Norm Reeves, Inc.

Trademark Trial and Appeal Board

Oct 28, 2004

No. 76358351 (T.T.A.B. Oct. 28, 2004)

Mailed: October 28, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Norm Reeves, Inc.
________
Serial No. 76358351
______
William J. Brucker of Stetina Brunda Garred & Brucker for
Norm Reeves, Inc.
David C. Reihner, Trademark Examining Attorney, Law Office
111 (Craig Taylor, Managing Attorney).
_______
Before Seeherman, Chapman and Holtzman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
On January 11, 2002, Norm Reeves, Inc. (a California
corporation) filed an application, based on Section 1(a) of
the Trademark Act, 15 U.S.C. §1051(a), to register the mark
PRICE PROTECTION GUARANTEE on the Principal Register for
services amended to read “automobile dealerships” in
International Class 35. Applicant’s claimed dates of first
use and first use in commerce are October 15, 1985 and July
1, 2000, respectively.
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76358351
2
The Examining Attorney originally refused registration
on the grounds that (i) the phrase PRICE PROTECTION
GUARANTEE, when used in connection with applicant’s
identified services, is merely descriptive of those
services under Section 2(e)(1) of the Trademark Act, 15
U.S.C. §1052(e)(1), and (ii) the phrase does not function
as a service mark to identify applicant’s automobile
dealership services under Sections 1, 2, 3 and 45 of the
Trademark Act, 15 U.S.C. §§1051, 1052, 1053 and 1127.
In response, applicant argued that the slogan is
registrable as applicant’s service mark, and it is not
merely descriptive, but in the alternative, applicant
offered a claim of acquired distinctiveness under Section
2(f) of the Trademark Act, 15 U.S.C. §1052(f), along with
the declaration of Gary Lindman, president of Hendry
Lindman Feltman and Associates Advertising (applicant’s
primary advertising agency).
The Examining Attorney withdrew the refusal under
Section 2(e)(1), but continued the refusal to register
based on failure to function as a service mark. He also
found that the evidence was “inadequate to prove
distinctiveness of the wording ‘Price Protection
Guarantee.’”
Ser. No. 76358351
3
Applicant again argued the slogan functions as a
service mark for applicant’s services as an inherently
distinctive mark, but in the alternative, applicant again
referenced its claim under Section 2(f) and included
additional evidence in the form of a supplemental
declaration of Gary Lindman and the declaration of William
J. Brucker, applicant’s attorney.
The Examining Attorney made final the refusal to
register on the basis that the phrase does not function as
a service mark pursuant to Sections 2, 3 and 45 of the
Trademark Act;1 and he took the position that applicant’s
claim of acquired distinctiveness under Section 2(f) was
“unnecessary, and has been marked surplusage” (Final Office
action, unnumbered page 3) because the refusal of the mark
as merely descriptive under Section 2(e)(1) of the
Trademark Act had been withdrawn.2
1 Applicant’s assertion that there was “no refusal based on
Section 2” (brief, p. 4) is incorrect.
2 Although the Examining Attorney characterized the evidence of
acquired distinctiveness as unnecessary, it is clear that he
considered the evidence but found it inadequate. (See e.g.,
February 24, 2003 second Office action.) It is equally clear
that applicant was not deterred from submitting such evidence by
the Examining Attorney’s comments. Applicant submitted Section
2(f) evidence on two occasions. It argued that the phrase PRICE
PROTECTION GUARANTEE functions as an inherently distinctive
service mark but, if not, that its evidence establishes that
consumers recognize the phrase as applicant’s service mark.
Section 2(f) is an appropriate method of establishing that a
mark functions as a trademark and/or service mark. To be clear
about this record, we have considered all evidence, including
applicant’s Section 2(f) evidence, in determining this case. See
Ser. No. 76358351
4
Applicant appealed to the Board. Both applicant and
the Examining Attorney have filed briefs, but an oral
hearing was not requested.
The Examining Attorney’s position is essentially as
follows (brief, unnumbered pp. 2-3):
…the designation “Price Protection
Guarantee” does not act as a source
identifier, or service mark, for
applicant’s automobile dealerships.
