New York Trademark Attorney Blog
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.