National Automotive Experts, LLC

Trademark Trial and Appeal Board

Apr 11, 2016

No. 86118769 (T.T.A.B. Apr. 11, 2016)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: April 11, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re National Automotive Experts, LLC
_____

Serial No. 86118769
_____

Andrew J. Seger for National Automotive Experts, LLC.

Michelle E. Dubois, Trademark Examining Attorney, Law Office 107 (J. Leslie
Bishop, Managing Attorney).
_____

Before Kuhlke, Adlin and Gorowitz, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
National Automotive Experts, LLC (“Applicant”) seeks a Principal Register
registration for the proposed mark NATIONAL AUTOMOTIVE EXPERTS, in
standard characters, for “Advertising, marketing and promotion services in the field
of warranties, service contracts, guaranteed asset protection (GAP) plans, vehicle
protection products, and other risk-shifting products to automobile and recreational
vehicle dealers.”1 The Examining Attorney refused registration on three grounds:

1 Application Serial No. 86118769, filed November 14, 2013 under Section 1(a) of the
Trademark Act, alleging first use dates of April 27, 2006.
Serial No. 86118769

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the proposed mark is merely descriptive of the identified
services under Section 2(e)(1) of the Act;

Applicant is not rendering the identified services to others
and the services are merely incidental to Applicant’s
principal activities, and thus NATIONAL AUTOMOTIVE
EXPERTS fails to function as a mark and is not registrable
to Applicant for the identified services; and

none of the specimens submitted in support of the
application show use of the applied-for mark in connection
with the identified services.

After the refusals became final, Applicant appealed and filed a motion for
reconsideration, which was denied. Applicant and the Examining Attorney filed
briefs.
Descriptiveness
A mark is deemed to be merely descriptive, within the meaning of Section 2(e)(1),
if it immediately conveys knowledge of a quality, feature, function, characteristic or
purpose of the services for which it is used. In re Bayer Aktiengesellschaft, 488 F.3d
960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007) (quoting In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009)); and In re Abcor Development, 588 F.2d 811, 200 USPQ 215, 217-18
(CCPA 1978). A mark need not immediately convey an idea of each and every specific
feature of the services in order to be considered merely descriptive; rather, it is
sufficient that the mark describes one significant attribute, function or property of
the services. In re Chamber of Commerce of the United States of America, 675 F.3d
1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re H.U.D.D.L.E., 216 USPQ 358
(TTAB 1982); and In re MBAssociates, 180 USPQ 338 (TTAB 1973). Whether a mark
is merely descriptive is determined not in the abstract, but in relation to the services
Serial No. 86118769

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for which registration is sought, the context in which it is being used on or in
connection with the services, and the possible significance that the mark would have
to the average purchaser of the services because of the manner of its use. In re Bright-
Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). It is settled that “[t]he question is not
whether someone presented with only the mark could guess what the goods or
services are. Rather, the question is whether someone who knows what the goods or
services are will understand the mark to convey information about them.” In re Tower
Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002).
When two or more merely descriptive terms are combined, the determination of
whether the composite mark also has a merely descriptive significance turns on
whether the combination of terms evokes a new and unique commercial impression.
If each component retains its merely descriptive significance in relation to the
services, the combination results in a composite that is itself merely descriptive. See
e.g., In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370 (Fed. Cir. 2004)
(PATENTS.COM merely descriptive of computer software for managing a database
of records that could include patents, and for tracking the status of the records by
means of the Internet); In re Petroglyph Games, Inc., 91 USPQ2d 1332 (TTAB 2009)
(BATTLECAM merely descriptive for computer game software); In re Carlson, 91
USPQ2d 1198 (TTAB 2009) (URBANHOUZING merely descriptive of real estate
brokerage, real estate consultation and real estate listing services); In re Tower Tech,
64 USPQ2d at 1314 (SMARTTOWER merely descriptive of commercial and industrial
cooling towers); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001)
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(AGENTBEANS merely descriptive of computer programs for use in developing and
deploying application programs); In re Putman Publishing Co., 39 USPQ2d 2021
(TTAB 1996) (FOOD & BEVERAGE ONLINE merely descriptive of news and
information services in the food processing industry).
Here, the Examining Attorney relies on the following dictionary definitions of the
proposed mark’s constituent terms to establish that they are descriptive as used for
the identified services:
NATIONAL—“relating to one particular nation and not
including other nations”

