Willey Motors, Inc.

Trademark Trial and Appeal Board

Jul 24, 2002

No. 75606003 (T.T.A.B. Jul. 24, 2002)

Paper No. 16
Bottorff
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Willey Motors, Inc.
________
Serial No. 75/606,003
_______
Thomas J. Rossa of Holme Roberts & Owen for Willey Motors,
Inc.
Anne C. Endieveri, Trademark Examining Attorney, Law Office
109 (Ronald R. Sussman, Managing Attorney).
_______
Before Hanak, Hairston and Bottorff, Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
Applicant seeks registration on the Principal Register
of the mark ONE FAIR PRICE (in typed form) for services
recited in the application as “automobile dealerships.”1
The Trademark Examining Attorney has refused
registration of applicant’s mark on two grounds. She has
1 Serial No. 75/606,003, filed December 15, 1998. The
application is based on use in commerce under Trademark Act
Section 1(a), and May 1997 is alleged as the date of first use of
the mark anywhere and the date of first use of the mark in
commerce.
Ser. No. 75/606,003
2
refused registration under Trademark Act Section 2(d), on
the ground that applicant’s mark, as applied to applicant’s
services, so resembles the mark FAIR PRICE, previously
registered on the Supplemental Register for “leasing of
automobiles” in Class 39 and for “automobile dealership”
services in Class 35,2 as to be likely to cause confusion,
to cause mistake, or to deceive. She also has refused
registration under Trademark Act Section 2(e)(1), on the
ground that the mark is merely descriptive of applicant’s
recited services.
When the refusals were made final, applicant filed
this appeal. The appeal has been fully briefed, but
applicant did not request an oral hearing.
We turn first to the mere descriptiveness refusal
under Section 2(e)(1). A term is deemed to be merely
descriptive of goods or services, within the meaning of
Trademark Act 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.
See, e.g., In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed.
Cir. 1987), and In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215, 217-18 (CCPA 1978). A term need not
2 Registration No. 2,200,768, issued October 27, 1998.
Ser. No. 75/606,003
3
immediately convey an idea of each and every specific
feature of the applicant’s goods or services in order to be
considered merely descriptive; it is enough that the term
describes one significant attribute, function or property
of the goods or services. See In re H.U.D.D.L.E., 216 USPQ
358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB
1973). 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 those 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. In re Bright-
Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
We find that the phrase ONE FAIR PRICE is merely
descriptive of a feature or characteristic of applicant’s
automobile dealership services. Specifically, it
immediately and directly informs purchasers that
applicant’s dealership has a “no-haggle” sales policy
pursuant to which the dealer sets “one fair price” for a
particular car which is applicable to all retail
purchasers, rather than negotiating the price for that car
with each individual purchaser.
Ser. No. 75/606,003
4
That applicant’s dealership operates under such a
policy is not in dispute. Applicant’s yellow page and
newspaper advertisements include, along with applicant’s
ONE FAIR PRICE logo, statements like: “No Hassle – Always
Our Best Low Price”; “No Haggling – All Cars Marked With
Our ‘One Fair Price’ - Our Best Price!”; “No Haggling – We
Give You Our Best Price, A Fair Price Upfront”; “No Hassle
– Salaried Salespeople Not Commissioned”; We Shop the
Competition for You – It’s Fast, Fair and Easy.”
Additionally, the Trademark Examining Attorney has
made of record excerpts of articles obtained from the NEXIS
database which show that applicant is not the only
automobile dealer that operates pursuant to this “no
haggle” sales policy, and that the phrase “one fair price”
has been used descriptively in reference to such other
dealers.3 For example (emphasis added):
HEADLINE: The new deal in used-car sales; as
chains of no-haggle, low-pressure superstores
move in across the nation, traditional auto
dealers aren't ready to surrender - but they
are watching. BODY: ...pressure, no
negotiating. The billboard greeting motorists
on U.S. Highway 41 sums it up. “No haggling?
One fair price?" asks a comely blond. “Where
3 Applicant’s objections to this NEXIS evidence on the grounds of
hearsay, lack of completeness and irrelevance are not well-taken.
