The word “cars” is a synonym for “automobiles” (go figure!). But in the field of “software for capturing road data and determining safe curve speeds for automobiles, as well as hardware for capturing telemetry and road data,” the word “cars” as a trademark impermissibly describes the goods and services in that field, according to the Trademark Trial and Appeal Board of the United States Patent and Trademark Office. The Board recently affirmed a Trademark Examining Attorney’s refusal to register the CARS mark as a result.
When a mark is used on or in connection with goods or services, the mark cannot be “merely descriptive” of those goods or services under the Lanham Act. “Merely descriptive” means the mark immediately gives the viewer information about some characteristic of the goods or services with which the mark is used.
“Suggestive” marks, on the other hand, don’t directly describe the goods or services. Those marks are allowed because they require some imagination or thought by the consumer to realize what’s being offered (e.g., SWEETARTS for candy).
The Board analyzes only the identification of goods and services in the application and not what the record before the Board reveals about the goods and services.
In affirming the CARS cancelled registration, the Board considered evidence establishing that “safe curve speed determinations are done for cars, and that cars often are used to gather the necessary information for such determinations, in that hardware and software installed in cars driven over the roads at issue collect the information.” Other companies in that field would use the term “cars” to describe their services in relation to curve speed determinations. The Board found that the Applicant even used the description “for automobiles” in its application – a signal that “cars” is a major part of describing curve speed determinations.
The Board was also persuaded by evidence showing that the word “cars” is generally used in the automobile software field, noting three other similar software’s websites used “car” and “cars” in describing software which collected data on a car’s speed while it travelled or monitored engine performance and functionality.
The Board rejected the Applicant’s argument that CARS constituted “a complete, indivisible hardware and software unit” used by state and local governments to gauge speed data because that description never made it to the actual application, so the Board could not consider that description.
The Board also dismissed the Applicant’s “double entendre” argument that CARS was an acronym for “Curve Advisory Reporting System.” The Applicant failed to submit evidence that consumers actually knew that CARS meant anything but a synonym for automobiles, and the application only included the CARS mark and not the words in the acronym. The Board could only assess the meaning of the mark from the perspective of what the consumer actually sees – CARS.
The Board concluded that consumers would see CARS and understand that the features of the hardware and software involve cars and are used in cars, making the CARS mark merely descriptive and un-registerable as a trademark.
Potential applicants should come up with marks that are at least suggestive and not descriptive of the products and services listed in the application. While a suggestive mark is stronger and more registerable, a descriptive mark that has acquired distinctiveness may also be registered.
For considerations in selecting a mark, visit the International Trademark Association (INTA) page on developing a list of potential trademarks.
Randall J. Collins is an Intellectual Property Associate in Fox Rothschild’s Philadelphia office.