Response to Office Action

Dear Examining Attorney Gaynor:

This communication is responsive to the Office Action dated July 27, 2004.

In the Office Action of July 27, 2004, Examining Attorney refused registration of Applicant's mark XLR8 under 15 U.S.C. section 1052(d), on the grounds that Applicant's was confusingly similar to U.S. Reg. No. 2,156,990 for XLR8R. Examining Attorney also indicated that prior pending U.S. Application Serial No. 76/385,866 may also pose a likelihood of confusion.

Additionally, Examining Attorney noted two informalities.

Informalities

Applicant submits the following standard character claim: "The mark is presented in standard characters without claim to any particular font style, size, or color."

Applicant submits the following claim of ownership: "The applicant is the owner of U.S. Trademark Reg. No. 2,847,940."

Section 2(d) Refusal

Applicant submits that there exists no likelihood of confusion between the present application for XLR8 and the cited registration for XLR8R. As Examining Attorney correctly noted, the proper test is to look both to the marks themselves as well as to the services provided. However, Applicant submits that the marks are distinguishable because the cited registration is weak as applied to the goods in the registration, whereas Applicant's mark is distinctive of Applicant's goods. Moreover, Application submits that the goods identified in the amended identification are unrelated to the goods identified in the cited application. Therefore, Applicant submits that the goods are unlikely to be confused as to source. Thus, there is no likelihood of confusion and the present application should be allowed.

In comparing the marks, the marks are distinguishable. Registrant's mark is XLR8R (which one presumes is pronounced "accelerator") for devices that train golfers to "increase club head impact." Consequently, Applicant submits that the mark "accelerator" is very weak, if not merely descriptive, of registrant's training devices. Even accepting that XLR8R has been registered, it is not entitled to broad protection, especially where Applicant's use is much more distinctive. XLR8 for grips, grip tape, gloves, and training baseballs is not descriptive of a feature or ingredient of Applicant goods. Rather, XLR8 is suggestive, if not arbitrary as applied to Applicant's goods. The distinctiveness of Applicant's mark, combined with the weakness of registrant's descriptive mark, strongly indicates that reasonable consumers will not be confused.

In comparing the goods, Applicant submits that the Applicant's grips, grip tape, gloves, and practice baseballs are not related to the golf swing aids identified by XLR8R. While Applicant concedes that its goods and the goods identified in the registration are sporting goods, Applicant submits that the reasonably prudent consumer would be able to distinguish different marks for different goods. As Examining Attorney can appreciate, Applicant's goods (as shown in Applicant's specimens of use) are not at all related to a golf training system. Baseballs, gloves, grips, and grip tape are not "devices that train golfers to square clubs face up at impact and increase club head impact." Rather, gloves, grips, and grip tape are generalized goods that are used for baseball bats, racquets, and many other forms of sporting equipment. Similarly, training baseballs are not at all related to golf.

Moreover, Applicant's grip tape, grips, gloves, and training baseballs are not within the registrant's zone of expansion. As Examining Attorney can see from the registrant's identification of goods, the golf swing aids are specialized for golf. It is, therefore, highly unlikely that the registrant would expand into general sporting goods.

Applicant further points out that Applicant's prior registration for XLR8 for "training baseball bats" and U.S. Application Ser. No. 76/385,866 for XLR8 for "mouth guards" which has been approved for publication, were found to be distinguishable from XLR8R for golf training devices. Applicant respectfully submits that Applicant's grips, grip tape, gloves, and training baseballs are no more similar to golf training devices than the goods identified in the prior approved applications are.

Finally, Applicant thanks Examining Attorney for pointing out that the registrant has not filed a declaration under section 8 of the Lanham Act. As of the date of this response, Applicant notes that a section 8 declaration still has not been filed for XLR8R. Applicant respectfully requests Examining Attorney to again check the status of the prior registration before issuing any further office actions in this case.

As regards U.S. Application Ser. No. 76/385,866, Applicant respectfully submits that the pending application for XLR8R has been approved for publication and, therefore, an Examining Attorney has found that Applicant's prior registration for XLR8 for training baseball bats was distinguishable from the application for "mouth guards." Applicant submits that the goods recited in the present application are much closer to Applicant's training baseball bats than they are to mouth guards. Therefore, Applicant respectfully submits that the present application is allowable.

In sum, Applicant submits that the amended identification of goods places the present application in condition for allowance. Applicant's mark is distinguishable from the cited registration because of the different spelling, pronounciation, and meaning. Moreover, Applicant's goods are clearly distinguishable from the registrant's goods. Applicant submits that a distinct commercial impression is created by Applicant's mark used in connection with Applicant's goods and, therefore, there is no likelihood of confusion between Applicant's mark and the cited registration.

In view of the foregoing, the Applicant respectfully requests that Examining Attorney give the present application favorable reconsideration.