Auto Parts Club, LLC

Trademark Trial and Appeal Board

Sep 28, 1998

No. 74658746re (T.T.A.B. Sep. 28, 1998)

Paper No. 17
PTH
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB SEPT 28, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Auto Parts Club, LLC
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Serial No. 74/658,746
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Request For Reconsideration
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Henri J. A. Charmasson for Auto Parts Club, LLC.
Anthony R. Masiello, Trademark Examining Attorney, Law
Office 104 (Sidney Moskowitz, Managing Attorney).
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Before Cissel, Seeherman and Hairston, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
Auto Parts Club, LLC has requested reconsideration of
the Board’s June 5, 1998 decision affirming the Examining
Attorney’s refusal to register AUTO PARTS CLUB, under the
provisions of Section 2(f) of the Trademark Act, for
“discount wholesale and retail store services in the field
of automotive parts.” Registration was refused on the
ground that AUTO PARTS CLUB, when used in connection with
Ser No. 74/658,746
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the identified services is generic and, thus, incapable of
distinguishing applicant’s services from like services of
others.
Applicant maintains that “the Board’s decision
[holding that AUTO PARTS CLUB is generic] is flawed because
there is no evidence on the record that the ‘primary
significance’ of the term CLUB, by itself, is that of a
‘discount wholesale or retail store.’” In particular,
applicant argues that the record is devoid of any evidence
that the term is used by itself as a shortened reference to
wholesale or retail discount stores and warehouse-type
stores. Further, applicant contends that the Board
casually and cavalierly dismissed applicant’s evidence, in
our alternative determination of whether, if AUTO PARTS
CLUB is not considered generic, the designation has
acquired distinctiveness.
We have carefully considered the points raised by
applicant, but are of the view that our initial decision
was correct.
First, it is not true that the record is devoid of any
evidence that the term CLUB is used by itself as a
shortened reference to wholesale retail discount stores and
warehouse-type stores.
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We note the following examples from the NEXIS excerpts set
forth in our decision:
The clubs began as wholesale outlets for
small businesses but have become extremely
popular with individual consumers interested
in saving through bulk buying; and
And the clubs are going to continue to
gobble up dollars.
In any event, we simply disagree with applicant that
because a number of the NEXIS excerpts showed that terms
such as “warehouse,” “retail,” and “store” are used with
the word “club,” such evidence is not probative in
demonstrating that club alone is generic for a type of
store.
Second, we reiterate our view that the evidence
submitted by applicant in support of its claim of acquired
distinctiveness was insufficient, particularly inasmuch as
applicant failed to provide any evidence whatsoever
directly relating to purchaser perception.
For the reasons discussed in our decision, we adhere
to our finding that AUTO PARTS CLUB is generic of
applicant’s identified services, and even if the term were
not considered generic, applicant’s evidence is
insufficient to establish that AUTO PARTS CLUB has acquired
distinctiveness.
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Decision: The request for reconsideration is denied.
E. J. Seeherman
R. F. Cissel
P. T. Hairston
Administrative Trademark
Judges, Trademark Trial and
Appeal Board
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