Pace American, Inc. and Jack Benderv.Haulmark Industries, Inc.

Trademark Trial and Appeal Board

Sep 24, 1999

No. 92023473 (T.T.A.B. Sep. 24, 1999)

Hearing: Paper No. 32
February 11, 1999 DEB
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 9/24/99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Pace American, Inc. and Jack Bender
v.
Haulmark Industries, Inc.
_____
Cancellation No. 23,473
_____
Terence J. Linn of Van Dyke Gardner Linn & Burkhart, LLP for
Pace American, Inc. and Jack Bender.
James D. Hall of Baker & Daniels for Haulmark Industries,
Inc.
_____
Before Hanak, Hairston and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Pace American, Inc. and Jack Bender (petitioners) have
petitioned to cancel a registration owned by Haulmark
Industries, Inc. (respondent) for the mark “RACE TRAILERS”
(with the word “trailers” disclaimed) for “towable storage
Cancellation No. 23,473
2
trailers.”1 As grounds for cancellation, petitioners allege
in their amended petition for cancellation, that members of
the trade use the term “race trailers” in a descriptive
and/or generic sense to refer to a particular type of
enclosed cargo trailers; and in the alternative, if there
are trademark rights in the phrase capable of being
protected, such rights belong with petitioners by virtue of
their prior and continuous usage of the trademark “RACE
TRAILERS BY JACK BENDER.”2
Respondent, in its answer, has denied the salient
allegations of the petition to cancel.
The record consists of the file of the involved
registration; the testimony deposition (with exhibits) of
petitioner’s witnesses as follows: Jack Bender, Vice
President of Petitioner, Pace American, Inc.; Mitchell I.
Bender, President and CEO of Petitioner, Pace American,
Inc.; Bradley J. Baker, CEO of Classic Manufacturing Inc.;
and Peter L. Russell, President of GM Racing Trailers;
petitioner’s notice of reliance under Rule 2.122(e) on
excerpts from various printed publications and other
documentary evidence; the testimony deposition (with

1 Registration Number 1,581,391, issued on February 6, 1990
from an application filed on March 16, 1989, which sets forth
dates of first use of December 21, 1987; Section 8 affidavit
accepted.
2 This alternative basis for cancellation was not explicitly
spelled out in the original petition for cancellation.
Cancellation No. 23,473
3
exhibits) of respondent’s witnesses as follows: L. Michael
Arnold, CEO of Markline Industries of Pennsylvania and
respondent, Haulmark Industries, Inc.; Bruce Litton, trailer
salesman for respondent; and Thomas Gale, a trailer business
owner; and respondent’s notice of reliance under Rule
2.122(e) on excerpts from various printed publications.
Both parties filed briefs on the case and were represented
by counsel at the oral hearing.
The instant petition to cancel was filed on November
22, 1994,3 several months before the date of expiration of
the fifth year, counted from the date on which the
registration of “RACE TRAILERS” was issued. Nonetheless, on
March 15, 1995, Haulmark Industries, Inc. filed a combined
§8 (use) and §15 (incontestability) declaration4 in the

