113 USPQ2d 1546 (TTAB 2015)
How Thor Tech reversed a Section 2(d) refusal of identical TERRAIN marks using third-party registrations — the holding, the two-prong test, how to cite it in a response, its limits, and the live USPTO records.
The 30-second version
In July 2012, Thor Tech — one of the biggest names in recreational vehicles — set out to register a single word for its line of towable trailers: TERRAIN. There was a problem. General Motors already owned TERRAIN, registered three years earlier, for the GMC Terrain. Same word, no daylight between them, and both sat squarely in Class 12, the international class for vehicles.
To the examining attorney, this looked straightforward. Identical marks and an overlapping class of goods are a classic Section 2(d) fact pattern — one of the most common grounds for refusing registration. The refusal went final.
Many applicants abandon at this point. Thor Tech appealed to the Trademark Trial and Appeal Board instead — and won. The Board’s reasoning is why first-years still read this case a decade later: identical marks, it held, are not enough. You also have to prove the goods are related. And Thor Tech proved they weren’t.
General Motors registers TERRAIN (Reg. 3707074) for “motor land vehicles, namely, trucks” — the GMC Terrain.
Thor Tech, Inc., a major RV manufacturer, applies to register the identical word TERRAIN (Serial 85667188) for “recreational vehicles, namely, towable trailers.”
The examining attorney refuses: the marks are identical and both sit in Class 12. After Thor Tech responds, the refusal is made final.
Rather than abandon, Thor Tech appeals — conceding the marks are identical and staking the case entirely on whether the goods are related.
The Board reverses on the strength of the applicant’s third-party-registration evidence, and designates the decision precedential.
Thor Tech’s TERRAIN issues as Reg. 4837075.
Put yourself in the examining attorney’s chair. Two marks are spelled exactly the same, and both are filed in Class 12, the class for vehicles. Under Section 2(d), that is the canonical likelihood-of-confusion fact pattern — the one examiners are trained to refuse on sight. Classification is administrative and does not by itself make goods related (TMEP §1207.01(a)(iv)) — but in practice, an identical mark on other Class 12 goods often still draws a refusal even when the underlying products are quite different. That is exactly the assumption Thor Tech set out to rebut. The examiner pressed it further still: trucks and trailers are complementary — you tow one with the other — which examiners routinely treat as a sign of relatedness. On paper, the applicant looked cornered.
Prong 1 — the marks
Similarity of the marks — in sound, appearance, meaning, and commercial impression.
Prong 2 — the goods
Relatedness of the goods or services — whether buyers would assume they come from the same source.
A refusal needs both prongs to point toward confusion. Defeat either one and the refusal can fall. Thor Tech conceded the marks were identical — prong one was unwinnable — and won entirely on prong two, proving trucks and towable trailers are not related goods even though both are “vehicles” in Class 12. Same class is not the same as related goods.
These are the two factors that usually decide §2(d), but the governing standard is the full 13-factor DuPont likelihood-of-confusion test — any factor can control on the right record.
Third-party registrations
Thor Tech put roughly fifty sets of registrations into the record showing the same or similar marks owned by different, unrelated parties — one party for trucks, another for RV trailers. If the marketplace already lets those marks coexist, the goods cannot be as related as the examiner assumed.
Separate industries and channels
Trucks and towable RV trailers come from different manufacturers and reach buyers through different trade channels.
Careful, expensive purchases
These are costly goods bought with deliberation — the cited truck sold for around $26,000 and the trailers ran from roughly $8,000 to $24,000 — and the Board found buyers exercise a high degree of care, which cuts against confusion.
“businesses in these two industries believe that their respective goods are distinct enough that confusion between even identical marks is unlikely.”
The rule to memorize
Even identical marks can coexist when the goods are genuinely unrelated — and a strong set of third-party registrations, showing the same marks owned by different parties across the two product categories, is powerful evidence that the relevant industries treat the goods as distinct. Shorthand: identical marks are not an automatic Section 2(d) refusal; relatedness is its own fight.
As the Board held in In re Thor Tech, Inc., 113 USPQ2d 1546 (TTAB 2015), the mere fact that goods fall within the same international class does not make them related for Section 2(d) purposes. There, identical TERRAIN marks were permitted to coexist for trucks and towable trailers because third-party registrations and the nature of the goods showed the relevant industries treat them as distinct. Here, Applicant’s [goods] and Registrant’s [goods] are similarly unrelated, as the attached [N] third-party registrations demonstrate.
Lead with the principle, not the trivia. The case is a vehicle for your evidence — it is only as persuasive as the third-party registrations you attach. Mirror Thor Tech’s fact pattern onto your own goods.
Of 201 applications that cited this case against a §2(d) likelihood of confusion refusal, 56 have reached a final outcome — 21.4% registered, below the 37.6% §2(d) baseline (N=10,097).
Applications that cite Thor Tech register at a lower rate than average — but that is selection bias, not weakness. Lawyers reach for this case precisely when the marks are already identical or near-identical and there is no marks-prong argument left. Those are the hardest Section 2(d) refusals to begin with. The citation does not win the case; the strength of your third-party-registration exhibit does.
These rates are correlational, not causal. Citing a case does not “win” it — a response that cites a precedent often faced a harder, more contested refusal to begin with. Every rate is shown against its refusal-ground baseline and the number of terminal (finally-decided) applications it is based on; pending applications are excluded. This is a descriptive picture of how the profession argues, not legal advice.
This pattern is not unique to this case — the same kind of marks coexist on the live register under different owners. A live example:
A persuasive response curates a set of these matched to your specific goods. GleanMark's Coexistence tool assembles that third-party-registration exhibit from the live register automatically.
See coexistence evidence on the registerTHOR TECH, INC. · Serial 85667188
Applicant’s mark — recreational towable trailers (Class 12). The refusal the Board reversed; issued as Reg. 4837075.
GENERAL MOTORS LLC · Serial 78948286
The cited registration — motor land vehicles, namely trucks (Reg. 3707074, Class 12).
Live USPTO records in GleanMark — click through for full prosecution history.
The complete TTAB record behind this decision — every filing and exhibit, the full timeline, and a one-click AI summary.
Open proceeding 85667188A footnote that keeps the case human: Thor Tech’s hard-won registration (Reg. 4837075) was cancelled in 2022 after the Section 8 maintenance window passed, and the company re-staked TERRAIN for motorhomes (Reg. 6860512). The registration is gone; the precedent it created is not.
What is the holding of In re Thor Tech?
The TTAB held that identical marks (TERRAIN) could coexist for trucks and towable trailers because the goods were not related — being in the same class does not make goods related. Third-party registrations showing the marks coexisting under different owners were key evidence.
Can identical trademarks coexist on the register?
Yes. Likelihood of confusion under Section 2(d) requires both similar marks and related goods. Even identical marks can register side by side when the goods are unrelated and the evidence — typically third-party registrations — shows the relevant industries treat them as distinct.
How do third-party registrations overcome a 2(d) refusal?
A pattern of the same or similar marks registered by different, unrelated owners across the two goods categories shows the marketplace already treats those goods as separate, rebutting the examiner’s assumption that the goods are related. In re Thor Tech is the leading precedent for this argument.
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