AUTOMOTIVE—“relating to cars and other motor
vehicles”

EXPERT—“someone who has a particular skill or who
knows a lot about a particular subject”

Office Action of March 11, 2014.2 She also relies on website printouts which reveal
third-party use of the term “automotive experts” for services similar or related to
Applicant’s:
Automotive Digital Training, which trains auto dealership
employees on topics such as showroom sales, digital
marketing and “finance and insurance,” states on its
website (automotivedigitaltraining.com), that “ADT
features industry leaders that have been hand picked as
the best of the best. Pick one dedicated channel or
subscribe to the whole package and have access to all of
these automotive experts.”

CBC Advertising, which assists with “auto advertising,”
states on its website (cbcads.com) that its “digital

2 http://www.macmillandictionary.com/us/dictionary/american/national;
http://www.macmillandictionary.com/us/dictionary/american/automotive; and
http://www.macmillandictionary.com/us/dictionary/american/expert.
Serial No. 86118769

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automotive experts look at the analytics of all of our
campaigns to make qualitative decisions to increase lead
submissions ….”

Maritz states in a press release that it is “well-known for
its performance improvement programs and work with
most automotive brands,” and that after an acquisition
“Opportunity Max’s team and services will be integrated
with Maritz’ automotive experts and sales and
marketing solutions.”

On its website (“tvi-mp3.com”), MarketPro3 indicates that
it provides consulting services to auto dealers, and states
that its “veteran team of automotive experts is
committed to our clients, our products, and our continued
growth.”

In discussing services provided to auto dealers, J.D.
Power’s website (“jdpower.com”) states that its “team of
automotive experts deliver a fact-based, quantitative
assessment of expected performance ….”

Office Action of October 20, 2014 (emphasis added). Moreover, third-party
registration evidence establishes that the term “experts” is often disclaimed, and that
marks including the term are often registered on the Supplemental Register:
Disclaimers:

CONVERSION RATE EXPERTS FROM CLICK TO
CUSTOMER & Design for education and consulting
services, CONVERSION RATE EXPERTS disclaimed,
Reg. No. 3538340

ENGAGE EXPERTS (Stylized) for consulting services,
EXPERTS disclaimed, Reg. No. 3619363

BIZDEV EXPERTS INSIGHT. IMPACT. RESULTS. &
Design for consulting services, EXPERTS disclaimed, Reg.
No. 3746504

Serial No. 86118769

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PIVOT SENIOR LIVING EXPERTS & Design for
consulting services, SENIOR LIVING EXPERTS
disclaimed, Reg. No. 4178899

FAMILY FOOD EXPERTS in standard characters for
advertising services, FOOD EXPERTS disclaimed, Reg.
No. 4435320

THE AUTOMOTIVE EXPERTS MEDIA GROUP & Design
for advertising and publicity services, THE AUTOMOTIVE
EXPERTS MEDIA GROUP disclaimed, Reg. No. 4386780
(submitted by Applicant)

MR. MOBILE AUTOMOTIVE SERVICES “YOUR ON-
SITE SERVICE EXPERTS” & Design for automobile
repair and maintenance, MOBILE AUTOMOTIVE
SERVICES “YOUR ON-SITE SERVICE EXPERTS”
disclaimed, Reg. No. 4034987 (submitted by Applicant)

ARS THE AUTOMOTIVE REMOTE SERVICE EXPERTS
& Design for communication services, THE
AUTOMOTIVE REMOTE SERVICE EXPERTS
disclaimed, Reg. No. 4030972 (submitted by Applicant)

Supplemental Register Registrations:

THE HEALTHCARE DATA EXPERTS for consulting
services, Reg. No. 3497390

EXPERTS IN MEDIA LOGISTICS, standard characters,
for digital media services, Reg. No. 4211804

CLEAN ENERGY EXPERTS in standard characters for
advertising services, Reg. No. 4259532

WIKIEXPERTS in standard characters for optimizing
client visibility in online informational databases, Reg. No.
4420160

SECURITYGUARDEXPERTS in standard characters for
advertising and business administration services in the
private security industry, Reg. No. 4553596