3 However, rather than being prompted by the approach of the
fifth anniversary of the registration, it appears as if a letter
to petitioner, Pace American, Inc., dated June 23, 1994, from
respondent’s attorney, actually prompted the instant petition to
cancel the contested registration. This letter charged that a
specific advertisement placed in National Kart News by Pace
American, Inc. infringed respondent’s federally registered
trademark, and requested that “… the words RACE TRAILER be
deleted” from any further Pace American, Inc. ads. The record
shows a flurry of similar “policing” actions on the part of
respondent in 1993 and 1994.
4 Incontestable status is attained by filing a Section 15
affidavit with the Commissioner within one year after a five-year
period in which the federally registered mark has been in
continuous use and is still in use in commerce. See 15 U.S.C.
Section 1065(3)(1994); 37 C.F.R. Section 2.167. An applicant
must declare that: (1) there has been "no final decision adverse
to … registrant's right to register the [mark] or to keep the
same on the register," and (2) there is "no proceeding involving
said rights pending in the Patent or Trademark Office or in a
Cancellation No. 23,473
4
registration -- four months after the date of institution of
the cancellation proceeding by this Board -- as if unaware
of the significance of this proceeding on the Section 15
affidavit. Accordingly, the Post Registration unit of the
U.S. Patent and Trademark Office made no notation about the
filing of the §15 affidavit of incontestability.
We turn first to a review of the parties to this
action. One of the petitioners is Pace American, Inc., an
Indiana corporation that manufactures enclosed cargo
trailers for commercial and recreational uses. This company
was founded in 1986 by Mitchell I. Bender, and his father,
Jack Bender, who serve, respectively, as Chief Executive
Officer/President, and Vice President, of Pace American,
Inc.5 The second listed petitioner in the amended petition
to cancel is Jack Bender, as an individual. Mr. Bender
became a trailer dealer in the mid-1970’s, and continued as
the owner of his own business to sell new and used cargo
trailers through 19926 – five or six years after helping to
found Pace American, Inc., a trailer manufacturer.
Respondent, Haulmark Industries, Inc., founded in 1977,
is also a manufacturer of steel-framed, enclosed cargo

court and not finally disposed of." See 37 C.F.R. Section
2.167(d),(e).
5 Testimony deposition of Jack Bender, pp. 4-5; Testimony
deposition of Mitchell I. Bender, pp. 8–9, 17.
Cancellation No. 23,473
5
trailers,7 and is a direct competitor of Pace American, Inc.
The record shows that petitioner, Jack Bender, as a trailer
dealer, had actually bought some trailers from respondent,
Haulmark Industries, Inc., prior to starting his own
manufacturing operation, Pace American, Inc.8
Respondent claims that it coined the term “Race
Trailers” in December 1987.9 This is consistent with claims
respondent made while prosecuting the application that
resulted in the contested registration.10 However, after
reviewing carefully the complete record in this proceeding,
we find that the weight of the evidence belies this claim.
Simply stated, the record herein shows that the term “Race
Trailers” has never been a trademark, but rather entered the
public domain as a generic name from the time of its
inception.

6 Testimony deposition of Jack Bender, pp. 5–6; Testimony
deposition of Mitchell I. Bender, pp. 9, 28-29.
7 Testimony deposition of L. Michael Arnold, p. 6.
8 Testimony deposition of L. Michael Arnold, p. 19; Testimony
deposition of Jack Bender, pp. 6, 22, 25; Testimony deposition of
L. Michael Arnold, p. 19.
9 Letter from Thomas J. Dodd to Murray Smith on July 8, 1993
(Petitioner’s Exhibit No. 12).
10 “…[T]he term ‘race’ as used in the mark was first conceived
because of the sleek or ‘racy’ design of the trailer… The
applicant’s goods are trailers, not race cars… [T]he word
combination ‘RACE TRAILERS’ is inventive, incongruous and
imaginative as opposed to descriptive…” Applicant Haulmark
Industries, Inc., response to the Patent and Trademark Office’s
first Office action, dated August 3, 1989, from Thomas J. Dodd.
Cancellation No. 23,473
6
By the mid-1970’s, Jack Bender, along with a few other
early competitors, like Peter Russell,11 saw the maintenance
and security advantages for race car owners of having fully-
enclosed, towable trailers. Prior to this development
(i.e., during the muscle-car period of the 1960’s), open
trailers were the norm for hauling race cars.
Unfortunately, open trailers left valuable automobiles and
related racing equipment exposed to weather, vandalism,
etc.12
Interestingly but not surprisingly, many of the
“grandfathers” in this burgeoning industry of modifying
cargo trailers for hauling a variety of racing vehicles had
strong personal or familial involvement with racing --
everything from go-karts, motorcycles and snowmobiles to
vintage automobiles, drag-racers and high-performance
vehicles on the professional racing circuit.13 Also it
should come as no surprise that many of the key players have
been located in Elkhart County, Indiana -- known for its

