97851338•Innova Electronics Corporation
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THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: September 29, 2026 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Innova Electronics Corporation _____ Serial No. 97851338 _____ Mark B. Garred of Stetina Brunda Garred & Brucker, for Innova Electronics Corporation. Kenneth Leichter, Trademark Examining Attorney, Law Office 134. Sophia Kim, Managing Attorney. _____ Before Goodman, Larkin and Lebow, Administrative Trademark Judges. Opinion by Lebow, Administrative Trademark Judge: Applicant, Innova Electronics Corporation, seeks a registration for the proposed mark CARSCAN (in standard characters) on the Principal Register for “Automobile diagnostic services provided on-line, via a computer network and by telephone” in International Class 42.1 The Trademark Examining Attorney refused registration under Section 2(e)(1) of 1 Application Serial No. 97851338 was filed on March 22, 2023, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s alleged bona fide intent to use the mark in commerce. Applicant claims ownership of Registration No. 3477892.
Serial No. 97851338 - 2 - the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that the proposed mark is merely descriptive of the identified services, and under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of likelihood of confusion with the standard- character mark WRECK CHECK CAR SCAN, registered on the Principal Register for “Inspections of Automobiles consisting of collision repair, diminished value, total losses, improper repairs and lemon law/dealer fraud” in International Class 42.2 When the refusals were made final, Applicant appealed.3 The appeal is briefed.4 For the reasons discussed below, we affirm the refusal under Section 2(e)(1) and do not reach the refusal under Section 2(d). See, e.g., In re Princeton Equity Grp. LLC, No. 97397212, 2025 TTAB LEXIS 242, at *2-3 (affirming the refusal to register under Section 2(e)(2) and not reaching the Section 2(d) refusal). I. Mere Descriptiveness – Applicable Law “A mark is merely descriptive if it immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used.” Brooklyn Brewery Corp. v. Brooklyn Brew Shop, LLC, 17 F.4th 129, 146 (Fed. Cir. 2021) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1378 (Fed. Cir. 2012)). See also Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1) (“No trademark by which the goods of the applicant may be distinguished from the 2 See December 18, 2023 Office Action. Citations to the prosecution file refer to the USPTO’s Trademark Status & Document Retrieval (“TSDR”) system and identify the documents by title, date, and page in the downloadable .pdf version. 3 See April 10, 2024 Office Action; 1 TTABVUE. Citations to the briefs and other post- prosecution documents are to TTABVUE, the Board’s online docketing system. 4 See 4 TTABVUE (Applicant’s Brief); 12 TTABVUE (Examining Attorney’s Brief); 13 TTABVUE (Applicant’s Reply Brief).
Serial No. 97851338 - 3 - goods of others shall be refused registration on the principal register on account of its nature unless it … (e) Consists of a mark which, (1) when used on or in connection with the goods [or services] of the applicant is merely descriptive or deceptively misdescriptive of them ….”). “A term need not immediately convey an idea of each and every specific feature of the [services] in order to be considered merely descriptive; it is enough if it describes one significant attribute, function or property of the [services].” In re Korn Ferry, No. 90890949, 2024 TTAB LEXIS 224, at *5 (quoting In re Zuma Array Ltd., No. 79288888, 2022 TTAB LEXIS 281, at *7). Descriptiveness is not considered in the abstract. It must be considered in relation to the particular goods or services for which registration is sought, the context in which the mark is used, and the possible significance the term would have to the average purchaser because of the manner of its use or intended use. Coach Servs., 668 F.3d at 1378; In re Bayer AG, 488 F.3d 960, 963-64 (Fed. Cir. 2007). The question is not whether someone presented only with the mark could guess the goods or services, but “whether someone who knows what the goods and[/or] services are will understand the mark to convey information about them.” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254 (Fed. Cir. 2012) (quoting In re Tower Tech, Inc., No. 75709532, 2002 TTAB LEXIS 300, at *10-11). We consider the commercial impression of the mark as a whole. Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., 906 F.3d 965, 974 (Fed. Cir. 2018). If each component of a compound mark retains its merely descriptive significance in relation to the goods
Serial No. 97851338 - 4 - or services, the combination is itself merely descriptive unless it creates a new, incongruous, or otherwise nondescriptive meaning. In re Oppedahl & Larson LLP, 373 F.3d 1171, 1174-75 (Fed. Cir. 2004); Zuma Array, 2022 TTAB LEXIS 281, at *8. II. The Examining Attorney’s Evidence and Argument The Examining Attorney contends that CARSCAN is a compound of CAR and SCAN; that CAR means an automobile and SCAN means to look at carefully or thoroughly, or to examine; and that in the field of automobile diagnostics, SCAN is a term of art for reading a vehicle’s onboard diagnostic codes with a scanner or scan tool.5 Taken together, the Examining Attorney argues, CARSCAN immediately describes the function of Applicant’s services: scanning cars as part of automobile diagnostic services provided online, over a computer network, and by telephone.6 In support, the Examining Attorney made of record dictionary definitions of CAR and SCAN;7 a J.D. Power article describing automobile diagnostic services as taking a close look at a car to determine whether there are issues with it;8 and third-party website and industry materials using “scan,” “scanner,” “scan tool,” and “diagnostic scanning” in connection with automobile diagnostic activity, including those of AirPro Diagnostics, ALLDATA Diagnostics, Christian Brothers Automotive, Flexihub, 5 12 TTABVUE 12-15 (Examining Attorney’s Brief). 6 Id. 7 See January 26, 2026 Subsequent Final Office Action, at TSDR 7-8. 8 Id. at TSDR 9-11.
