Tuesday, May 05, 2009

Precedential No. 18: Refusing to Read Limitations into Cited Registration, TTAB Affirms 2(d) Refusal of "WAVE" for Recreational Trailers

In an enervating, albeit precedential, decision, the Board affirmed the PTO's refusal to register the mark WAVE for "recreational vehicles, namely travel trailers and fifth wheel trailers," finding it likely to cause confusion with the registered mark THE WAVE for "trailers, dump trailers, and truck bodies." Applicant Thor Tech argued that, in context, the term "trailers" in registrant's identification of goods must be read to mean "industrial and commercial trailers sold to professional purchasers," but the Board refusing to read any such limitation into the registration. In re Thor Tech, Inc., 90 USPQ2d 1634 (TTAB 2009) [precedential].

Of course, the Board found the marks to be "virtually identical," and it observed for the umpteen hundredth time that as a result a lesser degree of similarity between the involved goods is necessary to support a finding of likely confusion.

Thor Tech argued that the goods at issue are different because its application is directed to recreational vehicles whereas the registered mark concerns commercial and industrial trailers sold to professional purchasers.

Applicant asserts that “[t]he term ‘trailers’ in the cited registration should be read in pari materia with the associated goods listed in the registration.” In essence, applicant is arguing that we should interpret the registrant’s description of goods to read as follows: "industrial and commercial trailers sold to professional purchasers, dump trailers and truck bodies."

The Board pointed out for the billionth time that the likelihood of confusion determination is to be made based upon the goods as identified in the involved application and registration, "regardless of what the record may reveal as to the particular nature of an applicant's goods, the particular channels of trade or the class of purchasers to which the sales of goods are directed." [In other words, this ain't the real world, buddy, this is the PTO - ed.] Therefore, the Board was constrained to construe registrant's "trailers" as encompassing travel trailers and fifth wheel trailers.

fifth wheel trailer

As to Thor Tech's pari materia argument, the Board noted that Thor Tech had failed to cite any precedent supporting its contention that "trailers" must be construed in the context of the other listed goods. Moreover, "it is acceptable and appropriate for an applicant to use a broad description of goods." And so the Board deemed the term "trailer" in the registration to encompass the terms "travel trailers and fifth wheel trailers" in the application.

The Board therefore found that confusion is likely and it sustained the refusal to register.

TTABlog note: The Board pointed out in footnote 11 that Thor Tech has a potential remedy for its problem: seek partial cancellation under Section 18.

TTABlog postscript: Loyal reader T.O. suggests that I point out that the same Applicant was involved in another precedential decision in 2007 (TTABlogged here), in which the Board reversed a refusal to register the mark CHATEAU RESORT for "park trailers," ruling that the the term "park trailers" is sufficiently definite to satisfy Lanham Act Section 1(b)(2). So be careful when you refer to the "Thor Tech" identification-of-goods case.

Text Copyright John L. Welch 2009.


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