Test Your TTAB Judge-Ability: Are ROUGH COUNTRY and WILD COUNTRY Confusable for Tires?

TBC Trademarks, LLC, owner of the registered mark WILD COUNTRY for tires, opposed Heckethorn Products' application to register ROUGH COUNTRY for "tires for off road vehicles and trucks," claiming a likelihood of confusion under Section 2(d). The goods obviously overlap, but what about the marks? How do you think this came out? TBC Trademarks, LLC v. Heckethorn Products, Inc., Opposition No. 91179460 (May 2, 2013) [not precedential].

The Board noted that, in comparing marks for identical goods, "it is proper to consider their appearance, sound and meaning. *** But a combination of all three factors need not necessarily exist, and an opposition to registration may be sustained if the marks are identical or so similar in meaning that confusion as to source is deemed likely."

Here, the Board found, the marks engender the same commercial impression: "uninhabited, unpopulated, rugged country."

Applicant Heckethorn contended that many other off road tire companies try to project the same connotation, and it pointed to eight third-party registrations for marks that include the word "Country" for tires, including ALL COUNTRY, OPEN COUNTRY, and HIGH COUNTRY. Moreover, Applicant sells DICK CEPEK MUD COUNTRY tires and FUN COUNTRY tires. Applicant's President, Michael Heckethorn, testified that he saw all eight marks in use on the Internet.

DICK CEPEK
The Board pointed out, however, that third-party registrations are not evidence of what actually happens in the marketplace, or of the public's familiarity with the marks. For the same reason, the testimony of Applicant's President is not very probative on those issues. Moreover, Applicant did not submit the Internet pages about which its President testified.

Finally, the Board noted that Opposer began using the WILD COUNTRY mark in 1977 and its evidence showed significant sales. Applicant, as the newcomer, had a "heavy burden" to avoid consumer confusion.

Based upon the identity of the goods, the presumptive identity of channels of trade and classes of customers, the market strength of the WILD COUNTRY mark, and the similarities in connotation and commercial impression of the marks at issue, the Board found confusion likely, noting that any doubt must be resolved in favor of Opposer.

And so the Board sustained the opposition.

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Text Copyright John L. Welch 2013.