark is generic:
First, what is the category or class of goods or services
at issue? Second, is the term sought to be registered
Serial No. 74/447,347
7
understood by the relevant public primarily to refer to
that category or class of goods or services? H. Marvin
Ginn Corporation v. International Association of Fire
Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir.
1986). With respect to genericness, the Office has the
burden of proving genericness by “clear evidence” thereof.
In re Merrill, Lynch, Pierce, Fenner & Smith, Inc., 828
F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987).
The evidence submitted by both the Examining Attorney
and applicant supports the conclusion that the principal
category of services involved herein is auto parts stores;
and that a sub-category of these services is auto parts
stores offering auto parts at a discount. Certainly,
applicant does not dispute the first part of our conclusion
regarding the principal category of services, as applicant
uses the phrase “auto parts stores” to identify its
services in the application. We find that the record
clearly supports the further conclusion that the composite
phrase, “discount auto parts stores,” is a recognized
generic equivalent of the sub-category of auto parts stores
offering auto parts at a discount.
Additionally, the evidence of record supports the
conclusion that the relevant public, which here is the
general purchasing public, primarily understands the
Serial No. 74/447,347
8
DISCOUNT AUTO PARTS STORES portion of the applied-for mark
to refer to retail auto parts stores offering auto parts at
a discount, rather than primarily viewing this designation
as an indication of a single source of these services.
In making this determination, we have taken into
consideration all evidence of record pertinent to the
public perception of the designation, including any
evidence submitted in connection with applicant’s claim of
acquired distinctiveness. See, In re Recorded Books, Inc.,
supra at 1282; and In re Paint Products Co., 8 USPQ2d 1863,
1866 (TTAB 1988). The evidence establishes that the
relevant public will understand the phrase “discount auto
parts stores” in its generic sense when considered in
connection with applicant’s identified services,
notwithstanding applicant’s contentions otherwise, the
length of applicant’s use of its mark, or its advertising
in connection therewith. Contrary to applicant’s
contention, we find nothing incongruous in applicant’s
combination of these common generic terms in the applied-
for mark when considered in connection with applicant’s
services. Applicant has done no more than combine generic
terms that are individually applicable to its services.
The combination creates no different commercial impression;
the generic meaning is not lost. Thus, the composite
Serial No. 74/447,347
9
designation is likewise generic. See, In re Gould Paper
Corp., 5 USPQ2d 1110 (Fed. Cir. 1987).
Applicant has introduced no evidence which might
contradict the conclusion that “discount auto parts stores”
is a generic descriptor of the nature of applicant’s
services. In fact, applicant’s own radio advertising
submitted in connection with its claim of acquired
distinctiveness demonstrates use of the phrase “discount
auto parts stores” in a generic, rather than source
identifying, manner. Excerpts from several transcripts of
its radio advertisements follow:
RIGHT NOW DURING THE THIRD ANNIVERSARY AT DAPS
YOUR ORIGINAL DISCOUNT AUTO PARTS STORE, STP
SINGLE OIL FILTERS ARE AS LOW AS … SO COME IN
TODAY BECAUSE STP IS THE EDGE AT DAPS … THE
ORIGINAL DISCOUNT AUTO PARTS STORE ON RACETRACK
ROAD … . [WMMK 92, 3/16/89.]
D.A.P.S. ON RACETRACK ROAD IS CELEBRATING THEIR
3RD ANNIVERSARY .. AND TO CELEBRATE, THEY’VE GOT
SPECIALS THROUGHOUT THE STORE. … D.A.P.S., THE
ORIGINAL DISCOUNT AUTO PARTS STORE, RACETRACK
ROAD. [WMMK 92, 2/22/89.]
… YOU WON’T FIND A PRICE THIS LOW ANYWHERE ELSE
BUT DAPS BECAUSE DAPS IS DISCOUNT AUTO PARTS
STORE … . [WWL 870 AM, 7/1/93.]