The designation is an informational
commercial slogan indicating that a
seller of goods will continue to offer
his products at a price advantageous to
purchasers even though the prices of
the goods may fluctuate downward in the
marketplace. Evidence showing use of
the designation “Price Protection
Guarantee” by automobile dealers, as
well as retailers of non-automotive
products, as wording representing a
commercial promise made to their
customers was submitted… . Applicant’s
commercial promise is that if, after
the sale of a vehicle, the purchaser
finds a similar vehicle sold by another
automobile dealer at a lower sales
price, applicant will either pay the
purchaser the price difference between
the vehicles or repurchase the vehicle
from him. Because the designation
“Price Protection Guarantee” identifies
a sales inducement, in that it is a
commercial promise for low-priced
automobiles, it does not act as a
source identifier for applicant’s
services.
In re Owens-Corning Fiberglas Corp., 774 F.2d 116, 227 USPQ 417,
422 (Fed. Cir. 1985)(“We see no reason in law or policy to
prohibit OCF’s attempted reliance on Section 2(f)….”)
Ser. No. 76358351
5
In support of his position, the Examining Attorney
submitted printouts of pages from several excerpted stories
retrieved from the Nexis database, and printouts from
several websites, to show that “price protection guarantee”
is a common commercial and informational phrase used in the
retail industry. Examples of these uses of the phrase as a
common merchandising slogan are reproduced below:
Headline: Sun TV Is Bullish About Its
Future
…And on Friday, it extended new price-
protection guarantees and other
customer-service initiatives to its
Cleveland-area stores. “We have a
third-party company clip our national
competitors’ ads,” May said. “If you
bought a television for $100 at Sun and
then we saw… . “The Plain Dealer,”
October 19, 1997;
Headline: PE Makers Expected To Stand
Firm On Increases
…Several PE makers already have revoked
30- or 60-day price protection
guarantees extended to some buyers,
industry sources said. “Plastics
News,” January 29, 2001;
Headline: Torch Bearers; National
Sales and Marketing Awards
…campaign to tackle buyers’ fears with
a “What’s stopping you? We gochta [sic]
covered!” theme. The plan offered
consumers innovative assistance
programs, such as price protection
guarantees for buyers who had to sell
their existing homes, firm base prices
on standard floor plans, … “Builder,”
March 1, 2002;
Ser. No. 76358351
6
Headline: The Old Pillars of New
Retailing
…customers can return a bike within 30
days and exchange it for another) and a
90-day price protection guarantee (if a
buyer finds the same bike in
Connecticut at a lower price within 90
days, … “Harvard Business Review,”
April 2001;
Headline: Turning Philadelphia Into a
Three-Chain Aftermarket; Royal Auto
Supply
…Sunday, Royal runs a full page ad in
the Philadelphia Enquirer which
includes the “We’re Sensitive” motto,
and Royal’s “Price Protection”
guarantee.
The Price protection guarantee states
that Royal “will not be undersold. We
will meet any competitor’s price on any
item we carry.” … “Home & Auto,”
August 1, 1985;
September 19, 2002 CarsDirect.com
Keeps Consumers Up to Speed on Best
Monthly Vehicle Bargains; Online
Leader’s Pricing Experts Help Shoppers
Locate Top Bargains at Guaranteed
Upfront Prices
…CarsDirect is the only multi-brand car
buying website offering this level of
real-world price precision.
“CarsDirect.com is committed to making
the online car buying process easy,
fast and convenient,” said Bob Brisco,
CEO, CarsDirect.com. “By keeping
consumers current on every available
rebate and program right on our
website, we are eliminating what has
historically been the most mysterious
element of the buying process--pricing.
Coupled with our unique Price
Protection Guarantee, this benefit
assures our customers that they are
Ser. No. 76358351
7
getting the best possible price on the
cars they buy.”
www.wosfmagazine.com;
Technology Pipeline Inc. Catalog
Notebooks … Desktop Computers …
Printers … Miscellaneous No price
protection guarantee available.
www.futuretechdesigns.com;
Graffiti Audio-Video
Guarantee
Price Protection Guarantee
We GUARANTEE our prices for 100 Days
within a 100 Mile Radius with a 100%
Satisfaction Guarantee you’ll have the
lowest price in the area -- including
prices from Best Buy, Circuit City,
or any other so-called discount outlet!
www.graffitiaudio.com;
Norris MotorSports
Experience The Norris Motor Sports
Edge!