11 Mr. Russell: “…If you just get your history, you are going
to figure out I was the first one to [use the term ‘race
trailer’] in this area – period.”
Q (Counsel, Terence J. Linn): “When is the first time you
can recall having used ‘race trailer’ for these enclosed
trailers?”
Mr. Russell: “ ’75. 1975”
Testimony deposition of Peter L. Russell, p. 26.
12 Testimony deposition of Peter L. Russell, pp. 7-8; Testimony
deposition of Mitchell I. Bender, p. 15.
Cancellation No. 23,473
7
recreational-vehicle industry. For example, the record
shows that among the most prominent names in this
specialized field,14 Wells Cargo is located in Elkhart, Pace
American in Middlebury, and Haulmark in Bristol, each one
located minutes from the others. All have quite large
manufacturing operations in Elkhart County for these
specially modified cargo trailers. The principals of these
companies testified to the degree of intense competition
that characterizes their industry. Accordingly, trailer
manufacturers and their dealers advertise in many of the
same national publications.15 Print advertisements
containing their respective trademarks16 appear in a variety
of types of advertisements, with the majority placed by
various trailer dealers from around the United States.17
In the late 1970’s and into the 1980’s, Jack Bender was
probably selling more trailers to racers than anyone else in

13 Testimony deposition of Peter L. Russell, pp. 6-7; Testimony
deposition of Mitchell I. Bender, pp. 9-13, 15.
14 Testimony deposition of L. Michael Arnold, p. 15.
15 The record contains articles and advertisements taken from
National Dragster, On-Track, Auto Week, Drag Review, Jr. Drag
Racer, Sports Car, National Speed Sports News, Super Stock, Open
Wheel, Dragster News, Parts Peddler, Circle Track, Performance
Racing Industry, Victory Lane Magazine, and National Kart News.
16 In addition to the trade names qua service marks of the
various dealers, the trademarks relevant to this proceeding that
most frequently occurred were several trademarks owned by
petitioners (“Pace,” “Pace American,” and “Race Trailers by Jack
Bender”) and respondent’s housemark (“Haulmark”).
17 Petitioner’s Exhibits #9, #13, #16, ##18-24, ##34-40; #44,
##51-52, #57, ##61-67, etc.
Cancellation No. 23,473
8
the industry.18 Accordingly, Mr. Bender seems to have had
an early and frequent presence in the pages of national
publications targeted to racers.19 Nonetheless, these pages
of classified advertisements repeatedly reveal the presence
of these trademarks,20 along with generic usage’s of the
designations “race trailer” or “race trailers,” all within
advertisement copy designed and placed by third party
trailer dealers. This variety of both parties’ trademarks,
along with generic uses by third-parties, often appeared in
adjoining columns on the same pages of classified
advertisements.21 Finally, to further ensure the prominence
of their marks (e.g., “RACE TRAILERS BY JACK BENDER,” “PACE”
AND “PACE AMERICAN”) right in the limelight of various
racing venues, petitioners also marketed their trailers by
sponsoring various racing teams of go-karts, snowmobiles,
motorcycles and automobiles.22

