Wednesday, January 28, 2015

Precedential No. 2: Applicant's Third-Party Registrations Show That RV Trailers and Trucks are Not Related

The differences in the goods and their channels of trade and the high degree of purchaser care led the Board to conclude that the mark TERRAIN for “recreational vehicles, namely, towable trailers” is not likely to cause confusion with the identical mark registered for “motor land vehicles, namely, trucks.” Applicant Thor Tech's  evidence of dozens of third-party registrations for the same or very similar marks, owned by different entities, for vehicles and recreational vehicle trailers suggested to the Board that "businesses in these two industries believe that their respective goods are distinct enough that confusion between even identical marks is unlikely." In re Thor Tech, Inc., 113 U.S.P.Q.2d 1546 (T.T.A.B. 2015) [precedential].

The evidence established that towable RVs (see illustration below) are essentially travel trailers equipped with electric and water capacities, as well as toilet facilities. The examining attorney submitted seven third-party registrations covering "trucks" and "trailers," but five of them listed trailers that were not recreational vehicles. The other two, however, served to suggest that trucks, conversion kits, trailer hitches and trailers may emanate from the same source.

Applicant Thor Tech countered with fifty sets of third-party registrations for the same or similar marks, owned by different entities, and covering automobiles, trucks or sport utility vehicles on the one hand and recreational vehicles, travel trailers, and/or motor homes on the other. The Board found that this "pattern of registrations" rebutted the two registrations submitted by the examining attorney. The Board came to a similar conclusion in Keebler Company v. Associated Biscuits Limited, 207 U.S.P.Q. 1034, 1038 (TTAB 1980) ("The mutual respect and restraint exhibited toward each other by the owners of the plethora of marks, evidenced by their coexistence on the Register, are akin to the opinion manifested by knowledgeable businessmen .... "). These third-party registrations "suggest that consumers are aware that [the goods] are offered by different companies under the same or similar marks."

The examining attorney, relying on a number of Internet websites, contended that the involved goods travel in the same channels of trade, but the Board was unpersuaded. It found that, at best, this evidence indicated that two small retailers that sell a wide variety of vehicles also sell used trucks and recreational vehicle towable trailers, and another retailer sells automobiles (and presumably trucks) and recreational vehicles. "While trucks and recreational towable trailers may occasionally be sold by the same retailers, we cannot overlook the facts that the products are, at least on this record, noncompetitive, differ completely in utility, have nothing in common with respect to their essential characteristics or sales appeal, and ... are expensive."

Because the involved goods are costly - the TERRAIN vehicle was sold by registrant GM for $26,235, while towable trailers cost in the $8,000 to $24,000 range - the Board inferred that purchasers would exercise a high degree of care in making their purchasing decisions. Trucks and towable RVs are not everyday purchases, and a consumer would be expected to closely examine the products, probably after conducting some research regarding the vehicles. In short, this du Pont factor weighed against a finding of likely confusion.

Balancing the relevant du Pont factors, the Board concluded that applicant's mark is not likely to cause confusion with registrant's mark, and so it reversed the refusal.

Read comments and post your comment here

TTABlog note: Would the "pattern of registrations" argument be effective in the context of wine  versus other alcoholic beverages?

Text Copyright John L. Welch 2015.


At 9:57 AM, Anonymous joe dreitler said...

It is a very practical and well reasoned decision. The problem is that the Applicant had to pay a lawyer to research and prepare a long response to a 2d Office Action (finding 50 other sets of marks) and then file an appeal and brief that. Most businesses simply give up long before that, which is why the worn out theory of "per se" rules needs to be applied in the examination process. Had that been done, instead of spewing out a form paragraph 2d refusal, a lot less time and money of the Board and Applicant would have been spent to get to this result.

At 10:02 AM, Anonymous Anonymous said...

I am surprised by the Board's decision here. Yes the third party registration evidence is compelling and I get the degree of consumer care, but the marks are identical and used in the same general field of use. I think the "complimentary goods" argument got short shrift here.


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