[This guest post was written by Kira-Khanh McCarthy, a law clerk in the Trademark Group at Wolf, Greenfield & Sacks, P.C.]. Applicant Driven Golf, Inc. made a bogey on its appeal from the USPTO's final refusal to register its mark, DRIVEN GOLF [GOLF disclaimed] for golf training aids and apparel. The Examining Attorney refused registration based on: (1) a failure to submit an acceptable identification of goods and (2) a likelihood of confusion with the registered mark DRIVEN BY PING for golf clubs. As to the first refusal, Driven Golf argued that "it is not necessary that the Applicant define each and every good under the identification of goods." As to the second refusal, Applicant asserted a dissimilarity in the nature of the goods; dissimilarity of the established, likely-to-continue trade channels; and dissimilarity of the marks. Which argument do you think won? In re Driven Golf, Inc., Serial No. 88215365 (November 19, 2020) [not precedential] (Opinion by Judge Peter W. Cataldo).
Identification of Goods: Applicant's identification reads as follows:
Golf training aids, namely tangible articles designed to attach to a golfer and/or golf club and improve a golfer's swing in Class 9; and Apparel, namely T-shirts, shirts, hats, caps, sweatshirts, pants, sweat suits, hoodies and socks in International Class 25.
The Examining Attorney maintained that the identification of goods in Class 9 is indefinite because it "does not specify whether [the training aids are] electronic in nature or not" and thus the goods may be classified in either Class 9 or Class 28. Applicant contended that "the identification of goods is specific, definite, clear, accurate, and concise. Applicant promotes a series of different training aids that meet the offered description. It is not necessary that the Applicant define each and every good under the identification of goods."
The Board recognized that the "USPTO has discretion to require the degree of particularity deemed necessary to identify with specificity the goods or services covered by the mark." See In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541, 1544 (Fed. Cir. 2007); In re Fiat Grp. Mktg. & Corp. Commc'ns S.p.A., 109 USPQ2d 1593, 1597 (TTAB 2014). It then found that Applicant's use of the words "aid" and "tangible articles" in its Class 9 identification is "impermissibly vague because it is impossible to determine the exact nature and classification of the goods." For those reasons, the Examining Attorney's refusal based on a requirement for a more definite identification of Applicant's Class 9 goods was affirmed.
Likelihood of Confusion: Next, the Board reviewed the Section 2(d) refusal. It first considered the similarity or dissimilarity and the nature of the goods. The Examining Attorney submitted two used-based registrations "identifying, inter alia, golf clubs and various golf training aids under the same mark," and evidence that a third party, unrelated to Applicant, provides golf instruction, golf fitness and golf videos under the name Driven Golf, Inc. Nevertheless, the Board concluded that "this very sparse record is insufficient to establish that consumers are likely to believe Applicant's goods emanate from the same sources as those identified in the cited registration."
Second, the Board looked at the similarity or dissimilarity of established, likely-to-continue trade channels. Pulling from its analysis on the nature of the goods, the Board found "very little evidence that the goods are available in the same channels of trade to the same consumers."
While we recognize that golf clubs, golf training aids and clothing that is broadly identified to include clothing worn while golfing may be available in common trade channels, there is insufficient evidence in the record that these goods travel in the same channels of trade or may be purchased by the same classes of purchasers.
Finally, the Board considered the similarity or dissimilarity of the marks. It found that "the only similarity between the two marks is the common word DRIVEN, which appears as the first word in both marks." Further, it agreed with the Examining Attorney (and Applicant) that the registered mark, DRIVEN BY PING, connotes PING-branded golf clubs (i.e., golf clubs made "by PING"). Meanwhile, Applicant's mark suggests that its golf aids and clothing will be used by consumers who are "driven" to improve their golf game.
Although Applicant's mark and that in the cited registration share a common first word, we conclude that when considered in their entireties, the marks are more dissimilar than similar in appearance, sound and particularly connotation and that, when viewed as a whole, the marks engender dissimilar commercial impressions.
And so, the Board reversed the likelihood of confusion refusal as to both classes of goods. However, the refusal based on the requirement for a more definite identification of Applicant's goods listed in Class 9 was affirmed.
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