Beware the trademark registration pitfalls that await you under administrative law. Maybe you feel safe applying for trademark protection, simply because no one else is selling what you are selling and is not selling in your channels of trade. But that is not the test the Trademark Trial and Appeals Board (TTAB) applies if your application is challenged on the grounds of likely confusion. For similar-looking marks, even if you sell only recreational trailers for personal use in consumer retail channels and a previous registrant sells only commercial-grade dump trailers in appropriate industrial channels, and even if no consumer would likely be confused in comparing products out in the marketplace, you may fail to obtain registration.
That is the lesson of the recent decision in In re Thor Tech, Inc., 90 USPQ.2d 1634. Although decided on a refusal to register by an administrative official, the trademark examiner assigned to the application, the decision has significant implications for trademark oppositions brought by a contesting party as well.
In Thor Tech, the applicant filed an application for the mark WAVE for “recreational vehicles, namely travel trailers and fifth wheel trailers.” However, the Patent and Trademark Office refused to register the mark, citing a confusingly similar mark already in place. The registered mark was nearly identical: THE WAVE. More importantly, the Board deemed the Thor Tech’s application to be likely to create a likelihood of confusion with the registration already owned by Travis Body & Trailer, Inc.. Travis’s registration was for “trailers, dump trailers, and truck bodies.”
Four important lessons arise from this case:
It does not matter with what goods your trademark – and the other party’s – are used. The words on the application/registration are what matter, not what goes on in the real world.
Where the marks are nearly identical, a lesser degree of similarity between stated uses is needed to establish likely confusion.
The term “trailers” in the Travis’s registration is not restricted by the other goods listed there.
Finally, a broad term (“trailers”) may be read to establish likely confusion with the applicant’s narrower stated use (“travel trailers and fifth-wheel trailers”), irrespective of lack of overlap in the real world. Words – not deeds – matter in this administrative world.
For more information concerning trademark, patent, copyright and trade secret law and developments, see the LaRiviere, Grubman & Payne website at www.lgpatlaw.com.