-Best Price Protection Guarantee on New
and Used Motorcycles, ATVs, Jet Skis or
Scooters …
www.norrismtrsports.com;
Yark Automotive Group
Customer Support
Lowest New Car Prices -- Guaranteed
Simply put, at Yark Automotive Group
you’ll save money. We guarantee it in
writing. With our 110% Price
Protection Guarantee you can buy with
complete confidence, knowing that you
paid the absolute lowest price for your
new vehicle.
www.yarkauto.com;
Weston-on-the-Web
Rick Case Honda
Lowest Price Protection Guarantee
If you find some New Civic or Audi
within 3 days of purchase, we will pay
Ser. No. 76358351
8
the difference or buy your car back…
www.westonontheweb.com;
Whitaker Buick Jeep
Why Buy From Whitaker Buick Jeep
…
4. Price protection guarantee on new
vehicles…
www.whitakerauto.com;
Senior Times Financial Forum
Good Buying Tips for Everyone
…Businesses set their own prices. It
is your job to shop around and compare,
not just complain later if you discover
the product cheaper somewhere else.
(Ask if the seller offers a “price
protection guarantee.” Not every store
does.)
www.theflashes.net; and
Elco Chevrolet
110% Price Protection Guarantee
Certain Restrictions Apply…
www.elcochevy.com.
In addition, the Examining Attorney requested that the
Board take judicial notice of Webster’s Third New
International Dictionary (1993) definition of “guarantee”
as “3c. an expressed assurance of satisfaction with a
definite promise of purchase money to be returned or goods
to be replaced or other specified assurance.” The request
is granted. See TBMP §704.12 (2d ed. rev. 2004).
Applicant essentially contends that the proposed mark
makes a commercial impression separate from the other
elements in the material in which the mark is used, thereby
creating the necessary nexus between the mark and the
Ser. No. 76358351
9
services; that this mark is distinct from the car
descriptions, assurances of quality and price quotes also
found in the advertisements; that the phrase will be
recognized by consumers as a source identifier; that
applicant’s mark is not an informational slogan and, in any
event, slogans are not per se unregistrable; that
applicant’s mark, as used, stands independent of other
textual or spoken material in both print and in broadcast
advertisements; that the Examining Attorney’s evidence of
use of the phrase “PRICE PROTECTION GUARANTEE” does not
show wide and descriptive use in the automobile sales
market (with only a few stories and websites relating to
the automobile sales industry); that, in any event,
applicant has taken action against other users of the
phrase in the car sales industry in the form of cease and
desist letters and obtaining a license agreement with a
particular licensee; that applicant’s use is valid service
mark use as a source identifier; that to the extent the
mark is a “commercial promise,” it distinguishes applicant
from other automobile dealerships as applicant assures the
customer that applicant’s price will not exceed prices from
other dealerships and, therefore, applicant has created a
source identifying mark; that the mark is inherently
distinctive, but if not, then it has acquired
Ser. No. 76358351
10
distinctiveness as shown by applicant’s evidence; and that
the phrase “PRICE PROTECTION GUARANTEE” is not an
informational slogan, but rather serves the source-
identifying function of a service mark which has achieved
an acquired distinctiveness for applicant’s services.
Applicant submitted dictionary definitions of the
words “price,” “protect” and “guarantee”; and as we noted
earlier, the declaration and supplemental declaration, each
with exhibits, of Gary Lindman, president of Hendry Lindman
Feltman and Associates Advertising, applicant’s primary
advertising agency; and the declaration, with exhibits, of
William J. Brucker, applicant’s attorney.
Applicant’s specimen is reproduced below:
Ser. No. 76358351
11
The asserted mark PRICE PROTECTION GUARANTEE appears
in the circle in the center of the specimen advertisement.
The wording in the black outer ring of the circle reads
“See Us First · See Us Today · See Us First · See Us
Today”; and the wording inside the circle below the words
“Price Protection Guarantee” reads “If you can find the
same Ford, Lincoln, Mercury or Isuzu for less within 3
days, Cerritos Ford, Lincoln, Mercury, Isuzu will pay you
the difference or buy your vehicle back.”
