IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Examining Attorney
`William T. Verhosek
`
`Law Office 114
`
`In the Matter of the Application of
`
`Daimlerchrysler AG
`
`For the Registration of a
`
`Trademark : UNLIMITED
`
`Serial No.:
`
`76/447,043
`
`Filed: September 5, 2002
`
`Comissioner for Trademarks
`P_o_ Box 1451
`Alexandria, VA 22313-1451
`
`llllflllllllllllilillllllllllllllllilllllllll
`
`05-1 6-2005
`
`u.s. Punt: TMotcITM mu aqn on 017
`
`Request For Reconsideration And
`
`Withdrawal of Final Refusal To Register
`
`Applicant
`
`respectfully requests Examining Attorney
`
`Wil1ian1T. Verhosek to reconsider and withdraw his final refusal to
`
`register Applicant's UNLIMITED trademark.
`
`Applicant's use of its UNLIMITED mark for motor vehicles
`
`and their structural parts will not
`
`lead to confusion with the
`
`

`
`cited servicezmark registration.UNLIMITED USED CARS for "automobile
`
`dealerships", for the reasons discussed below.
`
`(1) The registered service mark UNLIMITED USED CARS
`
`is inherently very weak.
`
`It directly informs the public
`
`that the dealer has an unlimited supply of used cars from
`
`which a purchaser may choose.
`
`(2) The registered service mark is also very weak in
`
`the marketplace. There are a vast number of third party
`
`dealers of new and used cars of every description that
`
`are using the dictionary word "UNLIMITED"
`
`in their
`
`business names
`
`to inform potential purchasers of
`
`the
`
`dealer's "unlimited" auto inventory. Attached hereto as
`
`Exhibits A through E are printouts, retrieved from the
`
`internet.
`
`that show a collection of business names, of
`
`third party automobile dealers and other automotive
`
`entities in the United states,
`
`that
`
`include the word
`
`"UNLIMITED".
`
`The
`
`attached
`
`exhibits
`
`are merely
`
`representative.
`
`As
`
`indicated. by the Google
`
`search
`
`results pages attached as Exhibit E. and by the attached
`
`affidavit of Orlando Rodriguez,
`
`there are thousands of
`
`"hits" for Web page titles that include "unlimited" and
`
`2
`
`

`
`"cars," or "autos," etc.’
`
`(3) For
`
`the foregoing reasons,
`
`the cited service
`
`mark is entitled to only very narrow protection, i.e.,
`
`against
`
`a virtually identical mark
`
`for virtually
`
`identical services. Applicant's mark and motor vehicles
`
`are plainly outside that narrow scope of protection.
`
`(4) Applicant’s‘UNLIMITED trademark is significantly
`
`different from the service mark UNLIMITED USED CARS. As
`
`mentioned,
`
`the latter mark directly informs the public
`
`that the dealer has an unlimited supply of used cars in
`
`inventory.
`
`This is the only nmssage conveyed by the
`
`registered. mark.
`
`By contrast,
`
`no such message
`
`is
`
`conveyed by Applicant's trademark UNLIMITED when applied
`
`as a brand name on a motor vehicle. Rather, Applicant's
`
`trademark
`
`suggests
`
`the boundless
`
`superior driving
`
`potential
`
`and other
`
`features of Applicant's motor
`
`vehicle.
`
`Hence, potential purchasers would readily
`
`distinguish between the marks in issue.
`
`(5) Another
`
`factor precluding
`
`likelihood
`
`of
`
`confusion is the care with which consumers would buy a
`
`

`
`new or used car.
`
`These are expensive purchases which
`
`require careful consideration, visits to a dealer,
`
`test
`
`drives,
`
`and other pre-purchase actions that strongly
`
`militate against likely confusion. Surely. a potential
`
`purchaser of a new or used car would either know or
`
`inquire about the identity of the car's manufacturer.
`
`For the foregoing reasons, it is difficult to imagine
`
`that a potential purchaser would mistakenly assume that Applicant’ s
`
`UNLIMITED motor vehicle is associated with a used car dealer
`
`promoting a service mark in its plain dictionary sense to inform
`
`that the dealer has an "Unlimited" supply of used cars.
`
`Furthermore,
`
`the cited registered mark is probably no
`
`longer in use, Undersigned counsel have searched the internet and
`
`have not
`
`found any evidence of use of the registered mark.
`
`We
`
`point out also that the due date of the Declaration of Use for the
`
`cited registration is June 22, 2005 and the P'1‘O's TESS database
`
`does not indicate that the Declaration has been filed.
`
`
`
`For all the foregoing reasons, Applicant respectfully
`
`requests that the final refusal to register be withdrawn, or in the
`
`4
`
`