See, e.g., In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d
1859 (Fed. Cir. 1987); In re Medical Disposables Co., 25 USPQ2d
1801 (TTAB 1992).
Ser. No. 75/606,003
5
am I, Oz?" (Chicago Tribune, February 16,
1997);
HEADLINE: One-price auto dealership: Some like
it; others waiting. BODY: “...go back to the
old way of doing business,” he said. “It's just
a better way to deal with people. You offer
one fair price to everybody. the old way isn't
wrong, but it's different, and it's not the way
I want to operate." (Richmond Times-Dispatch,
January 4, 1993).
The phrase is used in a similarly descriptive manner in
articles about other goods and services:
The study recommends the federal government
“take the lead in negotiating a pharmaceuticals
peace treaty, which would set one fair price
for each drug for all of the world's wealthy
nations, high enough to finance all needed
research.” The report... (American Health
Line, March 7, 1995);
...sanity. Harkening back to the good old days
when quality, value and customer service were
the norm, owner Ellen Kaimowitz's dictum is
“One fair price all the time” - usually at 20
percent less than department store prices.
Specializing in sportswear... (The Boston
Globe, October 3, 1993).
Based on this evidence, and on the normal meaning of
the words as they would be understood when used in
connection with automobile dealership services, we find
that ONE FAIR PRICE merely describes this feature or
characteristic of applicant’s automobile dealership
services. Other dealers with similar sales policies have a
Ser. No. 75/606,003
6
competitive need to use this phrase in connection with
their services, and no single entity may appropriate the
phrase to its exclusive use by means of trademark
registration. We are not persuaded by applicant’s
arguments to the contrary.
Therefore, we affirm the mere descriptiveness refusal
under Section 2(e)(1).
However, we reverse the Trademark Examining Attorney’s
Section 2(d) refusal. Applicant’s services, as recited in
the application, are legally identical to the services
recited in the prior registration, and must be presumed to
be marketed in the same trade channels and to the same
classes of purchasers. Applicant’s arguments to the
contrary, which are based on applicant’s contentions
regarding the nature of registrant’s actual services (as
opposed to the services as recited in the registration),
and on the geographic distance between applicant and
registrant, are not well-taken. See Canadian Imperial Bank
of Commerce v. Wells Fargo Bank, N.A., 811 F.2d 1490, 1
USPQ2d 1813 (Fed. Cir. 1987); In re Infinity Broadcasting
Corp. of Dallas, 60 USPQ2d 1214 (TTAB 2001).
However, the cited prior registration is a
Supplemental Register registration. It is settled that a
mark registered on the Supplemental Register is entitled to
Ser. No. 75/606,003
7
a narrow scope of protection, and that it will preclude
registration of a later-filed mark only when the two marks
are substantially similar. See, e.g., In re The Clorox
Company, 578 F.2d 305, 198 USPQ 337 (CCPA 1978); In re
Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994); In re
Central Soya Company, Inc., 220 USPQ 914 (TTAB 1984); and
In re Hunke & Jochheim, 185 USPQ 188 (TTAB 1975).
We find that applicant’s mark is not substantially
similar to the prior registered mark, because the two marks
have distinctly different connotations. As discussed
above, applicant’s mark ONE FAIR PRICE immediately connotes
and describes a significant feature of applicant’s
services, i.e., the “no-haggle” sales policy. The mark
FAIR PRICE does not carry that connotation, but instead is
a more generalized, laudatory phrase. We are not persuaded
by the Trademark Examining Attorney’s argument that the two
marks mean the same thing. This difference in connotation
is sufficient to place applicant’s mark outside the scope
of protection to be accorded to the prior Supplemental
Registration mark.
Additionally, we note that automobile dealership
services generally involve expensive goods, i.e.,
automobiles, which typically are not purchased on impulse,
but rather with some degree of care. This fact also weighs
Ser. No. 75/606,003
8
against a finding of likelihood of confusion. See Weiss
Associates, Inc,. v. HRL Associates, Inc., 902 F.2d 1546,
14 USPQ2d 1840 (Fed. Cir. 1990).
In summary, for the reasons discussed above, we find
that confusion is not likely. We accordingly reverse the
Section 2(d) refusal.
However, for the reasons discussed above, we affirm
the Section 2(e)(1) mere descriptiveness refusal.
Registration to applicant is refused.