We are a boutique IP firm located in Osaka, Japan, specializing in trademark, design, specific unfair competition and copyright matters.

Bottom line: The Board found “TERRA” for automobiles not similar to “TERRA-TIRE” for automobile tires.

The applicant filed an application for “TERRA” in standard character designating automobiles and their parts and fittings (excluding automobile tires and inner tubes for automobile tires), etc.  The examiner refused registration deeming the applied-for mark confusingly similar to “TERRA-TIRE” and transliteration of “TERRA TIRE” in katakana for aircraft wheel tires and automobile tires, etc.  The Board reversed this decision.

The Board analyzed the applied-for mark and found that it bears sound [te-ra] and meaning earth or land.  As to the cited marks, the Board found that they will bear sound [te-ra-ta-i-ya] alone and no specific meaning because the cited marks will be recognized wholly as a coined word even though the latter element TIRE refers to the designated goods.  The Board compared the sound [te-ra] and [te-ra-ta-i-ya] and found the marks not similar in sound due to the difference of sound construction and length.  Further the marks are found distinguishable in appearance and not comparable in meaning.

The appeal decision does not mention anything about the relatedness of automobiles and automobile tires.  According to the Examination Guidelines of Goods and Services, these goods are presumed similar under similarity code 12A05.  The Board found that the marks at issue are distinguishable enough even the goods are presumed similar.

And so the Board reversed the refusal, and granted registration of “TERRA” for inter alia automobiles (excluding automobile tires).

 

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