18 Testimony deposition of Mitchell I. Bender, p. 20.
19 Testimony deposition of Mitchell I. Bender, pp. 37, 48, 87.
20 Again, the relevant marks include “Pace,” “Pace American,”
“Race Trailers by Jack Bender,” and “Haulmark.”
21 Petitioner’s Exhibits #9 (“Race Trailers by Jack Bender,”
“Race Trailers by Little Red Wagon”); #13 (“Southern Pace Race
Trailers, Inc.”); #16 (“Race Trailers, Bomar Racing, Ltd.); #21
(Topeka Race Trailers”); #24 (“Race Trailer Specialists,”
“Dominator Race Trailers” by Classic); #61 (“Ron Carter’s Race™
Trailers”); #64 (“Timber Wolf Race Trailers”); #66 (“Race
Trailers Available to Winnebago/Itasca Owners Only!,” Stout’s RV
Sales, Inc.); and #67 (Vintage Trailers Ltd., “Your Race Trailer
Specialist”).
22 Testimony deposition of Mitchell I. Bender, pp. 70 - 75.
Cancellation No. 23,473
9
As noted above, in the period of 1993 to 1994,
petitioner, Pace American, Inc., was among respondent’s
competitors who received threatening letters from
respondent’s attorney about their usage of the term “race
trailers” in a generic sense23 The record shows that some
of these firms argued vehemently in correspondence back to
respondent’s counsel24 and again in testimony taken for this
proceeding, that the terms “race trailer” and “race
trailers” have been used continuously since the 1970’s by
manufacturers, dealers and racing enthusiasts alike, to
refer to enclosed trailers for hauling go-karts,
snowmobiles, bicycles, motorcycles, cars, and the supplies

23 Classic Manufacturing, Petitioner’s Exhibit #6; Pace
American, Inc., Petitioner’s Exhibit #68; Cars Plus, Inc. & Ron
Carter, Respondent’s Exhibit #9; Midwest Trailers, Wells Cargo,
Inc., Cowboy Coaches, Little Red Wagon, TrailerSource, R.A. Adams
Enterprises, Inc., Topeka Race Trailers, Raider Race Trailers,
Bomar Racing, Ltd., Hudson River Truck Equipment, Transport
Design, Terry’s Trailers, and Race Trailers, Inc., Respondent’s
Exhibit #11.
24 “…[T]he phrase ‘Race Trailers’ and ‘Race Car Trailers’ are
used generically to describe the type of trailer…If you asked 100
race car owners what kind of trailer they own, they would say a
race trailer. They don’t own a cargo trailer, or a utility
trailer, they have a race trailer.” Bradley J. Baker, President
of Classic Manufacturing, April 28, 1993.
“… [T]he words ‘race trailer’ have been a generic term for
many years and continue to be a generic term… It is not at all
clear that the Patent and Trademark Office would have granted
Haulmark’s registration if it has been aware of the existence of
this accepted generic use in a national magazine at a point in
time during the pendency of the application.” T. Murray Smith,
Counsel for Classic Manufacturing, June 9, 1993.
Cancellation No. 23,473
10
and accessories for these various racing vehicles25 – and
thus could never have functioned as Haulmark’s trademark to
indicate origin.26 In fact, on cross-examination, one of
respondent’s witnesses, Mr. Bruce Litton, seemed to agree
that many people in the racing industry use the term “race
trailer” in a non-trademark sense to denote a towable
trailer for hauling a racing vehicle:
Q by Linn: Back in 1982, did you ever see
a Haulmark trailer that was
marked with the term "Race
Trailer"?
A by Litton: No.
Q by Linn: Did people call that trailer
during that time period a "Race
Trailer"?
A by Litton: They called it -- I mean, at
that time, they called it
either a “race trailer” or a
“race car trailer.” You know,
I have no recollection of what
they actually called it.
Q by Linn: In -- Just in dealing with the
racing industry. I – have you
heard people refer to the
trailers that they use to haul
their race cars as a "race
trailer"?