`
`alternative,
`
`that
`
`further prosecution of
`
`this application be
`
`suspended until the grace period for filing the Declaration of Use
`
`for the.cited registration expires on December 22, 2005.
`
`Applicant is concurrently filing a Notice of Appeal
`
`to
`
`the Trademark Trial and Appeal Board.
`
`Respectfully submitted,
`
`VON MALTITZ, DERENBERG, KUNIN,
`JANSSEN'& GIORDANO
`
`5456*’
`.
`.
`V. T. Giordano
`
`Attorneys for Applicant
`60 East 42nd Street
`
`New York, New York 10165
`
`Telephone:
`
`212-661-1400
`
`May 12, 2005
`
`

`
`AFFIDAVIT OF ORLANDO RODRIGUEZ
`
`STATE or NEW YORK
`
`)
`
`SS.:
`
`COUNTY or NEW YORK )
`
`ORLANDO RODRIGUEZ, being duly sworn, deposes and states the
`
`following:
`
`1.
`
`I am a paralegal employed by the firm of von Maltitz,
`
`Derenberg, Kunin, Janssen & Giordano, attorneys for Applicant.
`
`2.
`
`on May 10, 2005,
`
`I
`
`retrieved and printed,
`
`from the
`
`Internet,
`
`the Web pages attached hereto as Exhibits A-D, each of
`
`which displays the name of a company in the automotive field that
`
`includes the word “unlimited.”
`
`(a) Exhibit A consists of printouts of Web pages
`
`displaying
`
`the
`
`names
`
`of
`
`different
`
`“Cars Unlimited”
`
`or
`
`CarsUn1imited”-companies.
`
`I
`
`(b) Exhibit B consists of printouts of Web pages
`
`displaying the names of additional companies that include the words
`
`“unlimited” and “cars.”
`
`(c) Exhibit
`
`C consists of printouts of Web pages
`
`displaying the
`
`names of
`
`companies
`
`that
`
`include
`
`the words
`
`“unlimited” and “autos” or “automobiles.”
`
`(d) Exhibit
`
`D consists of printouts of Web pages
`
`displaying the names of other companies in the automotive field
`
`that
`
`include the words “unlimited”, egg‘, “Vehicles Unlimited,”
`
`“opels Unlimited," “Wheels Unlimited,” etc.
`
`

`
`3.
`
`on May 12, 2005, I conducted online Internet searches,
`
`using the Goog1e.com search engine, for Web pages containing,
`
`in
`
`their
`
`titles,
`
`the word “unlimited” and at
`
`least one of
`
`the
`
`following words: “cars,” “autos,” “automobiles,” “suvs” or “vans.”
`
`These searches resulted in more than 7,200 hits. Attached hereto
`
`as Exhibit E are printouts of the search results pages showing the
`
`first 60 hits for “unlimited” and “cars,” the first 50 hits for
`
`“unlimited” and “autos,” the first 23 hits for "unlimited" and
`
`“vans,” the first 6 hits for “unlimited” and “automobiles,” and the
`
`first 4 hits for “unlimited” and “suvs.”
`
`lL%..aJl»__
`
`Orlando Rodriguez
`
`Sworn to before me this
`12“ day of May, 2005
`
`E74.
`
`Notary Public
`
`DONNEU.Y
`State of New Yofk
`New-y
`Q .~?‘e‘2s ??i§’2£°v‘.?.1°$ounw
`us |
`n
`-
`-
`'
`Y k Cou
`%§r§$n°§§bF$'E3$3§s°X.n§(12. 1'3" 91"
`
`

