*1 IN RE TRACKMOBILE, INC.
Serial No. 715,890
April 13,1990
Charles F. Pigott, Jr. of Allegretti & Witcoff, Ltd., for applicant
Raul F. Cordova
Trademark Examining Attorney
Law Office 8
(Sidney Moskowitz, Managing Attorney)
Before Cissel, Seeherman and Hanak
Members
Opinion by Hanak
Trackmobile, Inc. (applicant) applied to register the design mark shown below for "mobile railcar movers." [FN1]
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Registration was refused pursuant to Section 2(d) of the Lanham Trademark Act on the grounds that applicant's mark, as applied to mobile railcar movers, so resembles the mark TOURTELLIER and design (shown below) -- previously registered, in part, for "runways and monorails with manual, mechanical, hydraulic, pneumatic, electric and electronic control, vehicles -- namely, light railway motor tractors" -- as to be likely to cause confusion, mistake or deception. [FN2]
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When the refusal was made final, applicant appealed to this Board. Both applicant and the Examining Attorney filed briefs. Applicant did not request an oral hearing.
In considering the issue of likelihood of confusion, we note at the outset that there are certain pertinent factors which cannot be seriously disputed. The design feature of the registered mark is quite similar to applicant's mark. Both consist of the letters TM with the letter T placed in the center of the letter M. Moreover, in both marks, the letters TM appear within a square or rectangle.
On the other hand, both applicant's mobile railcar movers and registrant's light railway motor tractors, however they may be defined, are expensive items sold only to industry and not to consumers. For example, applicant's mobile railcar mover (featured below) is a $350,000 piece of equipment which is capable of moving up to ten 100 ton railway freight cars.
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The real dispute in this case concerns the relationship between applicant's goods as described in its application (mobile railcar movers) and registrant's goods as described in the registration (light railway motor tractors). It is the position of the Examining Attorney that as described in the application and registration, the goods of applicant and registrant "are identical or substantially identical." (Examining Attorney's brief p. 7).
In contrast, applicant argues that the terms "mobile railcar movers" and "light railway motor tractors" have meanings to the relevant trade, and that these terms describe products which are quite different. In support of its position, applicant has made of record not only literature describing its own mobile railcar movers (pictured previously), but also literature taken from the application file of Registration No. 1,290,726 describing registrant's light railway motor tractors. As described in this latter literature, registrant's light railway motor tractors are relatively small, unmanned devices which carry boxes, parts and other loads from point to point within a factory.
*2 It is clear that in determining the issue of likelihood of confusion in ex parte cases, this Board must compare applicant's goods as set forth in its application with the goods as set forth in the cited registration. It is improper to decide the issue of likelihood of confusion based upon a comparison of applicant's actual goods with registrant's actual goods. If registrant's goods are broadly described in its registration so as to include types of goods which are similar to applicant's goods, then an applicant in an ex parte case cannot properly argue that, in point of fact, registrant actually uses its mark on a far more limited range of goods which range does not include goods which are similar to applicant's goods.
Applicant acknowledges the foregoing rule of law by noting, by way of example, that if a prior registration utilizes the unambiguous term "vegetables" as its description of goods, it would be improper for an applicant to argue that in point of fact registrant makes use of its mark only on "peas." (Applicant's reply brief p. 3). However, applicant contends that it is not attempting to narrow the description of goods set forth in the cited registration (light railway motor tractors), but rather it is attempting to show by means of extrinsic evidence that the term "light railway motor tractors" has a meaning in the trade, and that this meaning does not include applicant's goods (mobile railcar movers). As previously noted, this extrinsic evidence consists of applicant's literature describing mobile railcar movers and literature taken from the file of Registration No. 1,290,726 describing light railway motor tractors.
The terms "mobile railcar movers" and "light railway motor tractors" are somewhat vague to members of this Board who possess no special knowledge about such equipment. We could, as did the Examining Attorney, interpret the individual words in these two terms so as to come up with meanings for the terms which are quite similar. For example, a "tractor" can be described as a "mover," and a "railcar" can be said to run on a "railway."
However, when the description of goods for a cited registration is somewhat unclear, as is the case herein, it is improper to simply consider that description in a vacuum and attach all possible interpretations to it when the applicant has presented extrinsic evidence showing that the description of goods has a specific meaning to members of the trade. Cf. In re Protection Controls, Inc., 185 USPQ 692, 694 (TTAB 1975) ("... [T]he identification of goods in the [cited] registration as 'monitoring instrument,' per se, is so indefinite and so all inclusive as to be meaningless in attempting to ascertain whether the respective monitoring apparatus [of applicant and registrant] relate to the same or disparate fields... [T]he better approach in this particular situation ... is to authorize publication of the mark for opposition4)4B'D'D'); Acomb v. Polywood Plastics Corp., 187 USPQ 188, 190 (TTAB 1975) ("Judicial interpretation, as reflected by decisions of this and other tribunals, has accorded a registration in which the goods are recited in a general rather than a specific nature a broad scope of protection sufficient to cover all types of the particular product or products enumerated therein. However, ... in the instant case, 'molded wood products consisting of particulate wood and resin' [the description of goods in the registration] is so broad and comprehensive as to be devoid of any information as to just what molded wood products are marketed by opposer.").
*3 In the present case, given the somewhat vague nature of registrant's description of goods (light railway motor tractors), and given the fact that applicant has presented extrinsic evidence showing that the term "light railway motor tractors" is used to refer to relatively small, unmanned devices utilized to move loads from point to point within a factory, it is not proper to rely simply upon abstract reasoning to give this somewhat vague term a broad meaning absent contervailing extrinsic evidence showing that it is entitled to such a broad meaning. That is to say, given the fact that applicant provided extrinsic evidence showing that the term "light railway motor tractors" has a somewhat limited meaning that does include "mobile railway movers," it was incumbent upon the Examining Attorney to provide at least some evidence tending to suggest that the term "light railway motor tractors" has a broader meaning.
In short, we cannot accept the Examining Attorney's conclusion that applicant's goods as described in its application and registrant's goods as described in its registration are identical or substantially identical. Based on the present record, we find that as described in the application and registration, the goods are, at most, only somewhat related. Given the difference in the marks and the fact that the goods of applicant and registrant are expensive pieces of equipment sold to industry and not to ordinary consumers, we find that there is no likelihood of confusion.
Decision: The refusal to register is reversed.
R. F. Cissel
E. J. Seeherman
E. W. Hanak
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 715,890 filed March 10, 1988 claiming first use on October 20, 1987.
FN2. Registration No. 1,290,726 issued August 21, 1984.