Complementary Yet Not Related: How Granular Product Identifications Overcame a 2(d) Refusal

Overview

This case serves as a great example of how a carefully narrow identification of goods can dismantle a prima facie case of likelihood of confusion, even when the marks at issue are virtually indistinguishable.

Specifically, the Trademark Examining Attorney failed to provide evidence linking specialized industrial hydraulic prime movers with general trailers. Evidence of agricultural tractor brands selling trailers was deemed insufficient and poorly tailored to the Applicant's specific goods.

The Applicant's submission of a third-party declaration supports the finding of elevated consumer care. Because the procurement of industrial-grade machinery involves significant financial investment and technical scrutiny, this high level of purchaser care significantly mitigates the risk of confusion.

Background

The Applicant, ATMAX Equipment Co., sought registration of the standard character mark VERSAMAX on the Principal Register for "Tractors, namely, industrial, multifunction hydraulic prime movers for vegetation management, snow removal, street sweeping and asphalt repair," in class 12. The application originally identified the goods simply as "tractors."

The Trademark Examining Attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), finding a likelihood of confusion, based on four registered marks that include the term VERSAMAXX alone or with other elements. The VERSAMAXX marks cover various types of trailers, including “...Cargo trailers; Flatbed trailers; Lowbed trailers; Dump trailers; Tractor trailers; Equipment trailers; Bulk hauling trailers; Gooseneck trailers; Heavy haul transport carrier vehicles in the nature of trailers for transporting land vehicles, namely, lowboys, drop decks, double drop decks, flat decks and tag trailers,” in International Class 12

Upon the issuance of a final refusal, the Applicant appealed to the Board.

How the Board Analyzed the DuPont Factors

Although four marks were cited, the Board limited its review to the standard character registration. Finding no likelihood of confusion between the Applicant’s mark and this primary cited mark meant there would be no likelihood of confusion based on the other cited registrations, which cover the same or less similar marks and the same or less related goods.

DuPont #1: Similarity of the Marks

The first DuPont factor requires the Board to consider the marks in their entireties as to appearance, sound, connotation, and commercial impression. The Board observed that the Applicant’s mark, VERSAMAX, and the Cited Mark, VERSAMAXX, were "almost identical." The only physical difference between the two was the addition of a second "X" at the end of the Cited Mark. In terms of sound, the Board found that the marks were "effectively identical."

Regarding appearance, the Board noted that many consumers would likely fail to remember whether the mark ended in one "X" or two when encountering them in different settings. Relying on established precedent, the Board emphasized that the first element of a mark typically plays a dominant role in the consumer’s commercial impression because buyers often notice the initial words or syllables first. Consequently, the extra "X" at the end of the Cited Mark had "little impact" on the overall visual similarity. Because there was no evidence suggesting different meanings or commercial impressions for the terms, the Board concluded that this factor weighed heavily in favor of a finding of likelihood of confusion.

DuPont #2: Similarity or Relatedness of the Goods

The Board began by noting that the Cited Registration identified "trailers" without limitation, meaning any and all types of trailers were within its scope. In contrast, the Applicant had narrowed its identification to "industrial, multifunction hydraulic prime movers" for specific tasks like vegetation management and asphalt repair.

The Trademark Examining Attorney argued that because the marks were nearly identical, a lesser degree of similarity between the goods was required to support a refusal. To prove relatedness, the Examining Attorney provided evidence from four manufacturers that sell both tractors and trailers. However, the Board found this evidence insufficient. It critiqued the Examining Attorney for failing to focus on the specific goods identified in the application, noting that the Examining Attorney "never limited her analysis" to the specific type of industrial machines identified by the Applicant and instead relied on evidence of "any kind of tractor."

The Board applied the reasoning from In re Thor Tech, Inc., where it previously held that trucks and towable RV trailers were not related for trademark purposes despite being complementary. The Board explained that the central question is whether consumers are "accustomed to seeing both types of goods sold under a single mark."

