Dealer Owned Warranty Company Inc.

Trademark Trial and Appeal Board

Jan 8, 2018

No. 86797122 (T.T.A.B. Jan. 8, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: January 8, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Dealer Owned Warranty Company Inc.
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Serial No. 86797122
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Kattina V. Barsik, Esq.
for Dealer Owned Warranty Company Inc.
Midge F. Butler, Trademark Examining Attorney, Law Office 107,
J. Leslie Bishop, Managing Attorney.
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Before Wolfson, Shaw and Gorowitz,
Administrative Trademark Judges.

Opinion by Gorowitz, Administrative Trademark Judge:
Dealer Owned Warranty Company Inc. (“Applicant”) seeks registration on the
Principal Register of the mark DEALER OWNED WARRANTY COMPANY (in
standard characters) for,
Insurance administration, Insurance agencies; Insurance
brokerage in International Class 36.1

1 Application Serial No. 86797122 was filed on October 23, 2015, based upon Applicant’s
allegation of first use anywhere and use in commerce on March 1, 2015 under Section 1(a) of
the Trademark Act, 15 U.S.C. § 1051(a).
Serial No. 86797122
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The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(e)(1) of the Trademark Act on the ground that the mark is merely
descriptive of Applicant’s services, 15 U.S.C. § 1052(e)(1). When the refusal was made
final, Applicant appealed and requested reconsideration. After the Examining
Attorney denied the request for reconsideration, the appeal was resumed. We affirm
the refusal to register.
I. Applicable Law
A term is deemed to be merely descriptive of goods or services, within the meaning
of Section 2(e)(1), if it forthwith conveys an immediate idea of an ingredient, quality,
characteristic, feature, function, purpose or use of the goods or services. DuoProSS
Meditech Corp. v. Inviro Medical Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1755
(Fed. Cir. 2012); In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d
1217, 1219 (Fed. Cir. 2012); In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 217-
18 (CCPA 1978). Whether a term is merely descriptive is determined not in the
abstract, but in relation to the goods or services for which registration is sought, the
context in which it is being used on or in connection with the goods or services, and
the possible significance that the term would have to the average purchaser of the
goods or services because of the manner of its use; that a term may have other
meanings in different contexts is not controlling. In re Chamber of Commerce of the
U.S., 102 USPQ2d at 1219 (citing In re Bayer Aktiengesellschaft, 488 F.3d 960, 82
USPQ2d 1828, 1831 (Fed. Cir. 2007)); In re Bright-Crest, Ltd., 204 USPQ 591, 593
(TTAB 1979). In other words, we evaluate whether someone who knows what the
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goods or services are will understand the mark to convey information about them.
DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 103 USPQ2d at 1757; In re
Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002).
A mark need not immediately convey an idea of each and every specific feature of
the services in order to be considered merely descriptive; it is enough if it describes
one significant attribute, function or property of the services. See In re Gyulay, 3
USPQ2d at 1010; In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re
MBAssociates, 180 USPQ 338 (TTAB 1973).
II. Analysis
The Examining Attorney has introduced website evidence that explains the
meaning of “dealer owned warranty company”:
One type of service contract program available to dealers is
a dealer-owned warranty company …
In this type of structure, the dealer actually forms a
separate c-corporation apart from the dealership itself, for
the sole purpose of writing service contracts. The new
entity, owned by the dealer, then becomes the obligor, and
in a sense, the actual provider. [The insurance provider]
handles all of the back-end functions and takes an admin
fee out of each contract for that purpose. It’s important to
note, however, that depending on the provider the dealer
sets the reinsurance program up with, how these fees and
taxes are handled can differ.
“This is their company, they own it,” said [one such
provider]. “We don’t touch their funds; all funds go through
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the dealership. So things like coverage, rates, etc. are all
controlled by them based on the underwriter’s approval.”2
As described, a “dealer-owned warranty company” (or corporation) is a company
set up by car dealers to offer warranty service contracts to consumers for their
automobiles. That is, consumers pay an insurance-type fee in return for such benefits
as warranted car repair, temporary automobile rental, etc.3
Applicant describes itself as a “full suite finance and insurance product provider”
for products such as “vehicle service contracts”4 and concedes that its mark is
descriptive of “[o]ne type of service contract program available to dealers [e.g.,] a
dealer-owned warranty company.”5
Applicant argues that the multiple possible meanings of DEALER OWNED
WARRANTY COMPANY establish that the mark is not merely descriptive. This
argument is not persuasive. Applicant provides and administers vehicle service
contracts for dealer owned warranty companies, thus, its mark is merely descriptive.
Applicant also contends that the Office does not understand its services and that
its mark is not descriptive of these services. This argument is unsupported and not
persuasive. Applicant has identified its services as “insurance administration,
insurance agencies; insurance brokerage,” however, Applicant claims that it is “a

