Descriptive Use Of Applied-For Mark On Website Is Fatal To Registration

A recent non-precedential opinion from the TTAB emphasizes the need for brand owners to be conscious of how they use potentially descriptive brands.

U-Haul International, Inc. applied for five TRAILERSHARE-formative trademarks covering rentals of trucks, trailers, vans, vehicles, as well as rentals of portable moving and storage units.  The Examining Attorney refused registration of the application for TRAILERSHARING as being merely descriptive of the identified services, and similarly refused registration of the other TRAILERSHARE-formative marks, absent a disclaimer of the coined term.

On appeal to the TTAB, the Examining Attorney relied on the dictionary definitions of the individual terms “trailer” (“a nonmotorized vehicle designed to be pulled behind a motor vehicle”), and “share” (“to allow someone to use or enjoy something that one possesses”) to argue descriptiveness, citing U-Haul’s own descriptive use of the coined term in support of the refusal.  On its website, U-Haul stated:  “Truck and trailer sharing refers to rental services intended to substitute for private truck ownership,” and that its services are “built on a model of sharing, where customers move each rental from one area to another to be shared continuously.  Sharing rental trucks and trailers is at the foundation of our rental products . . . .”  Even U-Haul’s submitted specimen stated that “[s]hared use of U-Haul trailers reduces the cost for users and reduces the need to build new trailers, which makes for a win-win-win situation environmentally, socially and economically.”  The Board found that U-Haul’s provision of a descriptive definition for the coined phrase, and its descriptive and textual use of the phrase on its website and in marketing and advertising materials offered sufficient support for the PTO’s conclusion that TRAILERSHARE was merely descriptive. 

The Board rejected U-Haul’s argument that the marks were suggestive, rather than descriptive, because “sharing” implies a non-financial, personal interaction, whereas U-Haul’s service is a financial transaction equivalent to “rental” rather than “sharing.”  In response, the Board noted that the dictionary definition of the term “sharing” makes no reference to the exchange of money and there was nothing in the dictionary to support the conclusion that for-profit trailer rental services should fall outside the definition.  More importantly, U-Haul’s argument was undermined by its own specimen of use, which stated that it was “built on a model of sharing,” but referred to rentals for a fee.  The Board stated:  “In short, when the term ‘trailer’ is combined with forms of the term ‘share,’ the mark as a whole . . . does not convey ‘any distinctive source-identifying impression contrary to the descriptiveness of the individual parts.’”

The case is In re U-Haul International, Inc., Ser. Nos. 86757544, 86757575, 86757589, 86757631, and 86757635 (TTAB Nov. 17, 2017).