`
`

`
`Page 1 Of 1
`
`Carsgg.L‘:‘“;.i:nited,
`
`Inc. - Home Page
`
`ems fie-We
`
`- :UNHMfTED,
`
`308 Union Street
`Ashiand, Ohio 44805
`419-289-1226
`
`The Area‘: -11 used car Resources as can uniimieed, Inc.
`Cars Unlimited, Inc. is proud of doing business in Ashland for over 12 years. Our dealership
`is built on honesty, integrity and a friendly environment. Ail this combined leads to total
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`At Cars Unlimited, Inc. we don't have to tell you our vehicles are the best ~ our vehicles and
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`at the Area's #1 Used Car Resource!
`we carry a wide selection of late made! just off lease vehicles. Our vehicles must pass a
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`Check out some of our great deals for yourself! View our inventory and pick out your next
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`Prices at Cars Unlimited, Inc. are well below book values. Vehicles normally sell for a little
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`just give us a call at 419-289-1226 or use our convenient "vehicle Locator Form“.
`Cars Unlimited, Inc. finances vehicles through local banking institutions. In most cases you can
`pick your car out in the morning and drive it home in the afternoon! check us out and you will
`find out why we are the Area's #1 Used Car Resource!!!
`
`E—Mail inquiries to: inlbgc-orxunl'niiIdnc.oom - Copyright 0 2004 Cars Unlimited, Inc. - Al Rights Rouwod.
`Powered By AimLotMonnpar.oom
`
`ht-tn://www.cars1;mlimitedinC.Com/
`
`5/10/2035
`
`

`
`
`
`Cars-U.".i;ni.ted, Trucks and Trailers
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`Cars, Iimlignited, Trucks and T
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`railers
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`We also specialize in 1 ton and larger late model new and used
`trucks. If you need a truck to pull your new or used trailer
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`fl2m|IKWMl. l!§li l§&¢~ImkE|
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`Copyright 2004 Can Unlimited. Creator! by NB.Il9m.ml. All rights reserved.
`
`httb: //www. trucksunl irnited . com/
`
`5/10/2005
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`Carsun‘:°*.milted.com — Carsun1imited.com
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`5/10/2005
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`
`Cars Unlimited - Automotive — Las Vegas, NV, 89128-7800 — Citysearch
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`Page 1 of 4
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`2538 Ontario Dr
`Las Vegas, NV 89128-7800
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`CarslUn.limi‘r.ed - Automotive - Las Vegas, NV, 89128-7800 — Citysearch
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`Cars’ Unlimited car dealer in CA California
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`Page 1 Of 2
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`rCmzW:zAm>.com
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`Dealer Information
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`Name: Cars Unlimited
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`Address: 2315 West 1st Street, Santa Ana, CA 92703
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`Phone Number: (714) 480-0022
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`
`
`‘Quote may not be from the data: listed
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`Before you shop at Cars Unlimited
`. check out My car Buying Tips
`(These tips are general advice and are not meant to imply that this dealer participates in any
`of the mentioned tactics.)
`
`1, You can always walk away ! Don‘t feel pressured, the new car or truck you are
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`I never buy the same day I test drive, too much
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`2. Put your offer in writing and make sure you have two copies. Some dealers will
`take your offer and magically lose it !
`if your memory is not good, you won't be able
`to double check the final deal.
`.
`
`3. Do your research l You need to know invoice price, factory to dealer rebates,
`and factory to consumer rebates before you make your offer.
`go.-yMa_i_l me if you need
`some help coming up with your offer.
`
`http : //wwwmycarwizard. com/dealers/3161 .hl:ml
`
`5/11 /2005
`
`