The Board noted that while some large manufacturers like John Deere sell both, the Applicant provided evidence of third-party registrations showing that many different entities register similar marks for tractors and trailers separately. While the Board found this evidence, standing alone, was insufficient to support a conclusion that the goods at issue are not related, it nevertheless showed that differently branded tractors and trailers are common.

Furthermore, the Examining Attorney’s own evidence of dealerships actually undermined the refusal. This evidence showed that these dealers often sold one brand of tractor alongside entirely different brands of trailers. The Board concluded that the Examining Attorney failed to carry the burden to support the refusal with specific evidence. Thus, this factor weighed against a finding of confusion.

DuPont #3: Similarity of the Trade Channels

The Board found the evidence regarding trade channels to be "minimal" and ultimately neutral. While the Examining Attorney submitted evidence showing that agricultural tractors and trailers are often sold at the same dealerships, the Board found such evidence was not specific to the goods identified in the Application. Given the lack of specific evidence, the Board concluded that it could not determine if the channels overlapped in a way that would lead to confusion. Therefore, this factor was deemed neutral.

DuPont #4: Conditions of Sale and Consumer Care

The fourth DuPont factor examines the care likely to be exercised by purchasers. The Applicant submitted a declaration to argue that the relevant consumers are highly sophisticated. The declarant explained that the procurement of industrial tractors involves "rigorous planning, detailed technical specification, careful compliance with regulatory standards, and substantial financial investment."

The Board found this evidence persuasive, noting that the specialized nature and high cost of "industrial, multifunction hydraulic prime movers" would lead to "careful purchasing decisions." The Board acknowledged the Examining Attorney’s argument that even sophisticated consumers can be confused but noted that no evidence was provided to contradict the Applicant's claims of consumer care.

Even if a consumer were less careful when purchasing a trailer (the goods in the Cited Registration), the Board reasoned that the same consumer would necessarily exercise "great care" when purchasing the Applicant's expensive industrial machinery. This high degree of sophistication significantly reduced the risk of confusion, causing this factor to weigh against the refusal.

DuPont #6: Strength or Weakness of the Cited Mark

Under the sixth factor, the Board considered the number and nature of similar marks in use for similar goods. The Applicant attempted to show that the cited mark was weak by submitting evidence of third-party registrations for marks containing the term "VERSA."

However, the Board dismissed this evidence as "not probative." To be effective under the sixth factor, third-party marks must be used on similar goods. The Board found that the Applicant’s evidence was not limited to the specific goods identified in the application or the cited registration. Furthermore, the third-party marks were not as similar to the cited mark as the Applicant’s mark was. For instance, many of the third-party examples contained additional elements that distinguished them further. Consequently, the Board treated this factor as neutral.

Board’s Decision

The Board reversed the Section 2(d) refusal to register the mark VERSAMAX. In its concluding remarks, the Board acknowledged that while the marks were highly similar, the Trademark Examining Attorney failed to satisfy the burden of proving that the goods were related.

The Board emphasized that much of the evidence relied upon by the Examining Attorney was not sufficiently tailored to the actual "industrial, multifunction hydraulic prime movers" identified in the application. By balancing the "almost identical" nature of the marks against the unrelated nature of the goods and the high degree of consumer care exercised by specialized industrial purchasers, the Board determined that confusion was not likely.

Although this decision was not designated as precedential, it contains invaluable lessons for practitioners.

First, this case demonstrates the value of amending a broad identification (e.g., "tractors") to a highly technical one (e.g., "industrial multifunction hydraulic prime movers"). By doing so, the Applicant forced the Examining Attorney to find evidence relating to that specific niche. When the Examining Attorney continued to use general agricultural tractor evidence, the Board ruled it was of "minimal probative value" because it did not match the specific goods in the application. Practitioners should advise clients to define their goods by their technical operation and specific industrial utility to create distance from more common consumer or agricultural goods.

Second, this case reminds us of the holding in Thor Tech that complementarity does not automatically equal relatedness. The key is always whether consumers are accustomed to seeing both items sold under a single mark. If the industry norm is for consumers to mix and match different brands (as shown by the dealership evidence in this case), then consumers are not accustomed to seeing the goods come from the same source.