If at first you don’t succeed, try, try again. That is exactly what Thor Tech, Inc. did before the Trademark Trial and Appeal Board (TTAB) in January.
Thor Tech applied to register “Terrain”, for RV’s, particularly, towable trailers. The Trademark Examiner denied the application due to the likelihood of confusion with the registered trademark, “Terrain”, for trucks. The TTAB reversed the decision, finding the goods and channels of trade of the two products, sufficiently distinct to overcome any confusion arising from the identical marks.
Thor Tech’s innovative use of third-party registrations was instrumental in the case’s reversal. The company compiled fifty pairs of marks that were identical or very similar – one for a truck, car, or SUV, on the one hand and one for RV’s or trailers on the other – each held by two different companies – as evidence of the dissimilarity of the goods in Thor Tech’s application as compared to the registered mark. Thor Tech argued that if these multiple sets of marks were permissible, than the “Terrain” RV mark would likewise not be confused with trucks bearing the same name. The TTAB accepted these registrations as illustrative that the goods at issue, i.e. trucks and RV towable trailers, distinct products within the automotive industry. The TTAB additionally found that these fifty pairs of marks demonstrated a “pattern of registrations” that outweighed the two countervailing third party registrations supplied by the Trademark Examiner. (Both registrations included trucks and RV towable trailers in the recitation of goods).
Thor Tech has tried this tactic previously, but it is the first time it has done so successfully. In 2009, the TTAB denied its application to register its mark, “Wave” for RV’s – namely travel trailers and fifth wheel trailers, due to the possibility of confusion with the registered mark “The Wave”, which was registered for “trailers, dump trailers and truck bodies”. Thor Tech submitted thirteen sets of third-party registrations with the same or similar mark but held by different companies – one for RVs and the like and the other for dump trailers or truck bodies.
Thor Tech failed in its attempt due to the broader recitation of goods included in the cited registration. The prior mark “The Wave” was registered for “trailers, dump trailers, and truck bodies”. Thor Tech argued that the recited goods “trailers” should by context be limited to “dump trailers” and “truck bodies”. The TTAB disagreed. No mark within the thirteen sets Thor provided contained goods described as just “trailers” but included only the more limited terms “dump trailer,” “truck bodies”, etc. With no qualifier, the TTAB held that the comparisons were essentially irrelevant and meritless.
Instead of accepting defeat, Thor Tech should have considered filing for a partial cancellation of the cited mark, assuming the registrant was in fact only using its mark on “dump trailers” and “truck bodies” and not RV trailers. Partial cancellation is an effective tool when facing a conflicting mark with an overly broad recitation of goods. 15 U.S.C.A. § 1068 (West). Under what is called the “Eurostar Rule”, Thor Tech could have sought to exclude RV trailers form the cited registration by demonstrating that such exclusion would avoid likelihood of confusion with its own mark.
Thor Tech’s persistence makes clear that this strategy – using third-party registrations to show dissimilarity of goods – can be persuasive when done correctly. First of all, matching the recitation of goods in the application and registration was key in the later case. Second, the sheer volume of “twin” registrations supplied to the Examiner in the “Terrain” case was substantially greater than the number provided in the “Wave” case (i.e. 50 v. 13). The TTAB recognized the volume as indicative of a pattern which helped carry the day for Thor.
When faced with a rejection based on similarity of goods, the applicant can take a page from the Thor Tech playbook and try to find other “twin” sets of similar marks for parallel goods. If these don’t exist in sufficient quantities to satisfy the Examiner, applicants might consider filing a partial cancellation of the cited registration to carve out tis own good from the broader recitation of goods in the cited registration.