25 One story from the San Jose Mercury News, of September 3,
1993, demonstrates just how elaborate these trailers can be when
designed for top-of-the-line NASCAR / Winston Cup racers: “A
fully outfitted race trailer includes a lounge, workshop,
generators, air conditioning, a deck for two cars and a lift
gate. About 80% of the teams at Indy use his trailers, which
cost from $50,000 for basic models to four times that much for
specialty jobs, he [Bruce Canepa] said…”
26 Testimony deposition of Bradley J. Baker, pp. 12-17;
Testimony deposition of Mitchell I. Bender, pp. 11-17; Testimony
deposition of Peter L. Russell, pp. 10-27.
Cancellation No. 23,473
11
A by Litton: I’ve heard them called “race
car trailers” and “race
trailers” both, yes.
Q by Linn: And are those terms used pretty
much interchangeably?
A by Litton: They – It's kind of – It's kind
of where you don't really – I
don't know how to say this.
You don’t – you don’t really –
you know what they’re talking
about. They’re talking about
their enclosed trailers.
Q by Linn: That they call their race --
A by Litton: (Interrupting) That they –
they call – That they haul a
race car in. You can like say
that they’ve called them
anything from “race car
trailer” to “my enclosed car
hauler” or – or – They’ve –
They’ve called it several
things.
Q by Linn: Now the people that have used
“race trailer” in this way,
what type of people have you
heard say that? I mean, what –
what kind of people have you
heard making reference to their
“trailer” as a “race trailer”?
A by Litton: It’s been people that’s -
that’s had cars in – inside the
trailers.
Q by Linn: Would these be drivers?
A by Litton: Usually – Usually it’s the –
the trailer owner, you know. I
mean – or whatever. I mean, it
could be the driver or the – or
whoever, for that matter.
Q by Linn: When these people are making
reference to their trailer,
they aren’t meaning to imply
Haulmark, are they?
A by Litton: To be honest with you, a good
portion of them – a good
portion of them are Haulmark
trailers.
Q by Linn: But there’s a number that are
not Haulmark trailers?
Cancellation No. 23,473
12
A by Litton: Oh, yes. I mean, there’s –
there’s a number of – several –
several trailers out there; but
yes, some of them can be Haul –
not Haulmark trailers too.
Q by Linn: Is it your belief that people
in general in this industry
refer to a trailer that they
use to haul their race car in
as a “race trailer”?
A by Litton: From my – From my point of
view…
Q by Linn: (Interrupting) Well no. I
didn’t ask from your point of
view what’s the proper
terminology. It’s whether
other people refer to it as
such, and whether you have
heard people refer to it that
way?
A by Litton: Okay, ask the question all over
again.
Q by Linn: Okay. Is it your belief that
other people in this industry
refer to a trailer in which
they haul their race car as a
“race trailer”?
A by Litton: Yes, you could say that.
Q by Linn: Now, a race trailer doesn’t
necessarily have to be used to
haul a race car, does it?
A by Litton: No.
Q by Linn: I mean, a race trailer is a
term used to refer to a trailer
that hauls a racing vehicle of
some type, is that correct?
A by Litton: I mean, it could be a street
car for that matter. I mean –
But it can be any – a type of
car, race car or a street car
or cargo for that – for that
matter.
Q by Linn: And do you believe that people
in this trade refer to these
other types of trailers as
“race trailers” just to
Cancellation No. 23,473
13
designate the – the style of
trailers?
A by Litton: They – they more generally
refer to them as both “race car
trailers” and “race trailers.”
You know, they’re --
Q by Linn: Used interchangeably?
A by Litton: Used interchangeably, but -- I
mean, like when I describe my
particular trailer, I call it
my “enclosed trailer” or my
“race car trailer.” I don’t –
You know, I mean – I mean, I –
I mean, you never -- you never
ever actually categorize it in
the same way when you’re
referring to an object… 27
The record also shows that from 1976 until the early
1990’s, Jack Bender was a dealer of enclosed trailers who
actively traded under the name “RACE TRAILERS BY JACK
BENDER.” Beginning in the early eighties, Jack Bender
applied a very large, blue circular “sticker” to all of the
new and used trailers he sold, containing the following
logo:

27 Testimony deposition of Bruce Litton, pp. 38 – 39.
Cancellation No. 23,473
14
28
Because these stickers did not always stand the test of
time, a smaller, aluminum nameplate applied with rivets
later replaced this sticker, and included Jack Bender’s
telephone number:
29
Many of the trailers exhibiting these “RACE TRAILERS BY
JACK BENDER” designations continue to be in use, and the
trailers are still being serviced by Pace American, Inc.30

