IP Law Daily, TRADEMARK—TTAB: Combination of “CAR” and “AI” does not make registrable mark, (Oct 12, 2022)

By Patricia K. Ruiz, J.D.

The applicant did not submit any admissible evidence to show that CARAI is suggestive rather than merely descriptive.

The proposed mark CARAI, a combination of the two descriptive terms “CAR” and “AI,” is merely descriptive and is not registrable, held the Trademark Trial and Appeal Board (TTAB), affirming refusal by the trademark examining attorney. Absent a showing that the applicant’s mark has acquired distinctiveness, the TTAB stated, the applicant’s competitors in the vehicle diagnostics industry should remain free to use CARAI and variations thereof for their own automobile diagnostics goods and services using artificial intelligence (In re Innova Electronics Corp., September 21, 2022, Adlin, M.).

Application. Innova Electronics Corporation sought a Principal Register registration for the proposed mark CARAI in standard characters for “downloadable and recorded computer application software for mobile phones, portable media players and handheld computers for automotive performance diagnostics; vehicle data acquisition and transfer devices, namely, OBD OBD2 code readers, OBD scanners, and programmed wireless communication devices, all of which are operative to access and transfer, either wirelessly or via a hard wired connection, vehicle diagnostic data representative of the operating condition of a vehicle or vehicle system” in International Class 9; and “vehicle diagnostic services, provided using devices which access and communicate, either wirelessly or via a hard wired connection, vehicle diagnostic data representative of the operating condition of a vehicle or vehicle system to any one or more of a vehicle diagnostic database, a diagnostic resource, namely, a vehicle parts supplier or repair facility, and a non-diagnostic resource, namely, a credit card or payment processing facility” in International Class 42. The examining attorney refused registration on the ground that the proposed mark is merely descriptive of the identified goods and services.

Appeal. On appeal, the examining attorney relied on the dictionary definition of the proposed mark’s constituent terms and the term for which the AI component of the applicant’s proposed mark is an acronym. Further, the examining attorney relied on evidence that AI is used in automobile diagnostics and has been since at least 1986, citing several articles on the use of AI in automotive diagnostics and maintenance. Based on the evidence, the examining attorney argued the proposed mark CARAI means “artificial intelligence for cars” and that “this wording describes software, devices, and services for diagnosing an automobile’s performance, featuring artificial intelligence.”

The applicant did not submit any admissible evidence but argued that CARAI is suggestive rather than merely descriptive, as it is too broad to describe these goods with any immediacy or particularity. Thus, while a consumer may view the wording “CAR AI” as meaning “artificial intelligence for automobiles,” the proposed mark does not describe the goods and services identified in the involved application with particularity. The applicant argued that the examining attorney did not present any evidence demonstrating that any consumers who know what the goods and services are would not just as plausibly understand the mark to describe the on-board artificial intelligence capabilities of a vehicle that are to be diagnosed, as opposed to describing the artificial intelligence features of goods and services that are used to facilitate the diagnosis.

The TTAB held that the record leaves no doubt that CARAI is merely descriptive because it immediately conveys knowledge of a quality, feature, function, or characteristic of the applicant’s goods or services. Relevant consumers will immediately understand the goods and services utilize Ai in connection with cars because AI is commonly and increasingly used in vehicle diagnostics. The combination of the descriptive terms “CAR” and “AI” does not make the composite term “CARAI” registrable, the TTAB held, reasoning that not only is each term merely descriptive of the applicant’s goods and services, but when those terms are combined, the resulting combination CARAI does not evoke a new nondescriptive commercial impression. Further, the applicant did not suggest any alternative commercial impression resulting from the combination of the descriptive terms. Thus, the composite term CARAI is merely descriptive.

The case is Serial No. 90174255.

Attorneys: Mark B. Garred (Stetina Brunda Garred & Brucker) for Innova Electronics Corp. Betty Chang for the USPTO.

Companies: Innova Electronics Corp.

Cases: Trademark USPTO