Serial No. 86118769

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AUTOMOTIVE CAREER EXPERTS in standard
characters and with a design for training automotive
dealer employees, Reg. Nos. 4296686 and 4280916 (both
submitted by Applicant)

EXPERT AUTOMOTIVE SERVICE … GUARANTEED in
standard characters for automotive maintenance and
repair, Reg. No. 2770471 (submitted by Applicant)

Id.; Office Action Response of September 10, 2014.3
Finally, the Examining Attorney relies on information about Applicant itself.
Agent Entrepreneur, which claims to be “the industry’s leading source for automotive
and powersports agents,” has a listing for Applicant on the “featured companies”
section of its website, in which Applicant states that it “is comprised of highly
trained professionals that together have achieved over 100 years of industry
experience,” and that its “administration program can easily support flexible profit
structures for the various needs of dealerships around the country.” Office Action
of October 20, 2014. Applicant’s Facebook page indicates that it “is a product
administrator and training company assisting dealers and agents throughout the
United States,” and that its “continued growth is built on a foundation of innovative
solutions that our partners can rely on, by experts they can trust.” Id. (emphasis
added). Applicant’s website indicates that its “products and services are represented
in dealerships and agencies throughout the United States,” and that each member

3 The Examining Attorney’s objection to Applicant’s mere listing of three additional third-
party registrations for the first time in its Appeal Brief is sustained. Trademark Rule
2.142(d); In re Jump Designs, LLC, 80 USPQ2d 1370, 1372 (TTAB 2006).
Serial No. 86118769

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of its management team “has 15-30 years of automotive experience.” Id.
(emphasis added).4
This evidence establishes that NATIONAL AUTOMOTIVE EXPERTS is merely
descriptive of Applicant’s services. The definitions and uses of the proposed mark’s
constituent terms make clear that consumers will immediately understand that
Applicant has significant car-related knowledge which it offers throughout the
United States.5 And when consumers are exposed to the term in relation to the
identified advertising/marketing services, consumers will understand that those
services are automobile-related and provided nationally by experts. Applicant’s own
promotional materials encourage this understanding, as Applicant claims to be
“comprised of highly trained professionals” with “over 100 years of [automobile]
industry experience” and to provide its services “around the country” and “throughout

4 It is settled that “[e]vidence of the context in which a mark is used on labels, packages, or
in advertising material directed to the goods is probative of the reaction of prospective
purchasers to the mark.” In re Abcor Development, 200 USPQ at 218; In re Promo Ink, 78
USPQ2d 1301, 1303 (TTAB 2006); see also In re Hunter Fan Co., 78 USPQ2d 1474, 1476
(TTAB 2006) (“applicant’s own use of the term ERGONOMIC … highlights the descriptive
nature of this term …”).
5 The third-party registration evidence bolsters the dictionary evidence and establishes the
merely descriptive, laudatory nature of the term “experts.” The Institut National des
Appellations D’Origine v. Vintners International Co., Inc., 958 F.2d 1574, 22 USPQ2d 1190,
1196 (Fed. Cir. 1992) (“third party registrations show the sense in which the word is used in
ordinary parlance and may show that a particular term has descriptive significance as
applied to certain goods or services”); In re Box Solutions Corp., 79 USPQ2d 1953, 1955
(TTAB 2006). And Applicant concedes that what its customers pay for when they hire
Applicant is “Applicant’s expertise in the automotive industry and with automobiles in
general.” Applicant’s Appeal Brief at 9. While Applicant introduced three Principal Register
registrations in which “expert” is not disclaimed, these are easily outnumbered and therefore
outweighed by the 15 third-party registrations cited above, which include five registrations
that Applicant itself submitted which are either registered on the Supplemental Register or
in which “expert” is disclaimed.