28 Testimony deposition of Mitchell I. Bender, p. 25. This
graphic design was also made into cloth patches to be sewn onto
jackets, smocks, hats, etc., Mitchell I. Bender, p. 59.
29 Testimony deposition of Mitchell I. Bender, pp. 27, 62.
30 Testimony deposition of Mitchell I. Bender, pp. 25, 114,
119-120; Testimony deposition of Jack Bender, pp. 8-10.
Cancellation No. 23,473
15
The record is replete with advertisements and other
uses of Jack Bender’s circular logo. The record establishes
that Jack Bender indeed began using this circular logo (and
the attendant trade name in other formats) long prior to the
alleged coinage of the term “Race Trailers” by respondent.
In fact, Ron Carter, one of the persons originally cited by
respondent as having been involved in selecting this
trademark for respondent,31 had sustained contacts with
petitioner, Jack Bender, his trade name and logos prior to
Ron Carter’s involvement with Haulmark,32 and the date of
alleged first use of this term by Haulmark Industries, Inc.
We also find it incredulous that one of respondent’s
principals33 and one of its dealers34 could take the position
that they did not know of Jack Bender’s trade name (i.e.,
“RACE TRAILERS BY JACK BENDER”) – despite the concentration
of an intensely competitive industry within miles of each
other in Elkhart County, Indiana; that they had not seen
Jack Bender’s logos over the years prior to 198735 -- in
spite of the large volume of trailers Jack Bender had marked
with his large blue stickers and metal plaques, the hundreds
of trademarked jackets and clothing patches Mr. Bender

31 Testimony deposition of L. Michael Arnold, p. 23.
32 Testimony deposition of Mitchell I. Bender, pp. 21 – 24.
33 Testimony deposition of L. Michael Arnold, pp. 9
34 Testimony deposition of Thomas Gale, p. 16.
35 Testimony deposition of Thomas Gale, p. 17.
Cancellation No. 23,473
16
handed out, and the variety of competitive racing teams both
petitioners have sponsored; and that they did not remember
ever seeing Jack Bender’s prominent logo located in each of
his many advertisements, or even the constant usage of the
term “race trailers” by other third parties36 -- despite the
fact that Haulmark’s housemark and individual dealership’s
service marks appeared in advertisements on the same pages
of national publications as both these types of usage (e.g.,
“RACE TRAILERS BY JACK BENDER” and “X-Y-Z … Race
Trailers”37).
Whether the public regards the designation “Race
Trailers” as a generic term is a question of fact to be
resolved on the evidence. We are convinced that this
terminology was fairly widely used and recognized in the
industry (e.g., by trailer manufacturers who designed and
built these specialized trailers, and trailer dealers who
sold them to racers) as a generic term for at least a decade
prior to respondent’s alleged adoption. Pursuant to the
Trademark Clarification Act of 1984, 15 U.S.C. §1064(3), our

36 Testimony deposition of L. Michael Arnold, p. 16.
37 For example, in addition to the use of the words “Race
Trailers” in Jack Bender’s trade name, the record contains
advertisements showing at various times over the past twenty
years the prominent involvement in this industry of Southern Pace
Race Trailers, Topeka Race Trailers, Race Trailer Specialists,
G.M. Racing Trailers (nee G.M. Race Trailers), etc. Furthermore,
many others who never incorporated the term into their actual
trade name used and continue to use the term generically within
the advertisement copy made of record in this proceeding.
Cancellation No. 23,473
17
determination of whether a term is generic focuses on the
significance of the term to the “relevant public.” In
defining the relevant public, we focus on the primary
significance “to actual and potential purchasers of the
goods.” Additionally, our primary reviewing court has
stated that a party charging genericness must prove its
claim by a preponderance of the evidence. See Magic Wand
Inc. v. RDB Inc., 940 F.2d 638, 641, 19 USPQ2d 1551, 1553
(Fed. Cir. 1991) [In determining whether "TOUCHLESS" is
generic for automobile washing services, the relevant public
cannot consist solely of the vendors, operators, and
manufacturers of car washing equipment – the primary focus
should be on ordinary automobile owners and operators].38
Evidence of what the relevant public understands the term to
mean may come from direct testimony, trade journals,
newspapers and other publications. See In re Northland
Aluminum Products, Inc., 777 F.2d 1556, 1559, 227 USPQ 961,
963 (Fed. Cir. 1985) [“Bundt” is not registrable as
trademark for “ring cake mix”]; and Dan Robbins &
Associates, Inc. v. Questor Corporation, 599 F.2d 1009,

