Americar Rental System, Inc.v.North American Warranty Service, Inc.

Trademark Trial and Appeal Board

Sep 11, 1998

No. 91103022 (T.T.A.B. Sep. 11, 1998)

Hearing: Paper No. 13
December 10, 1997 RFC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB SEPT 11, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Americar Rental System, Inc.
v.
North American Warranty Service, Inc.
_____
Opposition No. 103,022
to application Serial No. 74/75/002976
filed on October 10, 1995
_____
Bruce Tassan of Jackson & Kelly for Americar Rental System,
Inc.
Lillian Miller of Mayer, Brown & Platt for North American
Warranty Services, Inc.
______
Before Cissel, Quinn and Hohein, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
Based on its assertion that it possessed a bona fide
intention to use the mark “AMERICARE” in commerce in
connection with the services of “providing extended
automotive warranties,” in Class 36, applicant filed the
above-referenced application to register its mark on the
Principal Register. Following publication in the Official
Opposition No. 103,022
2
Gazette, a timely Notice of Opposition was filed on August
19, 1996 by Americar Rental System, Inc.
As grounds for opposition, opposer alleged that it is
the owner of the mark “AMERICAR” for valet airport parking
services and automobile cleaning services, automobile
renting and leasing services and limousine services, and
automobile dealership services; that opposer or its
predecessors in interest have used the mark since 1963; that
opposer owns Registration Numbers 800,0091 and 1,050,5372
for the mark “AMERICAR” in connection with the services
listed above; and that applicant’s mark, if used in
connection with the services set forth in the application,
would so resemble opposer’s mark that confusion would be
likely. Applicant denied the salient allegations pleaded by
opposer.
A trial was conducted in accordance with the Trademark
Rules of Practice. Opposer introduced the testimony, with
exhibits, of Patrick Tucci, its president and treasurer.
Included as an exhibit to his testimony was another
registration owned by opposer, Reg. No. 2,017,332, which

1 Issued on December 7, 1965; affidavit under Section 8
accepted; affidavit under Section 15 received. The services are
listed therein as “leasing and renting of vehicles.” Use since
December of 1963 is claimed.
2 Issued on March 5, 1996. The services are listed therein as
“valet airport parking services and automobile cleaning
services”; “automobile renting and leasing services and limousine
services”; and “automobile dealership services.” Use since
September of 1992 is claimed.
Opposition No. 103,022
3
issued on November 19, 1996 for the mark shown below.
The services listed therein are “automobile cleaning
services”; “automobile renting, leasing, limousine, and
airport valet parking services”; and “automobile dealership
services.” The words “RENTAL SYSTEM” are disclaimed apart
from the mark as shown. Use since September of 1992 is
claimed.
Applicant introduced the testimony, with exhibits, of
Mark Cohen, its vice president and general counsel. Both
parties filed briefs3 and argued before the Board at the
December 10, 1997 oral hearing.
The only issue before the Board in this opposition is
whether confusion is likely. Opposer’s unchallenged
registrations, which the record shows are subsisting and are
owned by opposer, entitle opposer to priority, and in any
event, the record establishes opposer’s use of its marks
before applicant filed its application to register.

