Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE MITSUBISHI MOTOR SALES OF AMERICA, INC.
Serial No. 614,923
March 16, 1989
Lee Bendekgey and Nicholas C. Unkovic for Mitsubishi Motor Sales of America, Inc.
Sally Beth Berger
Trademark Examining Attorney
Law Office 4
(Thomas Lamone, Managing Attorney)
Before Rooney, Krugman and Seeherman
Mitsubishi Motor Sales of America, Inc. filed an application to register the mark shown below (the word, CARE disclaimed) for comprehensive automotive vehicle preparation, sales and service programs, namely product training, pre-delivery inspection, vehicle delivery, sales and customer relation follow-up and vehicle maintenance and service follow-up. [FN1]
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
The application is before the Board for determination of applicant's appeal of a refusal to register under Sections 3 and 45 on the ground that the subject matter in connection with which the alleged mark is used is not a service as contemplated by the Lanham Act.
The Examining Attorney takes the position that the activities which applicant considers to be a service are not qualitatively different from what new car dealerships do in the normal course of business. It is customary, asserts the Examining Attorney, for dealerships to perform "dealer preparation" on new cars, show the purchaser how to operate the technical features of a new car, and allow a purchaser to bring a new car in for adjustments for a specified period of time or number of miles after purchase. The Examining Attorney submits that the evidence of record clearly demonstrates that the activities performed in connection with the mark sought to be registered are not separable from applicant's primary activity of selling new cars.
As support for her position, the Examining Attorney submitted excerpts from the Nexis database and documents related to the purchases of a new Toyota Corolla and a new Honda Accord automobile. [FN2]
Applicant disagrees with the Examining Attorney, saying that its services differ in a material, qualitative way from those necessarily offered by a seller of automobiles. While applicant does not dispute the fact that all automobile manufacturers and dealers provide predelivery inspection and warranty services, it argues that "the following additional features provided as part of its comprehensive package of services offered under the DIAMOND CARE plus design mark are unique in the industry":
1. A full tank of gas;
2. A video cassette used to train dealers in the provision of quality assurance services;
3. Audio cassettes provided to customers which contain instruction in the use of the automobile;
4. Personalized, unsolicited telephone calls to every customery (sic);
5. Periodic newsletters; and
Applicant asserts that the Examining Attorney has produced no evidence that any automobile manufacturer or distributor offers any of these services. In 1987 alone, applicant claims, more than $1,500,000 was paid to provide each customer with a tank of gas and nearly $500,000 in carrying out the 1,000 mile Service Invitation.
*2 Among the numerous specimens of record on which the mark is shown are photographs of posters and placards for display in the dealerships which subscribe to this program, decals and key fobs, printed 1,000 mile service invitations, pamphlets and a brochure outlining the several aspects of the program.
It has long been settled that the statute does not distinguish between what is or is not a service on the basis of whether it is a primary service or is merely incidental or ancillary to a primary service. See Astec Industries, Inc. v. Barber-Greene Co., 196 USPQ 578 (TTAB 1977) quoting In re John Breuner Company, 136 USPQ 94 (TTAB 1963).
There is no question in this case that the primary service being performed by applicant is the retail sale of new automobiles. Applicant agrees that all automobile manufacturers and dealers provide predelivery inspection and warranty repairs but contends that there is no evidence in the record showing that the unique features of its own service are offered by other manufacturers or dealers. Applicant points out that the excerpts of news items provided by the Examining Attorney support its contention that its own DIAMOND CARE services are more comprehensive than those offered by competitors.
What the Examining Attorney has provided in its Lexis/Nexis evidence illustrates only that dealers provide some rather nebulous services customarily referred to as "dealer prep" for which varying charges are added to the sales price of the vehicle. If the articles are to be taken at face value, the term "dealer prep" appears not to have a standard meaning.
From The Business Journal--Charlotte
Story # 5
... if a car dealer is offering a special deal on financing, he's going to make that money back on the total cost of the car, on options or on mystery charges such as dealer preparation, ...
From The Christian Science Monitor
Story # 15
Less than 10 percent (of both new and used-car buyers) know exactly what they are doing ... The remaining 90 percent lose approximately $4 billion on the negotiated purchase price of the cars they buy and waste another $500 to $700 million for something they usually do not receive anyway--dealer preparation.
From The Washington Post
Story # 38
Under an agreement with the state, Maryland automobile dealers yesterday promised to itemize the vague "dealer prep" charges that routinely add $150 or more to new car prices. Sometimes the customer gets only a wash and wax for the money.
From The Washington Post
Story # 39
A salesman may also, at his discretion, charge his customer a sum for "dealer's prep"--a vague term for cleaning the car up and getting it ready for a customer.
Applicant's service, on the other hand, "... is a carefully developed, fully tested system of techniques with support materials designed to improve Mitsubishi customer satisfaction levels". Among the unique features are the following: Dealerships which enroll in the program are provided with a dealer kit which includes a series of video tapes for training salesmen with product information on each Mitsubishi model as well as competitive information, "pocket presenters" for salesmen, which are primary source materials for all product information. Dealers are reimbursed for the increased labor time allowances necessitated by the comprehensive predelivery inspection techniques utilized and for the time spent with each customer who accepts the "1000 Mile Service Invitation". The DIAMOND CARE program provides for customer follow-up techniques for use in the sales and service departments and, in some dealerships, the installation of a formal customer relations program employing a full or part-time staff member as a "non-sales-driven liaison" between the departments and the customer.
*3 Applicant uses a mark for these services which is totally different from any mark it uses for its other services or any of its products and which is promoted as a service mark for the noted services.
These services quite obviously enhance the service of selling cars and trucks but that fact is not fatal to its existence as a separable service. While customer satisfaction may well suffer, automobile sales can be accomplished without these additional incentives. See In re Otis Engineering Corporation, 217 USPQ 278 (TTAB 1982). Moreover, apart from showing that some general effort is made by car dealers toward assuring that a new car is clean and driveable and that the customer is informed as to how the various gadgets ordered operate, the Lexis/Nexis evidence fails to support the Examining Attorney's contention that applicant's services are no more than are to be expected from any other car dealer.
In view of the foregoing, it is our opinion that applicant's activities are properly considered to comprise a service within the meaning of the Lanham Act.
Accordingly, the refusal to register is reversed.
L. E. Rooney
G. D. Krugman
E. J. Seeherman
Members, Trademark Trial and Appeal Board
FN1. Ser. No. 614,923 filed August 15, 1986, claiming use since February 1986. Applicant claims ownership of Regn. No. 1,330,069 for the mark TRIPLE DIAMOND SERVICE for light duty automotive vehicle repair and maintenance services, issued April 9, 1985.
FN2. Also submitted was a "survey" of new car dealerships conducted by the Examining Attorney. While we recognize that survey evidence is admissible as an exception to the hearsay rule, that is not so where, as here, the survey is offered to prove facts which the interviewer says she was told by those being interviewed. See Ralston Purina Co. v. Quaker Oats Co., 169 USPQ 508 (TTAB 1971). It is objectionable on a number of other grounds as well, such as the selection of the parties questioned, their expertise, the manner of interview, the framing of the questions, etc. For all of these reasons, the survey evidence has not been considered.