Friday, August 20, 2010

Test Your TTAB Judge-Ability: Is An Amendment From "MT RAINIER" To "RAINIER" Permissible?

When it submitted its Statement of Use, Applicant Thor Tech sought to amend its mark for travel trailers from MT RAINIER to RAINIER. The Examining Attorney refused to enter the amendment, deeming the proposed change to be a “material alteration” of the mark in violation of 37 CFR §2.72. Thor Tech claimed that "Rainier" is recognized as an abbreviated form of "Mt Rainier." What say you? In re Thor Tech, Serial No. 78717682 (August 13, 2010) [not precedential].

Guess What?

Under CAFC precedent, the Board must "look to whether applicant’s proposed amendment contains 'the essence of the original mark' or whether instead the amended mark is so altered that it would 'have to be republished' in order to 'fairly present' it for 'purposes of opposition.'"

Thor Tech maintained that "Dictionaries define 'Rainier' as 'Mt. Rainer,' Encyclopedia articles use Mt. Rainier and Rainier interchangeably when referring to the mountain. Internet searches for the term 'Rainier' alone list 'Mt. Rainier' as the first and most relevant topic of such a search query."

The Board pointed out, however, that "Mount Rainier" is only one of several possible definitions of "Rainier." Others include Prince Rainier of Monaco, and the towns (cities?) of Rainier, Oregon; Rainier, Washington; and Mount Rainier, Maryland. "Rainier" may also mean "Characterized by, full of, or bringing rain." The Internet search results were unconvincing.

Guess Who?

In summary, it is clear that term “Rainier” is broader and potentially more inclusive than the mark MT RAINIER for which applicant was granted a Notice of Allowance. Accordingly, we have no doubt that the mark “would have to be republished after the alteration in order to fairly present the mark for purposes of opposition” in accordance with the test set up by our precedent.

And so the Board affirmed the denial of the amendment "as a 'material alteration' under 37 CFR §2.72."

TTABlog comment: Doesn't "rainier" also mean "more rainy," as in the State of Washington?

Text Copyright John L. Welch 2010.


At 10:02 AM, Anonymous Orrin A. Falby said...

It is definite rainier in Seattle than it is in New York. I would go as far as saying its is probably the rainiest of all the states. This is a no brainer, definitely a material alteration.

At 2:39 PM, Blogger Bob Cumbow said...

Absolutely right, John. The irony of our signature mountain's being named "Rainier" has not escaped those who live in the western Washington rain belt.

At 2:56 PM, Anonymous Josh said...

Seattle isn't even close to the rainiest city, if you're judging by annual rainfall -- though it sure is cloudy. Many cities are significantly rainier.


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