`
`Cars Unlimited car dealer in CA California
`
`Page 2 of 2
`
`4. Make sure you get an online price quote before you make the offer.
`new car dealers quote me prices below what i was ready to offer.
`
`I have had
`
`There are many ways to shop for cars online, but I feel the best way is to test drive.
`research, and get a price quote. You can then negotiate with the dealer over email
`without the pressure of a face-to-face meeting.
`
`This gives you the upper hand I
`
`l have included a quick form above for you to get your new car price quote, free,
`and with no obligation to buy. You can get mu./ZILQLQ Quotes so you can compare
`prices on a couple of vehicles you are considering.
`I recommend this service and
`use it.
`I put my reputation on the line, that you will not be spammed, and your
`information is only given to a local dealer in your area for a price quote.
`you have any questions...
`
`me if
`
`BeturotealI..§en1§...Ano_QeL_Deeler§
`
`_B;s_t Previous Next I___a_s_t
`
`
`e-.s1_s:.res.1..i$....§;a....r.
`
`For Bad Credit Nationwide. 93% Co
`ates on Hugs Sailction and Savings on
`_a new car from local dnaiurs and
`_Approval Rate. Quahfy In 30 son.
`_Now and Prwflwmd Toyotn and
`save
`Scions!
`
`!t!ex!".§...,i!§§9..§3Lr.g
`Browse laud cars & parts. All
`_makos 8: car moduis.
`
`' This site is not associated with Cars Unlimited in way.
`When submitting a new car price quote you wili be put in contact with a local dealer.
`but not necessariiy Cars Unlimited.
`
`M: by Gonoooogia
`
`http://wwuumycarwizard.com/dealers/3161.html
`
`-
`
`5/11/2005
`
`

`
`Bettgarjaugsiness Bureau Reliability Report
`
`Page 1 Of 3
`
`
`
`
`BBB of Akron
`222 W. Market Street
`Akron, OH 44303
`
`BBB Reliability Report
`
`CARS U N LIMITED
`308 UNION STREET
`ASHLAND, OH 44805
`Ashlafigg flounty
`2 MAS;
`
`General Infotmatiou
`
`Original Business
`Start Date March 1993
`
`Registration or
`Incorporation
`
`Type of Entity Corporation
`State
`OH
`Date
`January 1997
`
`sea We Opened
`Principal Contact
`
`535:5" :é,':§§4 "
`MS SHARON STALEY
`
`(OWNER)
`
`Complalnt Contact MS SHARON STALEY
`
`(OWNER)
`
`other Contacts
`
`.
`
`.
`
`,.
`
`BBB Member
`This company is a member
`Type of Business
`Auto Dealers~Used Cars
`Website
`
`http : //www. akron.bbb.org/codbrep.html?ID=6001629&cons=y
`
`5/10/2005
`
`

`
`Bett‘erWBu‘siness Bureau Reliability Report
`
`Page 2 Of 3
`
`:Thn information in this report has either been provided by the company, or has been compiled E
`
`:by
`Bureau from other sources.
`y
`H y
`_
`t
`1
`
`BBB Membership
`3 This company has been a member of this Better Business Bureau since May 2002. This means it supports
`3
`the Bureau‘s services to the public and meets our membership standards.
`
`5 Nature of Business
`n-us comrww orreas useo CARS ONLY
`
`Customer Experience
`3 Based on BBB files, this company has a satisfactory record with the Bureau.
`1 To have a "satisfadtory Record" with the Bureau, a company must be in business for at least 12 months,
`; properly and promptly address matters referred to it by the Bureau, and be free from an unusual volume or
`' pattern of complaints and law enforcement action involving its marketplace conduct. In addition, the Bureau
`must have a clear understanding of the company's business and no concerns about its industry.
`
`} Licensing Information
`‘ The license number is UD 010999.
`
`3 Educational] General Comments
`- The following general information follows all reports involving dealers of used automobiles. The BBB
`;
`routinely advises used car buyers to review any warranties available from the manufacturers and dealers as
`V well as the vehicles repair record. In addition, it is advisable to test drive a vehicle and have ii: examined by
`; an independent mechanic prior to purchase. Also be aware that if a limited warranty is provided, it may be
`for a very limited time and only for the specific items listed. if the car is sold as is, the dealer is usually not
`responsible for anything that may go wrong, even if it is discovered only a few days after purchase.
`
`;
`
`Additional Information
`This Business
`Operates
`under the
`Names
`
`CARS UNLIMITED
`
`Addresses
`
`308 UNION STREEF, ASHLAND, OH 44805, Ashland County
`
`
`
`"“°“°‘
`
`V
`@419) :s¢;i;:s if
`(419) 231.5374 (FAX)
`
`http: //www. akrombbb. org/codhrep.html?ID=6001629&cons=y
`
`5/10/2005
`
`