2 Toni McQuilken, WHAT, EXACTLY, IS A DEALER-OWNED WARRANTY CORP? AE
AGENT ENTREPRENEUR, www.ae-magazine.com, Exhibit attached to September 12, 2016
Office Action, TSDR pp. 6-7.
3 Id.
4 Specimen filed on October 23, 2015.
5 Applicant’s Appeal Brief, 9 TTABVUE 9-10.
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training provider firm which specializes in reinsurance for products[?] owned by
dealers,”6 and that it “does not work as administers [sic] and brokers in a specific type
of service contract but provides a system as a service.”7 Applicant’s description of
itself on its website belies this argument: Applicant is “an F & I (finance and
insurance) administration and training provider.”8 This description is sufficient to
find DEALER OWNED WARRANTY COMPANY is merely descriptive since, as
discussed above, a mark need not immediately convey an idea of each and every
specific feature of the services in order to be considered merely descriptive; it is
enough if it describes one significant attribute, function or property of the services.
See In re Gyulay, 3 USPQ2d at 1010; In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982);
In re MBAssociates, 180 USPQ 338 (TTAB 1973).
Finally, for the first time, in its brief, Applicant argues that its mark is not merely
descriptive because it is a double- entendre. Double-entendre is defined as:
1. a double meaning.
2. a word or expression used in a given context so that it
can be understood in two ways, especially when one
meaning is risqué.9

6 Id. at 11.
7 Id. at 12.
8 Id. at 11(emphasis added). The evidentiary record should be complete prior to filing an ex
parte appeal to the Board. Trademark Rule 2.142(d); 37 CFR § 2.142(d). However, we
consider this evidence of record because the Examining Attorney both did not object to it and
discussed it in her brief. See, In re Litehouse Inc., 82 USPQ2d 1471, 1475 n.2 (TTAB 2007)
(third-party registrations submitted for first time with applicant’s appeal brief considered
because examining attorney did not object in her brief and instead presented arguments in
rebuttal of this evidence).
9 We take judicial notice of the definition of “double-entendre,” which is set forth above.
Dictionary.com Unabridged. Random House, Inc. (2018) at http://www.dictionary.com/
browse/ double-entendre.
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“For trademark purposes, a ‘double entendre’ is an expression that has a double
connotation or significance as applied to the goods or services.”10 In some cases, a
“mark that comprises the ‘double entendre’ will not be refused registration as merely
descriptive if one of its meanings is not merely descriptive in relation to the goods or
services.”11
Applicant contends that its “mark readily conveys at least three different
meanings:
a) One type of service contract program available to
dealers is a dealer-owned warranty company;
b) A business model which is executed by a dealer and any
related warranty is owned (not directly but by virtue of
an deal or legal contract) by the dealer; and
c) A business model where the warranty is the direct
responsibility of the dealer.”12
As discussed, supra, Applicant has conceded that its mark is descriptive of “[o]ne
type of service contract program available to dealers.” During the prosecution of this
case, Applicant submitted no evidence establishing the other two asserted
meanings.13 Moreover, even if Applicant did establish the existence of the three
meanings it asserted for the phrase DEALER OWNED WARRANTY COMPANY, it

10 Trademark Manual of Examining Procedure (TMEP) §1213.05(c) (October 2017).
11 Id.
12 Appeal Brief, 9 TTABVUE 9.
13 Applicant has attached documents to its reply brief, which it asserts “showcase the use of
the mark DEALER OWNED WARRANTY in other business.” Reply Brief, 14 TTABVUE 8.
Submission of these documents with Applicant’s reply brief is untimely since the evidentiary
record should be complete prior to filing an ex parte appeal to the Board. Trademark Rule
2.142(d), 37 CFR § 2.142(d). Accordingly, we have not considered these documents.
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would not make the phrase a double-entendre. Each of the three purported meanings
relates to a vehicle service contract or a business model for establishing a vehicle
service contract. In other words, there is nothing about Applicant’s “double entendre”
that isn’t descriptive of some facet of the provision of dealer owned warranty
companies. See In re RiseSmart Inc., 104 USPQ2d 1931, 1934 (TTAB 2012) (finding
that TALENT ASSURANCE does not present a double entendre such that “the
merely descriptive significance of the term [TALENT] is lost in the mark as a whole”);
see also In re Ethnic Home Lifestyles Corp., 70 USPQ2d 1156, 1158 (TTAB 2003)
(holding ETHNIC ACCENTS merely descriptive of “entertainment in the nature of
television programs in the field of home décor,” because the meaning in the context
of the services is home furnishings or decorations which reflect or evoke particular
ethnic traditions or themes, which identifies a significant feature of applicant’s
programs; viewers of applicant’s programs deemed unlikely to discern a double
entendre referring to a person who speaks with a foreign accent).
Unlike the marks in the following cases, the phrase DEALER OWNED
WARRANTY COMPANY does not have a double connotation or significance when
applied to Applicant’s services: In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ
382 (C.C.P.A. 1968) (SUGAR & SPICE for bakery products); In re Tea and Sympathy,
Inc., 88 USPQ2d 1062 (TTAB 2008) (holding THE FARMACY registrable for retail
store services featuring natural herbs and organic products and related health and
information services relating to dietary supplements and nutrition); In re Simmons
Co., 189 USPQ 352 (TTAB 1976) (THE HARD LINE for mattresses and bed springs);
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and In re Del. Punch Co., 186 USPQ 63 (TTAB 1975) (THE SOFT PUNCH for
noncarbonated soft drink); In re National Tea Co., 144 USPQ 286 (TTAB 1965) (NO
BONES ABOUT IT for fresh pre-cooked ham).
III. Conclusion
For the reasons discussed, we conclude that pursuant to Section 2(e)(1) of the
Trademark Act, Applicant’s mark DEALER OWNED WARRANTY COMPANY is
merely descriptive of Applicant’s insurance administration, insurance agencies and
insurance brokerage services.
Decision: The refusal to register Applicant’s proposed mark DEALER OWNED
WARRANTY COMPANY is affirmed.