3 Opposer’s reply brief has been considered, but the additional
evidence attached to applicant’s brief has not been considered
because it was untimely submitted, long after applicant’s
testimony period had closed. Moreover, even if we had considered
these search results, our decision in this proceeding would not
have changed.
Opposition No. 103,022
4
Based on careful consideration of the record and the
arguments of the parties, we find that although opposer has
prior use of its “AMERICAR” marks in connection with the
services specified in its registrations, confusion is not
likely. The marks of the parties create different
commercial impressions in connection with the respective
services of the parties, and those services are not related
in such a way that applicant’s use of “AMERICARE” in
connection with its services would be likely to cause
purchasers to assume mistakenly that applicant’s services
emanate from the same source as opposer’s “AMERICAR”
services.
Turning first to our analysis of the respective
services of the parties, we note that this record does not
show that a prospective purchaser of extended warranty
services for automobiles has any reason to expect the same
entity which provides such warranty services to also render
car rental services, which is opposer’s main business, or,
for that matter, the other services opposer provides, such
as valet parking, auto cleaning, limousine services, or
automobile dealership services. The testimony does not
reveal any single entity which renders both applicant’s
service and any of the services opposer offers under its
marks. Applicant does not park, clean, sell, rent, or lease
cars under the mark it seeks to register. Opposer does not
Opposition No. 103,022
5
provide extended warranty services under its mark. There is
no market interface between the parties.
Applicant is in the business of providing and
administering extended service contracts and warranties for
automobiles. Applicant’s warranties are sold separately, in
a discrete transaction, in addition to the sale of the
vehicle. In exchange for separate consideration, a
purchaser signs a separate contract with applicant, not the
automobile dealer or manufacturer, and the buyer is thereby
entitled to the repair or replacement of various components
of the vehicle in the event that they break. Typically, the
coverage under applicant’s contracts is well beyond that
which is ordinarily offered by sellers of vehicles,
extending up to seven years or a hundred thousand miles.
As noted above, applicant is not in the business of
renting, selling, cleaning or parking cars. The warranties
applicant sells are closely regulated by various
governmental agencies in the places where applicant does
business. Applicant has to submit the warranties, as well
as the liability policies that support them, to the
insurance departments of each state where it provides its
service.
Opposer, on the other hand, is primarily in the
business of renting and leasing cars. It also provides
services related to its main business, such as airport
Opposition No. 103,022
6
parking, auto cleaning, and limousine services.
Additionally, opposer provides automobile dealership
services, which we understand to involve the sales of
vehicles which were once in its rental fleet, but are no
longer rented or leased out. Opposer is not regulated by
the governmental agencies which oversee applicant’s business
activities.
While it is true that when opposer sells a former
rental car, opposer does use its mark in connection with a
warranty, that warranty is not a separate service within the
meaning of the Lanham Act, in the sense that applicant’s
providing for an additional fee an extended warranty of the
type not ordinarily offered in the usual course of the
automobile business is. In fact, even though opposer
sometimes does sell a car and sell an extended warranty to
the buyer at the same time, with coverage and cost both in
excess of the basic guarantee opposer ordinarily provides
when it sells an automobile, when opposer does this, it does
not use its own service mark to identify the source of that
warranty. Instead, the warranty is provided under the mark
of the third-party underwriter of the warranty. All opposer
does is sell it on behalf of that other company, Wynn’s.
Further, the purchaser of the extended warranty also buys a
package of Wynn’s products to use in extending the useful
life of the car to which the warranty applies, so customers
Opposition No. 103,022
7
have no basis for thinking that providing the warranty is a
service of opposer. Theoretically, opposer could contract
with applicant to offer applicant’s extended warranties to
purchasers of cars bought from opposer, but obviously, if
opposer believed that the use of applicant’s mark in
connection with the extended warranties in this situation
would cause confusion, opposer would not do so.
In summary, contrary to opposer’s contention in its
brief, (p. 3), the services of the parties are not
“identical and rendered in the same channels of commerce and
to the same class of purchasers.” The respective services
are different in nature, they are promoted and marketed in
different ways, and, as noted above, this record does not
show that there would be any reason for a prospective
purchaser of either of them to assume that they are
available from the same source, even if the marks used in
connection with them were the same.
Counsel for opposer states in his brief that the marks
“are obviously similar in appearance, pronunciation, and
connotation and this point does not require discussion.”
(brief, p.3). To the contrary, these marks create different
commercial impressions because, while they do look
appreciably alike and sound somewhat alike, their
connotations, as applied to the different services of the
parties, are substantially different. To the same
Opposition No. 103,022
8
suggestive prefix, “AMER,” opposer affixes the term “CAR,”
while applicant adds “CARE.” This fact results in
significantly different meanings. The obvious reference the
prefix makes is to America, but when “CARE” follows it, and
the services with which this combination is used are auto
warranty services, the connotation or suggestion is that the
automobile will be cared for throughout America.
“AMERICAR,” in contrast, when considered in connection with
the rental, sale, leasing, cleaning or parking of cars,
suggests a car in America or an American car.
We thus conclude that opposer’s “AMERICAR” mark, in
connection with opposer’s services, creates a different
commercial impression from that created by applicant’s mark
in connection with applicant’s service.
Opposer’s mark which combines the stylized presentation
of “AMERICAR” with the descriptive words “RENTAL SYSTEM” and
a design element is even less similar to applicant’s
“AMERICARE” mark. The commercial impression created by the
addition of “RENTAL SYSTEM” is far removed from the
commercial impression that applicant’s “AMERICARE” mark
creates when it is used in connection with applicant’s
service of providing extended warranties to offset the cost
of car care.
In summary, confusion is not likely in view of the
differences in the marks and the differences in the services
Opposition No. 103,022
9
of the parties. Accordingly, the opposition is dismissed.
R. F. Cissel
T. J. Quinn
G. D. Hohein
Administrative Trademark Judges
Trademark Trial & Appeal Board