`
`Better Business Bureau Reliability Report
`
`Page 3 of 3
`
`E Reportad on Tucsday, May 10, 2005
`
`As a matter of policy, the Batter Busbnnss Bureau does not endorse any product, scrvioe or company. BBB reports ganorally
`. covur a thru-your roportlng period, and an provided solely to assist you in exercising your own bust judgment.
`{
`
`Information contained hurcin ls ballcvcd reliablo but not guaranteed as to accuracy. Report: an subjuct to change at anylimo.
`
`: Thu Bottur Businoss Bureau reports on members and nommumbors. Mambarshnp in my 885 is volunury, Ind mcmbnrs
`, must mu: and mnlnuin BBB standards. If I compuny is a member of this 883, it Is stand in thls report.
`0 2005 SIB oflkmn
`
`http://www.akron.bbb.org/codbrep.html?ID=6001629&cons=y
`
`5/10/2005
`
`

`
`
`
`Aston Marcinyjaé
`599.-gs Car
`Find the Iawest price on a new
`'I§"ri‘i':o7§§IK|‘<3‘Your New Votvc S40 Autoweb makes researching,
`Today. 6:: Specs, Photos A More! ‘buytno and selling your car online _cart Free, no obligation new car
`easy,
`quote.
`
`‘
`
`fl4.I:!!.I.>./.v.*I.13_.¢!'..I.I..I_\.v..9!s..9_£=.‘t:Q
`Our dealers have cxcosslcnvnntory
`_and an huvxty discounting
`5703!
`
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`
`
`CarzUnlirnited.com © is an informative automotive site, trying to bring all the
`necessary information one needs to know. We provide statistics, specs, into and more
`on all the cars we have. with the site being updated regularly, all the latest automotive
`happenings around the gobe can be seen on this site. Latest cars and upcoming
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`4) (tuzllnlimitedsum. Copyright 2003-2595. All Right: Reserved.
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`Sitamep
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`file: //C : \DOCUME~1\0RODRI~1\LOCALS~1\TemD\G2BP8GEK.ht:m
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`5/11/2005
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`
`Martha's Vineyard Auto Repair Shop Massachusetts, Martha's Vineyard Auto Repair Shop Mass...
`
`Page l of 2
`
`
`
`Cars unlimited, Inc. is a state of
`the art auto repair shop located on
`the resort island of Martha's
`vineyard. It is centrally located, on
`the island , at the Airport Industrial
`Park. There it can be reached easily,
`by each of Its 6 towns. It is close to
`the airport for pick up and delivery,
`whether flying to or from the
`Vineyard. It provides ample space
`for all car care needs. Be it storage,
`or an extra few days needed while
`you are away before pick-up can
`occur.
`
`-
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`We offer 3 full bays to provide, quality repairs to your car, an inspection station, and a
`bright clean and well maintained waiting area with a mini hospitality center to serve
`you.
`.
`V
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`K
`
`http : //www. cars-unlimited. com/
`
`5/10/2005
`
`

`
`Mart13a'_§ Vineyard Auto Repair Shop Massachusetts, Martha's Vineyard Auto Repair Shop Mass...
`&&
`Mlim BE R
`
`Page 2 of 2
`
`,
`I
`
`M ’\ /‘ It I
`nxar.-mama
`~m=w,gv~* j
`
`59111.8. - S._e_nI_i§§s. - Ethic: - A,t29_uI_LJ§ - $§§fi ~ Q.r1La§§,.LJ§
`Copyright 0 2005 Cars Unlimited Inc., all rights ronrvnd.
`Website designed by mnhalaymnmqnxim
`
`http://www.cars—unlimited.com/
`
`5/lg/2005
`
`