38 In the Magic Wand case, the Board and our reviewing Court
discounted the trade articles and advertisements because they
were directed to the owners and operators of car washes – not to
car owners and operators who purchased the car washing services.
In the instant case, the advertisements of petitioners and third
parties are directed to the relevant consuming public – racers of
Cancellation No. 23,473
18
1014, 202 USPQ 100, 105 (CCPA 1979) [Inadequate evidence to
support contention that “TINKERTOY” has become the common
descriptive name of Questor's toys].
As far as selecting a single genus of cargo trailers to
cover the goods identified in respondent's registration, the
documentary evidence and witnesses show that the industry
has not settled on a single designation. But of course,
there is usually not one, single and exclusive name for a
product.39
We noted that in the instant case, what really converts
the ordinary, enclosed cargo trailer into a “race trailer”
is a combination of specific features of the trailer’s
design and the intended purpose of the purchaser.40 When
such trailers are designed specifically for hauling one or
more automobiles, we must agree with respondent’s arguments,
drawn from the testimony of respondent’s witnesses as well

all types who are seeking to purchase an enclosed, towable
storage trailer for their racing vehicle(s).
39 “Appellant has argued that the descriptive term for its
gasoline is ‘pump-blended.’ I do not question that there is
a descriptive – or as appellant calls it ‘generic’ – term;
but a product may have more than one generically descriptive
name. Because one merchandiser has latched onto one of the
descriptive terms does not mean it can force its competitors
to limit themselves to the use of the others, which
appellant, it seems to me, is trying to do here…”
In re Sun Oil Co., 426 F.2d 401, 165 USPQ 718, 719, J. Rich,
concurring (CCPA 1970) [“Custom-Blended” found unregistrable for
gasoline]; See also McCarthy on Trademarks and Unfair
Competition, §12.9, p.12-18 (Sept. 1998).
40 Testimony deposition of Mitchell I. Bender, p. 101.
Cancellation No. 23,473
19
as excerpts that respondent submitted from public records,
that some trade names, advertisements, and general
publications have indeed used alternative terms such as
“racing trailers,” “race car trailers,”41 “car haulers,”
“car carriers,” etc., to refer to this genre of enclosed
trailers.
On yet the other hand, in light of the totality of the
evidence, the recognition of alternate generic terms for
these enclosed trailers does not answer the question of what
the relevant public thought the term “race trailer” or “race
trailers” meant in December of 1987, or at any point in time
through the close of the testimony period in the instant
case (i.e., into the summer and fall of 1997). In answering
that query, what is compelling from this record is that many
of the key players in the industry (e.g., trailer
manufacturers and dealers) had been using the short-hand
term “race trailers” as the generic designation for these
enclosed trailers long prior to the date on which respondent
claims it coined the term. It was used then, and continues
to be used to the present, in advertisements, in general