Serial No. 86118769

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the United States.” Office Action of October 20, 2014 (Agent Entrepreneur listing and
Applicant’s Facebook page).
When the composite term NATIONAL AUTOMOTIVE EXPERTS is considered
as a whole, its meaning is no different. Applicant argues that if its proposed mark is
read as a combination of the terms “national automotive” and “experts,” consumers
could perceive the term as identifying “an expert on the nationwide automotive sales
industry,” whereas if the proposed mark is read as a combination of the terms
“national” and “automotive experts,” consumers could perceive the term as conveying
that “Applicant has an expertise regarding the components and functionality of
automobiles and that Applicant has a national presence.” Applicant’s Appeal Brief at
9-10. We are not persuaded. We do not consider Applicant’s proposed mark in the
abstract; rather, the question is whether someone who knows what Applicant’s
services are will understand the proposed mark to convey information about them.
When considered in the context of Applicant’s identified services, dealers seeking
marketing and advertising services will understand that those services will be
provided by “automotive experts.” Moreover, because both of the meanings Applicant
attributes to the term are merely descriptive in relation to the services, the proposed
mark is merely descriptive. In re RiseSmart, Inc., 104 USPQ2d 1931, 1934 (TTAB
2012); TMEP § 1213.05(c).
In fact, Applicant concedes that its proposed mark “describes the people who
perform its marketing and advertising services.” Applicant’s Appeal Brief at 8. As the
Examining Attorney points out, “[i]t is well-established that a term which describes
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the provider of goods or services is also merely descriptive of those goods and
services.” In re Major League Umpires, 60 UPQ2d 1059, 1061 (TTAB 2001) (finding
MAJOR LEAGUE UMPIRE merely descriptive of “clothing, namely, shirts, tee-
shirts, jackets, caps …” because the applicant was owned and operated by Major
League Baseball umpires). See also In re Chamber of Commerce, 102 USPQ2d at 1220
(finding NATIONAL CHAMBER merely descriptive of, inter alia, business and
regulatory data analysis services which are “within the scope of traditional chambers
of commerce activities” and that a dictionary definition of “national” supported a
finding that “NATIONAL CHAMBER is a mark that might be viewed as descriptive
of services that are nationwide in scope”) and In re Omaha National Corp., 819 F.2d
1117, 2 USPQ2d 1859, 1861 (Fed. Cir. 1987) (finding FIRSTIER & Design merely
descriptive of banking services where certain banks were commonly described as
“first tier,” and holding that mere descriptiveness refusals to register are not limited
only “to terms which identify a characteristic or quality of an article or service”). Here,
the people that provide Applicant’s services are experts in automobile-related
advertising and marketing, and they provide their services nationally.
Furthermore, the record reveals that like Applicant, third-parties also use the
term “automotive experts” in connection with advertising and marketing services
provided to automobile dealers. Office Action of October 20, 2014 (Maritz press
release and website printouts from Automotive Digital Training, CBC Advertising,
MarketPro3 and J.D. Power). In other words, there is a competitive need for
Applicant’s competitors to use the term “automotive experts.” See, In re Boston Beer
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Co. L.P., 47 USPQ2d 1914, 1920-21 (TTAB 1998), aff’d, 198 F.3d 1370, 53 USPQ2d
1056 (Fed. Cir. 1999); In re Abcor Development, 200 USPQ at 217 (“The major reasons
for not protecting [merely descriptive] marks are … to maintain freedom of the public
to use the language involved, thus avoiding the possibility of harassing infringement
suits by the registrant against others who use the mark when advertising or
describing their own products.”). And that term is understood by Applicant’s target
customers, i.e. “automobile and recreational vehicle dealers,” by virtue of its common
use in the industry.
In short, because NATIONAL AUTOMOTIVE EXPERTS describes those who
provide Applicant’s services and third-parties which provide advertising and
marketing services to auto dealers also use AUTOMOTIVE EXPERTS in connection
with their services, we have no doubt that NATIONAL AUTOMOTIVE EXPERTS is
merely descriptive.
WHETHER APPLICANT IS ENTITLED TO REGISTRATION FOR THE
SERVICES AS IDENTIFIED IN THE APPLICATION