… DAPS IS THE PLACE TO GET STARTED. … AND DAPS
SALESPEOPLE KNOW THEIR STUFF AND SPEAK YOUR
LANGUAGE. SO GET GOIN’ AT YOUR LOCAL DAPS AUTO
PARTS. [WKRG TV, 9/17/91.]
… GET A HOLLEY ‘PERFORMANCE’ CARBURETOR AT ‘DAPS’
AUTO PARTS … THE ORIGINAL DISCOUNT AUTO PARTS
STORES SINCE 1963. [WTKX FM, 12/19 – 29/94.]
Serial No. 74/447,347
10
Applicant appears to argue, simply, that its long
use and evidence of acquired distinctiveness outweigh
the evidence relied upon by the Examining Attorney in
support of the genericness refusal. We have fully
considered this evidence. However, when, as in this
case, we have found that the evidence as a whole
establishes that the matter in question is primarily
perceived by the purchasing public as a generic
reference, any de facto secondary meaning that the
designation may have acquired cannot render the
designation registrable. See, In re Recorded Books,
supra at 1281, and the cases cited therein.
Applicant’s evidence is insufficient to establish that
the purchasing public views the phrase “discount auto
parts stores” as an indication of source. Rather, the
Examining Attorney has met his burden of proof by the
introduction of clear evidence that the public
perception of “discount auto parts stores” is as a
generic descriptor for retail auto parts store
services.
Accordingly, we find the DISCOUNT AUTO PARTS STORES
portion of applicant’s applied-for mark to be generic when
considered in connection with the identified services. As
Serial No. 74/447,347
11
such, this phrase is incapable of identifying and
distinguishing applicant’s services from those of others.
Acquired Distinctiveness
In order to render a complete opinion, we address the
question of whether the DISCOUNT AUTO PARTS STORES portion
of applicant’s mark, if ultimately determined not to be
generic, has acquired distinctiveness. In this regard, we
find that applicant’s evidence under Section 2(f) is
insufficient to establish that the relevant portion of its
applied-for mark has acquired distinctiveness in connection
with the identified services. Applicant has provided a
declaration indicating applicant’s general promotional
efforts and advertising figures, along with several copies
of newspaper advertisements and transcripts of radio
advertisements. However, applicant has not provided any
evidence specifically addressing the amount of sales in
connection with the mark or the relevant portion herein.
Nor has applicant provided any evidence in connection with
consumer perception of the relevant portion of the mark.
Applicant’s evidence in connection with the extent of
expenditures and promotion are indicative only of
applicant’s attempts to develop distinctiveness, rather
than the achievement of the same. See, e.g., In re
Recorded Books, Inc., supra at 1282.
Serial No. 74/447,347
12
In view of the highly descriptive nature of the phrase
“discount auto parts stores,” the evidence of record is
insufficient to establish that the DISCOUNT AUTO PARTS
STORES portion of the applied-for mark has acquired
distinctiveness in connection with retail auto parts
stores.
Decision: The requirement for a disclaimer of the
DISCOUNT AUTO PARTS STORES portion of the mark herein on
the ground that this phrase is generic in connection with
the identified services is affirmed.
Alternatively, if the DISCOUNT AUTO PARTS STORES
portion of the mark herein is not generic but is merely
descriptive in connection with the identified services, the
disclaimer requirement is affirmed inasmuch as applicant’s
claim under Section 2(f) is insufficient evidence of
acquired distinctiveness thereof.
Serial No. 74/447,347
13
In accordance with Trademark Rule 2.142(g), this
decision will be set aside and this application will be
returned to the Examining Attorney to place in condition
for publication for opposition5 if applicant, no more than
thirty days from the mailing date of this decision, submits
an appropriate disclaimer of DISCOUNT AUTO PARTS STORES.
G. D. Hohein
C. E. Walters
B. A. Chapman
Administrative Trademark Judges,
Trademark Trial and Appeal Board

5 Should applicant decide to comply with this requirement and this
decision is set aside, prior to publication the Examining Attorney may
wish to obtain from applicant a clarification of the lining and color
statements as noted herein.