UNITED STATES PATENT AND TRADEMARK OFFICE

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

Serial Number  76/567127

 

The assigned examining attorney has reviewed the referenced application and determined the following:

 

Refusal Under Section 2(d) – Likelihood of Confusion

 

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used on or in connection with the identified goods, so resembles the mark in U.S. Registration No. 2,156,990 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registration.

 

The examining attorney must analyze each case in two steps to determine whether there is a likelihood of confusion.  First, the examining attorney must look at the marks themselves for similarities in appearance, sound, connotation and commercial impression.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).  Second, the examining attorney must compare the goods or services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely.  In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978); Guardian Products Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978).  TMEP §§1207.01 et seq. 

 

The applicant has applied to register XLR8 (Standard Character Form) for “Sports equipment, namely grips and grip tape for bats, racquets, and golf clubs; athletic gloves for baseball, racquetball, and golf; and practice baseballs.”  The registered mark is XLR8R (Typed) for “golf club swing aids, namely, devices that train golfers to square clubs face up at impact and increase club head impact.”

 

The examining attorney must compare the marks for similarities in sound, appearance, meaning or connotation.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).  Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977).  TMEP §§1207.01(b) et seq.  In this case, the marks are nearly identical in sound, appearance, and meaning.  The only difference between the two marks is the letter “R” at the end of the registrant’s mark – XLR8R v. XLR8.  When the applicant’s mark is compared to a registered mark, “the points of similarity are of greater importance than the points of difference.”  Esso Standard Oil Co. v. Sun Oil Co., 229 F.2d 37, 108 USPQ 161 (D.C. Cir.), cert. denied, 351 U.S. 973, 109 USPQ 517 (1956).  TMEP §1207.01(b). 

 

If the marks of the respective parties are identical, or nearly identical, the relationship between the goods or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks.  Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981).  TMEP §1207.01(a).  In this case, however, the goods are highly related.  Both the applicant and the registrant manufacture/sell golf equipment.  The registrant sells “golf club swing aids,” and the applicant sells grips and grip tape for golf clubs, and golf gloves.  Purchasers or potential purchasers, upon seeing nearly identical marks used on highly related goods, are likely to believe that the goods emanate from the same source.

 

As for the applicant’s remaining goods, it is well-settled that the goods/services of the parties need not be identical or directly competitive to find a likelihood of confusion.  They need only be related in some manner, or the conditions surrounding their marketing be such, that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods/services come from a common source.  In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).  TMEP §1207.01(a)(i). 

 

The Trademark Trial and Appeal Board has held that different products in the sporting goods field are related under Section 2(d).  In re New Archery Prods. Corp., 218 USPQ 670 (TTAB 1983) (fishing lures and arrows and arrowheads); Trak Inc. v. Traq Inc., 212 USPQ 846 (TTAB 1981) (racquetball racquets and skis and ski boots); A.G. Spalding & Bros. Inc. v. Bancroft Racket Co., 149 USPQ 391 (TTAB 1966) (tennis and squash rackets and golf clubs).

 

The marks are highly similar in sound, appearance, and commercial impression.  The goods are highly related.  The similarities among the marks and the goods are so great as to create a likelihood of confusion among consumers.  The examining attorney must resolve any doubt regarding a likelihood of confusion in favor of the prior registrant.  In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir., 1988).  TMEP §§1207.01(d)(i). 

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

PLEASE NOTE:  The owner of the cited registration was required to file a Section 8 continuing use affidavit between May 12, 2003 and May 12, 2004.  Office records do not show that the Section 8 affidavit was filed.  However, the examining attorney cannot withdraw a refusal of registration under §2(d) until the TRAM system shows that the registration has actually been cancelled or expired.  TMEP §716.02(e).

 

Prior Pending Application

 

The examining attorney also encloses information regarding pending Application Serial No. 76/385866.  The filing date of the referenced application precedes the applicant’s filing date.  There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  If the referenced application matures into a registration, the examining attorney may use the registration as an additional basis for refusing registration in this case under Section 2(d).  37 C.F.R. §2.83; TMEP §1208.01.

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities:

 

1.            Standard Character Claim

 

The applicant must submit the following standard character claim:  “The mark is presented in standard characters without claim to any particular font style, size, or color.”  37 C.F.R. §2.52(a).

 

NOTE:  The Trademark Rules pertaining to drawings were amended on November 2, 2003.  For applications filed prior to November 2, 2003, applicants may follow either the new standard character drawing rules or the typed drawing rules in force prior to their amendment on November 2, 2003.  Exam Guide 01-03, section I.A.9.  For applications filed after November 2, 2003, such as this one, the applicant must follow the new standard character drawing rules.

 

2.            Ownership of Prior U.S. Registration

 

If the applicant is the owner of Registration No. 2,847,940 (for XLR8), the applicant must submit a claim of ownership.  37 C.F.R. §2.36; TMEP §812.

 

A prompt response to this Office action will expedite the handling of this matter.

 

 

 

/Barbara A. Gaynor/

Barbara A. Gaynor

Examining Attorney

Law Office 115

(703) 308-9115 ext. 123

 

 

 

NOTICE:  TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER  2004

 

The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.

 

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.