According to the Examining Attorney, this refusal is based on the identified
services not being “registrable.” However, it is clear that the true bases for the refusal
are that: Applicant is not rendering the identified services to others; and Applicant’s
advertising is merely incidental to its principal activity of offering warranties, service
plans and similar contracts to automobile and recreational vehicle dealers. In fact,
the Examining Attorney makes clear “that the listed services are genuine activities
that are performed by many companies,” and thus registrable in appropriate
circumstances. Examining Attorney’s Appeal Brief at 7. However, the Examining
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Attorney found that this is not such an “appropriate circumstance.” To clarify the
basis for this refusal, the precise issue here is whether Applicant is merely
advertising its own products and services (the warranties and service plans it offers)
as “a necessary and incidental part of Applicant’s business.” Id. See In re Dr Pepper
Co., 836 F.2d 508, 5 USPQ2d 1207, 1208 (Fed. Cir. 1987) (“it has become a settled
principle that the rendering of a service which is normally ‘expected or routine’ in
connection with the sale of one’s own goods is not a registrable service …”).
In assessing this refusal, “[w]e must look closely at what is being offered here and
to whom it is being offered.” In re Canadian Pacific Ltd., 754 F.2d 992, 224 USPQ
971, 973 (Fed. Cir. 1985); see also In re Landmark Communications, Inc., 204 USPQ
692, 695 (TTAB 1979) (“we should first ascertain what is an applicant’s principal
activity under the mark in question … and then determine whether the activity
embraced by the description of services or goods in the application is in any material
way a different kind of economic activity than what any purveyor of the principal
service or tangible product necessarily provides”). In doing so, we find that
Applicant’s advertising and marketing services are not materially different than
what any purveyor of Applicant’s principal products and services provides.
In fact, Applicant’s website lists the promoted insurance, warranty and service
contract “products” as Applicant’s own. For example, under the heading “Extended
Service Contracts,” Applicant states “We offer Fully Insured, Reinsured and
Dealer Obligor service contract programs tailored to our clients’ individual needs.”
Office Action of October 20, 2014 (italics added, bold in original). Similarly, Applicant
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states “Our ENHANCED Theft Protection is a great way to recapture your
customer’s attention.” Id. (italics added, bold in original). Applicant’s listing on the
Agent Entrepreneur website states that Applicant
is a full line product administrator that focuses on
reinsurance, training, dealership profitability options,
service retention & customized administration in the
Automobile, RV & Motorcycle industry. NAE offers
proprietary products like the exclusive Warranty Forever®,
Surface ScienceT, RimDefenseT & Diamon-Fusion®
programs … NAE’s custom administration programs are
built to suit our client’s need, which sets us apart from our
competitors.

Id. (emphasis added). On its Facebook page, Applicant similarly describes itself as “a
product administrator and training company assisting dealers and agents
throughout the United States,” and states “NAE and our sister company NWAN
(National Warranty Administration Network) offers products, training and custom
administration to dealers and agents ….” Id. (emphasis added). These self-
descriptions are consistent in describing Applicant itself as the product
administrator; they do not identify Applicant’s clients as product administrators,
much less product administrators or underwriters which retain Applicant to provide
advertising or marketing services. In fact, none of these descriptions, or for that
matter any evidence of record, indicates that Applicant performs advertising or
marketing services as such for others. To the contrary, Applicant’s advertising is for
its own benefit, to increase sales of the products and services it offers and
administers.
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While this advertising may incidentally benefit companies which underwrite the
products Applicant offers, the advertising itself is part and parcel of Applicant’s
product administration and agency business. As the Examining Attorney points out,
according to Applicant’s identification of services its customers are not insurers, or
service contract or warranty providers, but rather automobile dealers, and
Applicant’s “advertising” is simply what product administrators or agents such as
Applicant do to obtain clients, in this case automobile and recreational vehicle
dealers. Applicant is not separately retained by insurers, service contract or warranty
providers to advertise their products separate and apart from Applicant’s role as the
products’ administrator or agent. See In re Hartford Courant Co., 231 USPQ 77, 78
(TTAB 1986) (“However, it is clear that the principal activity of an advertising agency
is rendering advertising services to clients, including the design, layout and
production of advertisements to be used in a variety of media.”).
The fact that Applicant is promoting its own business rather than advertising or
marketing for others is perhaps best illustrated by the fact that according to
Applicant’s Facebook page, its “sister company” is National Warranty Administration
Network, or NWAN. In addition to Warranty Forever, which Applicant’s Agent
Entrepreneur listing describes as Applicant’s “proprietary product,” NWAN offers a
product called “Shortfall” which “helps cover the loss of your down payment and
deposit on a leased vehicle.” Shortfall is promoted on a substitute specimen which
Applicant submitted with its Office Action Response of September 11, 2014:
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While the Shortfall brochure indicates that the product is “marketed by” Applicant,
that “marketing” is apparently on behalf of Applicant’s sister company NWAN rather
than “others.” This arrangement appears similar to the marketing of Warranty
Forever, which is also described as an NWAN product but which Applicant describes
in its Agent Entrepreneur listing as Applicant’s own “proprietary product.” Moreover,
in its brief Applicant states that the Excess Wear and Tear Protection program which
it markets is “administered by United Service Protection, Inc.” Applicant’s Appeal
Brief at 11. However, with its Request for Reconsideration Applicant provided the
service contract for that program which includes NWAN’s name and logo in the
contract’s heading as well as the copyright notice “© NWAN, Inc.” The service
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contract itself is not advertising, and the fact that NWAN was so heavily involved in
the contract that its name is prominently included in its heading and that NWAN
owns the copyright to the contract strongly suggests that Applicant’s “sister company”
NWAN is not acting as a provider of marketing or advertising services but as
something else, perhaps as a product administrator, agent or underwriter. In any
event, there is simply no evidence of record that Applicant has ever been retained by
a third-party to provide advertising or marketing services.6
The substitute specimen Applicant submitted with its request for reconsideration
further illustrates the point:

