Federal Judge Rules in Rent-A-Wreck's Favor in Trademark Dispute with Enterprise Rent-A-Car; Rent-A-Wreck Calls for PTO to Return 'We'll Pick You Up' Phrase to Rental Industry

Business Wire, Sept 26, 2000

Business Editors

OWINGS MILLS, Md.--(BUSINESS WIRE)--Sept. 26, 2000

Rent-A-Wreck of America, Inc. (NASDAQ:RAWA) recently won an important battle in its war with Enterprise Rent-A-Car over the use of what Rent-A-Wreck and much of the car rental industry feel to be an improperly awarded trademark for the phrase, "We'll Pick You Up".

Rent-A-Wreck learned late last week that a federal judge in St. Louis, MO has dismissed Enterprise Rent-A-Car's motion to hold Rent-A-Wreck in civil contempt for its use of the phrase "We'll Give You a Lift.".

The recent court ruling follows three years of legal wrangling by Enterprise Rent-A-Car in an attempt to thwart challenges to its valuable "We'll Pick You Up" trademark.

In 1997, a US Patent and Trademark Office (PTO) decision granted exclusive use of the phrase to Enterprise, an industry giant some 25 times the size of Rent-A-Wreck, though both Rent-A-Wreck and the car rental industry had used the phrase and its various derivations in the course of business extensively over the years to describe a service rendered.

In May of 1998 a Federal Court in St. Louis chose to enforce a purported settlement agreement in which Rent-A-Wreck was restricted from using all but three court mandated phrases to advertise their pick up service.

Then in a move that added insult to injury, in November of 1999 Enterprise filed an opposition to Rent-A-Wrecks's application for a trademark for the phrase, "We'll Give You a Lift", which Rent-A-Wreck President Ken Blum, Jr. says illustrates that Enterprise isn't objecting to the words, but rather to the promotion of a service that it has marked out as its own.

In response, Rent-A-Wreck filed a counter-claim in February of 2000 with the PTO seeking to cancel the trademark registration awarded to Enterprise Rent-A-Car for the phrase, "We'll Pick You Up".

Rent-A-Wreck has received support from more than a dozen car rental companies and trade organizations in the fight thus far.

PTO regulations prohibit the granting of trademarks on phrases that merely describe services unless they can stand on their own independent of those services.

Enterprise has claimed the basis for the "We'll Pick You Up" trademark lies in a double meaning of the phrase, which it says refers to the elevation of their customers' spirits.

Rent-A-Wreck and other members of the car rental industry feel that Enterprise has primarily used the phrase to promote the service of taking customers to a rental location - a service provided continually and advertised over the years by many car rental companies, including Rent-A-Wreck.

The matter of whether Rent-A-Wreck's use of the phrase, "We'll Give You a Lift" dilutes Enterprise's "We'll Pick You Up" trademark has yet to be decided, and company officials at Rent-A-Wreck welcome the opportunity to present evidence they feel will be sufficient for dismissal of this claim as well.