Serial No. 97851338 - 5 - ProTech, Sun Devil Auto, JTape, Mitchell, OBDeleven, OCTech, and TDT.9 The Examining Attorney also points to Applicant’s own website, which uses “OBD2 scanner,” manufacturer-specific “scan tools,” and related “scanner” FAQs in connection with diagnosing listed car brands.10 III. Applicant’s Arguments Applicant argues that CARSCAN is at most suggestive because it “could allude to a multitude of automotive inspection services wholly unrelated to diagnostics,” such as a visual survey for dents or a physical smog check, and therefore does not describe Applicant’s online and telephone diagnostic services with particularity.11 But the test is not whether the mark, viewed in the abstract, could refer to other automotive activities. Bayer, 488 F.3d at 963-64. Someone who knows that the services are “automobile diagnostic services provided on-line, via a computer network and by telephone” will understand CARSCAN to convey that those diagnostic services involve scanning cars. DuoProSS, 695 F.3d at 1254. The mark need not describe every detail of the identification. Korn Ferry, 2024 TTAB LEXIS 224, at *5. As noted above, Applicant also claims ownership of, and relies on, Registration No. 3477892 (“the ’892 Registration”) for the mark CARSCAN for “automotive diagnostic devices, including code readers and scan tools” in Class 9, which issued in 9 Id. at TSDR 12-16 (AirPro); 17-21 (ALLDATA), 23-24 (Christian Brothers Automotive), 26- 34 (Flexihub), 55-57 (JTape), 63-67 (Mitchell), 68-71 (OBDeleven), 72-85 (OCTech), 86-90 (ProTech), 102-03 (Sun Devil Auto), 107-09 (TDT). 10 Id. at TSDR 41-54. 11 4 TTABVUE 9-11 (Applicant’s Brief).
Serial No. 97851338 - 6 - 2008. Applicant argues that the USPTO did not treat CARSCAN as descriptive of those goods, that the Class 42 services are closely related to those goods, and that the mark should be treated consistently.12 Each application, however, must be decided on its own record. In re Nett Designs, Inc., 236 F.3d 1339, 1342 (Fed. Cir. 2001). Cf. In re Cordua Rests., Inc., 823 F.3d 594, 600 (Fed. Cir. 2016) (“The PTO is required to examine all trademark applications for compliance with each and every eligibility requirement, including non-genericness, even if the PTO earlier mistakenly registered a similar or identical mark suffering the same defect.”). The ’892 Registration covers goods, not the services here, and it does not bind us on this record. In re the Dot Commc’ns Network LLC, No. 77792690 (TTAB 2011). Applicant further argues that more than seventeen years of use of CARSCAN on diagnostic goods, and the absence of other live CARSCAN registrations owned by third parties, show a strong association between Applicant and those goods and related services.13 But Applicant has not claimed acquired distinctiveness under Section 2(f). Evidence that consumers associate a term with a particular source, and evidence of length of use, goes to acquired distinctiveness, not inherent distinctiveness. See In re Chippendales USA, Inc., 622 F.3d 1346, 1352 (Fed. Cir. 2010) (“Inherent distinctiveness does not depend on a showing that consumers actually identify the particular mark with the particular business; this is a question of acquired distinctiveness, or secondary meaning.”); In re La. Fish Fry Prods., Ltd., 12 Id. at 11-12. 13 Id. at 12.
Serial No. 97851338 - 7 - 797 F.3d 1332, 1336 (Fed. Cir. 2015), quoting Coach Servs., 668 F.3d at 1379 (an applicant may prove acquired distinctiveness with “length and exclusivity of use”). Finally, Applicant argues that any doubt on descriptiveness must be resolved in its favor.14 We have no such doubt. The dictionary evidence, the term-of-art use of “scan” in automobile diagnostics, Applicant’s own use of “scan” and “scanner,” and the third-party marketplace evidence all point the same way: the proposed mark is merely descriptive of the identified services. IV. Conclusion We find that CARSCAN immediately describes a significant function of the identified services and is thus merely descriptive of those services under Section 2(e)(1). Decision: The refusal to register is affirmed under Section 2(e)(1) of the Trademark Act. 14 Id.
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