In the declaration of Gary Lindman, he avers that he
has been the active account manager for applicant’s
advertising since 1990; that since at least 1989 and
continuously since that date, “PRICE PROTECTION GUARANTEE”
has been a “key marketing platform” for applicant
(paragraph 5); that in print and broadcast media the mark
PRICE PROTECTION GUARANTEE is highlighted and made to stand
out; that consumers encounter applicant’s mark PRICE
PROTECTION GUARANTEE in applicant’s brochures and signage
at its automobile dealerships; that one of applicant’s
dealerships, Norm Reeves Honda Superstore, is nationally
known and was recognized by the Honda Corporation as the
number one Honda dealership for the eleventh consecutive
year in 2001; that applicant has obtained a California
Ser. No. 76358351
12
state registration of PRICE PROTECTION GUARANTEE;3 that
applicant advertises through television, radio and
newspapers; that applicant’s Cerritos, California
dealership alone spends about $1.25 million in
advertisements annually, and two other locations (West
Covina and Huntington) spend an additional $480,000
annually each in advertising; that the mark PRICE
PROTECTION GUARANTEE is “featured, shown or mentioned in
95% of all ads of Norm Reeves, Inc.” (paragraph 8); and
that applicant has utilized the mark PRICE PROTECTION
GUARANTEE independent of the verbiage as it appears on the
specimen.
William J. Brucker avers in his declaration that
“Applicant regularly polices its marks in the marketplace,
and continually monitors the marketplace for infringing
activity” (paragraph 3); that he has forwarded “numerous
cease and desist demands to other dealerships in the
marketplace on behalf of Applicant in relation to a number
of its trademarks, including PRICE PROTECTION GUARANTEE”
(paragraph 3);4 and that applicant (as licensor) and D.H.H.,
3 A state registration is incompetent to establish that the mark
shown therein has ever been used, or that the mark is entitled to
Federal registration. See TBMP §704.03(b)(1)(A) (2d ed. rev.
2004), and the cases cited in footnote 151 therein.
4 Mr. Brucker gave three specific examples, with one dealership
writing to say it would refrain from using the term PRICE
PROTECTION GUARANTEE, one denying applicant had exclusive rights
Ser. No. 76358351
13
LLC, dba David Hobbs Honda (as licensee) executed a
“Trademark and Copyright License Agreement” dated June 7,
2000, regarding use of the mark PRICE PROTECTION GUARANTEE
for automobile sales and leasing services in Wisconsin,
Illinois and Indiana.
Use of a designation to convey advertising
information, rather than to identify and indicate the
source of the services, is not service mark use. See TMEP
§1301.02(a) (3d ed. 2002), and cases cited therein. The
determination of whether an asserted mark functions as a
service mark depends upon how it is used and how potential
purchasers will perceive it. See In re Information
Builders Inc., 213 USPQ 593 (TTAB 1982).
Merely because a term or phrase is used in advertising
does not mean that consumers will perceive it as a
trademark or service mark. As explained by our primary
reviewing court in In re Bose Corp., 546 F.2d 893, 192 USPQ
213, 215 (CCPA 1976):
The Trademark Act is not an act to
register mere words, but rather to
register trademarks. Before there can
be registration, there must be a
trademark [or service mark], and unless
words have been so used they cannot
qualify. In re Standard Oil Co., 47
but electing to discontinue use for business reasons, and one not
responding, but assertedly modifying its advertisements.
Ser. No. 76358351
14
CCPA 829, 275 F.2d 945, 125 USPQ 227
(CCPA 1960).
Based on the record before us, we find that the phrase
“Price Protection Guarantee” is used as an informational
phrase in retail selling in general.5 The evidence shows
that the phrase is used by merchants as a way to assure
consumers that they will get the best price on a product or
a service. Thus, we find that applicant’s applied-for
phrase PRICE PROTECTION GUARANTEE is not inherently
distinctive. The only remaining question is whether
applicant’s use of this common phrase has caused consumers
to perceive it as a service mark for applicant’s automobile
dealerships.
