Thor Tech, Inc. (“Applicant”) sought to register the mark TERRAIN, in standard character form for “recreational vehicles, namely, towable trailers”. The Examining Attorney refused to register Applicant’s mark based on a likelihood of confusion with General Motors’ (“Registrant”) registration for the mark TERRAIN for “motor vehicles, namely, trucks”. The Trademark Trial and Appeal Board (the “Board”) reversed the refusal to register. See In re Thor Tech, Inc., Serial No. 85667188 (January 26, 2015) [precedential]. To learn about the basics of these types of trademark refusals, see our webpage entitled, Likelihood Of Confusion Refusals -2(d) Refusals.
This precedential decision is significant for several reasons. The first reason is that even though the marks were identical for complementary goods, the Board held that there was not a likelihood of confusion between the marks. The second important factor is that often evidence of third-party registrations is not given great weight in a likelihood of confusion analysis. Here, the Applicant managed to impress the Board with its third-party registrations, so much so that the Board reversed the refusal to register the mark. Lastly, this case is noteworthy because the Board overwhelmingly affirms refusals to register based on findings of likelihood of confusion. In 2014, the Board affirmed about 90% of the Examiners 2(d) refusals. Yet, here the Board reversed the refusal even though the marks were identical and the uses of the goods were complementary.
Once the Board concluded that the parties’ marks were identical, it moved on to consider the similarities between the goods. Applicant’s goods are recreational vehicles defined as large vehicles typically containing a bathroom, kitchen, and beds for use during travel. Applicant’s vehicles are also towable which means that attaching them to a truck, van or car can transport the trailers. Registrant’s goods are trucks. The Examining Attorney submitted into evidence two third-party registrations that showed that trucks and trailers may emanate from the same source.
The Applicant, in turn submitted copies of fifty sets of third-party registrations of the same or similar trademarks for automobiles, trucks and SUVs and for recreational vehicles, trailers, and motor homes. In other words, the same or very similar marks have been registered for both the first group of vehicles, cars and trucks and also for trailers and recreational vehicles. The Board concluded that this evidence suggests that businesses in both these industries believe that the goods are sufficiently distinct, and that even identical marks will not cause confusion.
Next the Board addressed the Examiner’s argument that because the goods have complementary uses, they are related for purposes of likelihood of confusion. If the goods have complementary uses, this fact can support a finding of relatedness in certain cases. However, the third-party registrations made of record here suggest the contrary. The Board found that the evidence indicates that consumers are aware that different companies sell the two types of vehicles under the same or similar trademarks. In addition, the Board held that the trade channels were not similar enough to support confusion.
The last factor that was considered was degree of consumer care. There was evidence in the record that both vehicles were expensive. Registrant’s TERRAIN, a sports utility vehicle sells at retail for $26,235.00. There was also evidence that the Applicant’s recreational vehicles were selling for similar and higher prices. It is well settled law that products that have high retail prices are carefully researched by consumers before a purchase is made. In making purchases of this nature, consumers will demonstrate a high degree of care and consideration. This factor weighs against finding a likelihood of confusion. Learn more about the factors reviewed in a likelihood of confusion evaluation by reading our webpage, entitled Other Considerations In A Likelihood Of Confusion Analysis.
In light of the few precedential decisions issued by the Board, as practitioners we should pay close attention to this decision. It proves once again that trademark cases are incredibly fact specific, and that each party has the burden to submit evidence into the record that will persuade the Board to find in their favor. This Applicant had the challenge of facing off against General Motors and succeeded on all fronts. If you have received a refusal to register your trademark, please feel free to contact our office for a courtesy consultation. We would be happy to assist you with your trademark refusal or with any other trademark related matter.