Trademark Trial and Appeal Board: Identical Marks For Complementary Goods Not Confusing

Author: Laura K. Johnson

In a precedential decision dated January 26, 2015, the Trademark Trial and Appeal Board reversed the Examining Attorney’s finding that a likelihood of confusion exists between identical TERRAIN marks covering related goods.

Applicant in In re Thor Tech, Inc. (Serial No. 85/667,188) sought registration of the word mark TERRAIN for “recreation vehicles, namely, towable trailers” in Class 12. The Examining Attorney refused registration under Section 2(d) of the Lanham Act based on a registration owned by General Motors for the word mark TERRAIN covering “motor vehicles, namely, trucks” in Class 12.

In reversing the refusal, the Board found that despite the marks being identical, the pending application and existing registration covered complementary, but not overlapping goods, and thus the similarity-of-goods factor weighed against a likelihood of confusion. In doing so, the Board heavily relied upon Applicant’s evidence of third-party registrations showing that the same or similar marks had previously been registered for trucks, SUVs or automobiles, on the one hand, and recreation vehicles, travel trailers, or motor homes, on the other hand. The Board found this co-existence evidenced that businesses in these two industries believe that their respective goods are distinct enough that confusion even between identical marks is unlikely.

Further, while the Board acknowledged the complementary nature of the parties’ goods (i.e., a trailer can be towed by a car or truck), the co-existing registrations suggested that consumers were aware that these types of goods were offered by different companies under the same or similar marks.

When balancing the likelihood-of-confusion factors as a whole, the Board found that in addition to the dissimilarities of the goods, the channels of trade and high degree of consumer care likely to be exercised by the relevant consumers supported the conclusion that Applicant’s TERRAIN mark was not likely to cause confusion with General Motor’s TERRAIN mark.


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