6 It is troubling that in its brief Applicant refers to NWAN as “one of the Applicant’s
customers.” Applicant’s Appeal Brief at 11. This suggests that NWAN is an “other” to which
Applicant provides advertising services, when the evidence of record makes clear that
NWAN is in fact Applicant’s sister company. Applicant concedes in its brief that NWAN
“administers” the RV Warranty Forever program, id., which is another program for which
Applicant allegedly provides advertising/marketing services, but which its sister company
apparently administers.
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Applicant’s Request for Reconsideration April 19, 2015. As reflected in this specimen,
Applicant is promoting its “exclusive line of products,” all of which are insurance,
warranty or similar products and none of which reflect, involve or even relate to
advertising services performed for others. Thus Applicant is not entitled to a
registration for advertising or marketing services because Applicant does not provide
advertising or marketing services for others. In re Canadian Pacific, 224 USPQ at
973; In re Integrated Resources, Inc., 218 USPQ 829, 831 (TTAB 1983). Indeed, the
record does not reveal any use whatsoever of the proposed mark NATIONAL
AUTOMOTIVE EXPERTS for advertising services as opposed to other products and
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services. Cf. In re Advertising & Marketing Development, Inc., 821 F.2d 614, 2
USPQ2d 2010, 2013 (Fed. Cir. 1987) (“The distinguishing characteristic of
advertising services is that they are associated with the subject of the advertising,
whether that subject is goods or services. However, service mark registration for
advertising services must be based on use of the mark to identify the advertising
services themselves.”) (emphasis added).
Applicant claims that its services “are akin to those of an insurance agency that
markets the insurance programs provided, underwritten, and administered by third-
party companies.” Applicant’s Request for Reconsideration at 4. To the extent this is
what Applicant is offering, the result is no different, because “an applicant’s activity
must be qualitatively different from anything necessarily done in connection with the
sale of goods” (or in this case the sale of agency services), and “mere advertising of
one’s own products” (or in this case agency services), “is not a separate service.” In re
Landmark Communications, 204 USPQ at 695; In re Reichhold Chemicals, Inc., 167
USPQ 376, 377 (TTAB 1970) (“It is well settled that promoting the sale and use of
one’s goods is not, per se, a service within the meaning of the statute.”).7 See also In
re Hartford Courant, 231 USPQ at 78 (“We think that, in the present case, the
soliciting of advertising for one’s newspaper and the necessary activities of designing,
laying out and producing those advertisements are activities which are part and

7 Just as promoting one’s own goods is not a registrable service, promoting one’s own
services is not a registrable service. See TMEP § 1301.01(a)(iii) (“… operating a grocery
store is clearly a service. Bagging groceries for customers is not considered a separately
registrable service, because this activity is normally provided to and expected by grocery
store customers, and is, therefore, merely ancillary to the primary service.”)
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parcel of the business of selling newspapers and are expected by advertisers and other
readers of the newspaper to be associated with any newspaper.”). As we stated in
somewhat analogous circumstances:
applicant is seeking a registration not for any service
rendered by the partnership but for the actual attempt to
attract investors to become limited partners in the
partnership. There is no evidence that applicant is in the
business of syndicating a number of investment
partnerships but, rather, it appears that applicant is
involved in a ‘one shot’ syndication in an effort to form this
partnership following which the partnership intends to
perform certain services. Applicant’s soliciting or
syndicating of potential investors to join a particular
partnership in which applicant is, in effect, the managing
general partner merely comprises an activity which
primarily benefits applicant.