`
`
`
`

`
`
`
`main
`
`Page 1 of 2
`
`Celebrating our 30th Year!
`
`.._~.......~.,w.w~_.-........,,.......¢..~...............wm_-..
`
`
`
`Hoses
`
`Moulchs
`
`
`
`
`
`
`
`We have one of the Largest NOS inventories of parts available for Thunderbirds and
`Lincolns in the World. We also carry USED as well as Reproduction PARTS in our
`stock. You will f’
`1nd these parts and more,
`from Bumper to Bumper,
`in our Catalogs
`we ship parts Worldwide and we ship our parts EAST! Most orders are shipped
`the next business day and usually only take 2~3 days shipping time within the US.
`
`
`
`http://www.classiquecars.com/main.htm
`
`5/10/2005
`
`

`
`main
`?age 2 of 2
`Follow the Links to the Left for Special Prices on just a few of the FANTASTIC Items you will
`find in our catalogs for your Lincoln or Thunderbird.
`
`orcau.1~800-543-8691 to Place your Order Today!
`
`Phone
`
`228-467-9633
`
`Fax 24 Hours 228-467-9207
`
`Hours 9am — 6pm Central time Monday — Friday
`
`
`
`Classique Cars Unlimited
`
`P. O. Box 249
`
`
`
`
`
`7005 Turkey Bayou Rd
`Lakeshore, MS 39558
`
`
`~...~-~.-....».~.....w._.~.o....-_..,..,....._.........~.¢.~_....-._.,..............v................,.m...m.........
`
`http://www.classiquecars.com/main.htm
`
`5/10/2005
`
`

`
`
`
`New Page 1
`
`Page 1 °f 1
`
`Collector Cars Unlimited
`
`The original car club in Fairfield, will host its 22nd annual car show, rain or shine, Sept. 19 on the city square. Registration will be
`held from 8 a.m. to noon in Central Park near the bandstand. Registration is $15, and dash plaques will be given to the first 150 cars
`registered.
`"Our 28 classes can accommodate every vehicle," said Harry Clark, the only charter member still active with the car
`club.
`
`some of the lesser known classes include motorcycles, competition vehicles, vehicles owned and shown by a person who is 21
`years old or younger, hydraulicslpneumatics, low riders, special interest and visually unfinished, while other classes include
`convertibles, pickups, foreign, Mustangs, Corvettes, T~Blrds, muscle cars, tri-five. The club also will have a model car competition.
`
`Registration will be held from 8 am. to noon in the Central Park bandstand. Registration is $1 per model car in two classes: 14-years
`old and younger; and 15-years old and older. "The younger kids really like being able to enter a model car and being involved in the
`show that way," said Kendra Tillis, a volunteer who plans to oversee the competition. "But you don‘t have to be showing a real car
`or have a parent showing a car to participate in the model car competition." Judging, by participant ballots for both the regular and
`model car competitions, is from noon to 2 p.m. Throughout the day, vendors will be selling vehicle-related items and door prizes,
`donated by Fairfield and area businesses, will be given away. The grand prize will be a gift certificate from Fairfield Tire and Service.
`The trophy presentation will begin at 3:30 p.m., with firsbplace and top-place trophies being presented as the winners parade their
`vehicles along the north side of the city square. "The parade of winners is kind of our club's trademark,” said Clark. "When we held
`our shows out on the [Jefferson County] fairgrounds, the winners would drive through the show arena, and people liked it, so when
`we moved the show to the square a few years ago, we kept up the tradition. It takes a little longer than just calling a person's name
`and handing him a trophy, but people like it because they can see the winners right there in front of them."
`
`Last year, the Collector Cars Unlimited show drew 120 entries to the square. The best-of-show trophy was presented to Layne
`Waller of Macon, Mo., who displayed a 1932 Ford Roadster. For car enthusiasts who would like to save a few dollars, Collector Cars
`Unlimited is taking pre-entries, which must be postmarked by Sept. 11. The pro-entry fee is $10. For information on pre-entry,
`classes, vendor possibilities or a copy of the flyer, call Clark at 641-472-2407 or club members Steve and Diane Beeman at 641- 472-
`8961.
`
`htto: //www. fairfieldiowa. com/Chamber%20Links/Collectorcarsljnlimited.hi-m
`
`R /1 1 /‘Hm:
`
`

`
`
`
`Alquile; de Coches Dream Cars Unlimited, Automoviles, Vehiculos, Rentacar, Coche sin cond...
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`Page 1 of 1
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