41 As petitioner points out, however, inasmuch as many racing
trailers are designed specifically for hauling snowmobiles,
motorcycles, or go-kart, they would technically not fit into the
genre of “race car trailers.”
Cancellation No. 23,473
20
news stories42 and within the trade names of various dealers
of racing trailers, as a generic term. In fact, any neutral
assessment of the totality of the evidence in this record
shows that the term “race trailers” has been used as a
category designator for almost twenty-five years.
Furthermore, that some in the industry agreed in recent
years under extreme pressure (i.e., after getting ominous
cease-and-desist letters from respondent’s attorney) to
discontinue temporarily the use of this term in
advertisements rather than risking protracted litigation,
hardly supports a contrary result.
Depending upon the grounds pleaded, the exact timing of
a petition to cancel a registration is most relevant to our
consideration. This is true as the grounds available to a
petitioner are materially restricted if the petition is

42 The individual LEXIS/NEXIS entries and Internet references
are largely split as to which “generically descriptive name”
(using Judge Rich’s term from Sun Oil, supra) they reflect. Not
surprisingly, most of those placed in the record by petitioner
show “race trailer” used in a generic sense, while respondent’s
cited references use “race car trailers.” While not conclusive
as to which is “preferred,” these media excerpts demonstrate that
many writers, like other members of the public at large, do
perceive the term “race trailers” as a generic designation. They
use “race trailers” interchangeably with “racing trailers” or
“race car trailers,” much as do the entrepreneurs who are
immersed in the cargo trailer and/or racing industries. In
effect, the consuming public has merely followed the lead of many
of the manufacturers and dealers (viz. earlier discussion of
trade advertisements showing such usage) in adopting this generic
use of the term. The evidence demonstrates that petitioner,
others in industry, and the relevant public all use this term
generically. Hence, on balance, this evidence too is of
probative value in connection with our decision.
Cancellation No. 23,473
21
filed more than five years from the date of the registration
of the mark on the Principal Register. Section 14 of the
Trademark Act, 15 U.S.C. §1064; Park ’N Fly v. Dollar Park
’N Fly, Inc. 469 U.S. 189, 105 S. Ct. 658, 224 USPQ 327, 331
(1985). For example, if a petition to cancel a registration
is filed after the fifth anniversary, mere descriptiveness
is no longer available as a ground for canceling such a
registration on the Principal Register. On the other hand,
such a petitioner could still plead genericness as a ground
for cancellation after expiration of this five-year period.
Inasmuch as the instant petition to cancel was filed
prior to the fifth anniversary of the registration’s issue,
it would be sufficient to cancel this registration had we
found the term to be merely descriptive and lacking in
acquired distinctiveness during the relevant time period.
Accordingly, all the same evidence reviewed above to support
genericness also demonstrates, a fortiori, that the term was
merely descriptive in 1987. Furthermore, respondent has put
forward no evidence to support its alternative contention,
that even if once merely descriptive, this term has acquired
distinctiveness as a source indicator for its enclosed
trailers. The record clearly does not support such a
finding as of any arguably relevant time period from the
time of the filing of the federal trademark application in
Cancellation No. 23,473
22
1989, up to and including the time when the evidence in this
trial was being collected.
In light of our disposition of this case, we need not
pursue petitioners’ alternative ground for cancellation.43
It is clear that petitioners, Pace American, Inc., and Jack
Bender, have no intentions of claiming proprietary rights in
this designation or of trying to remove it from its generic
usage in the industry -- unless, of course, this Board were
to decide that the designation was capable of becoming a
source identifier. Having decided it is generic, anyone,
including petitioners, should be free to use the designation
“race trailers” in literature, advertisements, trade names,
and the like, to designate these enclosed, towable storage
trailers used to haul racing vehicles.
Decision: The petition to cancel is granted and
respondent’s registration will be cancelled in due course.
E. W. Hanak

43 As noted in the preceding paragraphs, the cancellation
petition alleging priority and likelihood of confusion was filed
early enough to be available as a possible ground for
cancellation under Section 14 of the Trademark Act.
Cancellation No. 23,473
23
P. T. Hairston
D. E. Bucher
Administrative Trademark
Judges, Trademark Trial
and Appeal Board