In re Integrated Resources, 218 USPQ at 831.
The record makes clear that Applicant’s advertising and marketing activities are
performed for its own benefit, and are part and parcel of acting as an agent or product
administrator. In the absence of evidence that Applicant provides advertising or
marketing services for unrelated parties, it cannot establish that its mark is entitled
to registration for the advertising and marketing services identified in the
application.
Whether the Specimens Show Use of the Mark
in Connection With the Identified Services

A service mark is “any word, name, symbol, or device, or any combination thereof
… [used] to identify and distinguish the services of one person … from the services of
others and to indicate the source of the services, even if that source is unknown.”
15 U.S.C. § 1127. A service mark must be “used in such a manner that it would be
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readily perceived as identifying” the services, which is “determined by examining the
specimens of record in the application.” In re Moody’s Investors Service Inc., 13
USPQ2d 2043, 2047 (TTAB 1989); see also In re Volvo Cars of North America Inc., 46
USPQ2d 1455, 1458 (TTAB 1998) (a mark “must be used in a manner calculated to
project to purchasers or potential purchasers a single source or origin” for the
services, but mere intent that it function as a mark is not sufficient); In re Duratech
Industries Inc., 13 USPQ2d 2052 (TTAB 1989). “At a minimum, the specimen must
show a direct association between the services and the mark sought to be registered.”
In re Osmotica Holdings Corp., 95 USPQ2d 1666, 1668 (TTAB 2010); see also, In re
Advertising & Marketing Development, 2 USPQ2d at 2014. That is, “[a] specimen that
shows only the mark with no reference to, or association with, the services does not
show service mark usage.” In re DSM Pharmaceuticals, Inc., 87 USPQ2d 1623, 1624
(TTAB 2008).
Here, none of the specimens Applicant submitted show a direct association
between advertising or marketing services and the proposed mark NATIONAL
AUTOMOTIVE EXPERTS. In fact, none of the specimens mention advertising or
marketing services at all.
The original specimen, like those reproduced above, instead references products
such as service contracts, warranties and the like:
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Serial No. 86118769

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Another specimen indicates that one of these products is “distributed by NATIONAL
AUTOMOTIVE EXPERTS,” which, like the specimens reproduced above, suggests
that Applicant provides agency, product administration or distribution services, but
not advertising or marketing services to others:8

8 While the Shortfall specimen reproduced in the previous section indicates that the
Shortfall program is “marketed by” Applicant, as the Examining Attorney points out “as a
general rule, an entity that advertises for another company does not put its contact
information directly on the advertisement itself … the likely interpretation of the language
‘marketed by’ is that Applicant is the distributor for the insurance program.” Examining
Attorney’s Appeal Brief at 11. In fact, Applicant refers to itself as a product administrator
or agent of Shortfall-type programs, so we agree with the Examining Attorney’s
assessment. In any event, any advertising or marketing services Applicant provided (which
are not reflected on the specimen) were on behalf of Applicant’s sister company NWAN
rather than services provided to “others.”
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In short, while consumers may view NATIONAL AUTOMOTIVE EXPERTS as a
service mark for Applicant’s product adminstration, distribution or agency services,
there is nothing in any of the specimens (all of which have now been reproduced in
this decision), or anywhere in the rest of the record, which associates the proposed
mark with advertising or marketing services provided to others. In re Adair, 45
USPQ2d 1211, 1214-15 (TTAB 1997); In re Johnson Controls Inc., 33 USPQ2d 1318,
1320 (TTAB 1994). Just as in Adair it was “not clear from the record whether
applicant is actually providing design services,” here it is not clear from the record
whether Applicant is providing advertising or marketing services for others.
Moreover, even if it is doing so, the specimens do not reflect it.
We recognize that “the nature of the services does not need to be specified in the
specimens,” but at the same time, “there must be something which creates in the
mind of the purchaser an association between the mark and the service activity.” In
re Johnson Controls, 33 USPQ2d at 1320. Here there is no such association.
Therefore, the specimens are unacceptable.

Decision: All three refusals to register Applicant’s proposed mark are affirmed.