TTAB refuses to read limitations into cited registration

In In re Thor Tech Inc (Case 78634024, April 22 2009), in a precedential opinion, the Trademark Trial and Appeal Board (TTAB) has affirmed the US Patent and Trademark Office's (USPTO) refusal to register the trademark WAVE for “recreational vehicles, namely travel trailers and fifth-wheel trailers” on the grounds that it was likely to cause confusion with the registered mark THE WAVE for “trailers, dump trailers and truck bodies”.

It would be convenient if applicants facing refusal under Section 2(d) of the Lanham Act could convince the USPTO to limit or restrict the goods or services identified in a cited registration based on extrinsic evidence and the context of the other goods or services listed in the registration to a point that would prevent a likelihood of confusion. Unfortunately, this is not realistic because the TTAB has repeatedly refused to read limitations into cited registrations.

In the present case, Thor Tech Inc argued that the term 'trailers' in the registrant’s identification of goods should be read to mean “industrial and commercial trailers sold to professional purchasers” in view of the context of the other goods listed in the registration. The TTAB refused to read such a limitation into the registration, noting that it had “no authority to read any restrictions or limitations into the registrant’s description of goods”, as it must look only at the identification of goods set forth in the registration, regardless of what the record may reveal as to the particular nature of a registrant’s goods (see Squirtco v Tomy Corp (697 F2d 1038, 1983)).

The USPTO permits applicants to use a broad description of goods or services in an application as long as the broad terms used identify the goods or services to be covered with reasonably certainty. If there are no restrictions or limitations as to the nature or type of goods or services described in a registration (ie, “trailers”, as opposed to “industrial and commercial trailers”), the channels of trade or the class of purchasers to which the goods or services are directed, the USPTO must presume that:

• the description of goods or services in the registration encompasses all goods or services of the type described;
• they move in all channels of trade normal for those goods and services; and
• they are available to all classes of purchasers (see In re Linkvest SA (24 USPQ2d 1716 (1992)).

However, an applicant does have a remedy against a cited registration with a broad description of goods or services. If a registrant is not using the mark on the goods or services covered by the broad terms, an applicant’s remedy is not to argue for the TTAB to read limitations into the goods or services in the cited registration because the TTAB will not give any consideration to an applicant’s extrinsic evidence. Rather, an applicant faced with a Section 2(d) refusal should seek to limit the description of goods or services by filing a petition for whole or partial cancellation of the registration under Section 18 of the act and to allege that the proposed limitation would prevent a likelihood of confusion.

Although it may by frustrating and seem unrealistic at times to prevent an applicant from distinguishing its goods or services from those in a cited registration through extrinsic evidence, the authority is legion that the TTAB must look only at the goods or services reflected - either expressly or inherently - in a registration and cannot give weight to evidence purporting to show the particular nature of goods or services, restricted channels of trade or particular classes of purchasers.

Emily B Brown, King & Spalding LLP, New York