There is evidence from applicant’s primary
advertising agency that PRICE PROTECTION GUARANTEE has been
used by applicant since 1989 in advertisements in
newspapers, and on the radio and television; and that
applicant expended significant amounts of money on those
advertisements. However, upon review of such
advertisements (including applicant’s specimen), we find
5 We note applicant’s contention that the Examining Attorney’s
evidence of uses of “price protection guarantee” in relation to
any goods or services other than automobile dealerships is
irrelevant. We disagree; and we have considered all of the
evidence submitted by the Examining Attorney because the uses of
“price protection guarantee” in relation to other goods and
services are relevant to ascertain how consumers perceive the
phrase.
Ser. No. 76358351
15
that these uses do not convey to the purchasing public that
PRICE PROTECTION GUARANTEE is a service mark identifying
applicant’s automobile dealerships. The wording PRICE
PROTECTION GUARANTEE in the newspaper advertisements almost
always appears as NORM REEVES PRICE PROTECTION GUARANTEE in
the same type size and font and on a single line. Even if
it appears on multiple lines, it is the same font and size.
As a result, the words PRICE PROTECTION GUARANTEE do not
stand out as a separate service mark, but would be
perceived by consumers only as a benefit offered by the
Norm Reeves dealerships.
In applicant’s signage and the posters at its
dealerships, the phrase PRICE PROTECTION GUARANTEE also
appears in the same type font and size as NORM REEVES, but
with an inconsistent pattern of separations of the words.
(For example, NORM REEVES PRICE PROTECTION GUARANTEE all on
one line; line 1 NORM REEVES HONDA, line 2 PRICE
PROTECTION, line 3 GUARANTEE; line 1 NORM REEVES PRICE,
line 2 PROTECTION GUARANTEE.) Again, consumers viewing
these uses would not recognize PRICE PROTECTION GUARANTEE
as a separate service mark.
Applicant’s advertising agent’s examples of television
and radio advertisements likewise show use of the phrase
PRICE PROTECTION GUARANTEE in a merely informational
Ser. No. 76358351
16
manner. For example, one script includes the audio
statements “Your special low price is backed by the
superstores’s exclusive price protection guarantee!” and
“Plus you’ll get a low price guaranteed,” while graphics on
screen show “PRICE PROTECTION GUARANTEE” with the
explanation thereof in smaller print below. (Lindman
declaration, Exhibit 3.) Another television script has the
following: SFX: Cars racing by -- “The lowest interest
rates in years! And the Norm Reeves price protection
guarantee!”; and a radio script has: SFX: Another big
crowd cheer/cars racing by – “And don’t forget the Norm
Reeves price protection guarantee!” (Lindman supplemental
declaration, Exhibits 6-8.)
These uses show that the phrase PRICE PROTECTION
GUARANTEE is informational in nature and would be so
perceived by consumers. We particularly note that many of
the uses of record herein include NORM REEVES with the
applied-for phrase PRICE PROTECTION GUARANTEE, and it is
the former that would be perceived as a service mark. We
are mindful that applicant’s advertising agent has averred
to applicant’s significant advertising expenditures, but
expenditures alone do not prove recognition by the public
of the phrase as a service mark for applicant’s automobile
dealerships. Given the manner in which the phrase PRICE
Ser. No. 76358351
17
PROTECTION GUARANTEE is used in applicant’s advertising, as
exemplified by the exhibits submitted with Mr. Lindman’s
declarations, even significant exposures of such
advertising to the public would not result in consumers’
viewing PRICE PROTECTION GUARANTEE as a mark for
applicant’s automobile dealership services. See In re
Volvo Cars of North America Inc., 46 USPQ2d 1455 (TTAB
1998)(DRIVE SAFELY for automobiles and structural parts
therefor held not to serve to indicate origin of the
goods); In re Manco Inc., 24 USPQ2d 1938 (TTAB 1992)(THINK
GREEN and design for various paper products and
weatherstripping products held not to serve to indicate
origin of the goods); and In re Wakefern Food Corp., 222
USPQ 76 (TTAB 1984)(WHY PAY MORE! for supermarket services
found not merely descriptive, but held not to indicate
origin of the services).
Decision: The refusal to register under Sections 2, 3
and 45 of the Trademark Act on the basis that the mark
does not function as a service mark is affirmed.