Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

EXAMINING ATTORNEY'S APPEAL BRIEF

 

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

 

Applicant:	MasterGrip, Inc.	:	BEFORE THE
Trademark:	THE GREAT ESCAPE	:	TRADEMARK TRIAL
Serial No:	76579302	:	AND
Attorney:	Lewis T. Steadman, Jr.	:	APPEAL BOARD
Address:	Holland & Knight LLP 131 South Dearborn Street 30th Floor Chicago, Illinois 60603	:	ON APPEAL

EXAMINING ATTORNEY’S APPEAL BRIEF

          Applicant has appealed the Trademark Examining Attorney’s final refusal to register the trademark THE GREAT ESCAPE for “golf clubs” on the grounds of likelihood of confusion under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).          

FACTS

          The applicant applied for registration of the mark THE GREAT ESCAPE for “golf clubs.”  Registration was refused under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), based on likelihood of confusion with Registration No. 2033776.  The registration is for the mark ESCAPE for “golf clubs.”  This appeal follows the examining attorney’s final refusal on this issue.

ARGUMENT

          THE GOODS OF THE APPLICANT AND THE REGISTRANT ARE IDENTICAL AND THE MARKS ARE CONFUSINGLY SIMILAR IN OVERALL COMMERCIAL IMPRESSION SO THAT THERE EXISTS A LIKELIHOOD OF CONFUSION, MISTAKE OR DECEPTION UNDER SECTION 2(d) OF THE TRADEMARK ACT.

          Section 2(d) of the Trademark Act bars registration where a mark so resembles a registered mark, that it is likely, when applied to the goods or services, to cause confusion, or to cause mistake or to deceive.  The Court, in In re E. I. Dupont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), listed the principal factors to be considered in determining whether there is likelihood of confusion under Section 2(d).  Any one of these factors listed may be dominant in any case, depending on the evidence of record.  In this case, the following factors are the most relevant:  similarity of the goods, the similarity of the marks, and the number and nature of similar marks in use on similar goods.

          The overriding concern is to prevent buyer confusion as to the source of the goods.  Miss Universe, Inc. v. Miss Teen U.S.A., Inc., 209 USPQ 698 (N.D. Ga. 1980).  Therefore, any doubt as the existence of a likelihood of confusion must be resolved in favor of the registrant.  In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir., 1988).

A. THE GOODS ARE IDENTICAL

 

          Both applicant’s and registrant’s goods are identical, being golf clubs.  They would presumably be sold to the same purchasers through the same trade channels.         

B.     THE MARKS ARE HIGHLY SIMILAR

          The marks must be compared for similarities in sound, appearance, meaning or connotation.  E.I. du Pont de Nemours, 177 USPQ 563.  Similarity in any one of these elements is sufficient to find a likelihood of confusion.  In re Mack,197 USPQ 755 (TTAB 1977).

 

         Applicant is seeking to register the mark THE GREAT ESCAPE.  Registrant’s mark is ESCAPE.  Where the goods are identical, “the degree of similarity [between the marks] necessary to support a conclusion of likely confusion declines.”  Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992) cert. denied 506 U.S. 1034 (1992). 

          While the marks are not identical, they are highly similar in overall commercial impression.  The test for likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison.  This issue is whether the marks create the same overall commercial impression.  Chemetron Corp. v. Morris Coupling and Clamp Co., 203 USPQ 537 (TTAB 1979).  Furthermore, when 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).

          The marks are also similar in appearance.  Applicant has taken registrant’s entire word mark and added the article “THE” and the word “GREAT.”  These small changes do not significantly affect the overall commercial impression.  “The” adds little to the commercial impression of a mark.  See Conde Nast Publications Inc. v. Redbook Publishing Co., 217 USPQ 356 (TTAB 1983).   Moreover, the mere addition of a term to a registered mark does not obviate the similarity between the marks nor does it overcome a likelihood of confusion under Section 2(d).  Coca-Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A. 1975) (“BENGAL” and “BENGAL LANCER”).  In addition, neither mark contains any other visually distinguishing characteristics, such as stylization or design elements.

          The marks are similar in meaning.  Both marks contain the word escape.  Moreover, the term “GREAT,” as used in applicant’s mark, is a laudatory term that merely attributes quality or excellence to applicant’s goods.  The definition of “great” is “superior in quality or character.”[1] Enclosed with the final office action are two third-party registrations, owned by one registrant, in which the term “GREAT” is used to modify the rest of the mark for “golf clubs.”  The third party registrations are BIG BERTHA for, among other things, “golf clubs” and GREAT BIG BERTHA for, among other things, “golf clubs.”

          Applicant has argued that a distinguishing factor between the marks is that applicant’s mark is associated with the 1963 film, “The Great Escape,” starring Steve McQueen, and that when its mark is applied to applicant’s goods, namely, golf clubs, it evokes the idea that “heroic” golf shots can be produced by using applicants goods.  In applicant’s 3/28/05 response, applicant has included a copy of a Lexis Nexis search report with selected articles referring to THE GREAT ESCAPE movie and/or historic event.  Most of the excerpts shown in this search report are so brief and/or so truncated that they have minimal probative value.  The three excerpts from Lexis Nexis that are longer in length, namely, The Daily Telegraph (Sydney, Australia) March 24, 2005, Daily Post (Liverpool) March 23, 2005, and London Free Press (Ontario) March 19, 2005, all of which emanate from foreign press, link the movie, THE GREAT ESCAPE to the actor Steve McQueen, to computer games, and to the historic event, respectively, but do not link THE GREAT ESCAPE to “golf clubs.”  The meaning or connotation of a mark must be determined in relation to the named goods.  In re Sydel Lingerie Co., Inc., 197 USPQ 629 (TTAB 1977); See TMEP Section 1207.01(b)(v). 

          Applicant’s argument differentiating the marks is unpersuasive because there is no evidence of record that consumers would necessarily associate applicant’s mark, for “golf clubs,” with the 1963 film, “The Great Escape.”  The focus is on the recollection of the average purchaser who normally retains a general, rather than specific, impression of trademarks.  See e.g., In re M. Serman & Company, Inc., 223 USPQ 52 (TTAB 1984).

          Applicant has also argued that registrant’s mark ESCAPE may be considered a “weak” mark since the U.S. Trademark Office has issued numerous federal trademark registrations for ESCAPE standing alone.  This factor, listed in du Pont, may be considered only if relevant evidence is contained in the record.  See In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003).  In applicant’s 3/28/05 response, applicant submitted, as evidence, copies of four registrations, in which the mark ESCAPE has been registered for inline skates; toys and toy vehicles; card game sold with a special deck of cards; and fishing poles, fishing rod blanks, and fishing rods.  Applicant also mentions that since the cited registrant’s mark issued in 1997, the USPTO has issued 20 ESCAPE registrations.  The mere mention of 20 ESCAPE registrations is not proper evidence of third-party registrations.  To make registrations of record, soft copies of the registrations or the electronic equivalent thereof (i.e., printouts of electronic copies of the registrations taken from the electronic search records of the USPTO) must be submitted.  Raccioppi v. Apogee Inc., 47 USPQ2d 1368 (TTAB 1998).  Therefore, only the copies of four registrations contained in the record will be considered as evidence. 

          In response to applicant’s argument, which falls under the sixth du Pont factor – the “number and nature of similar marks in use on similar goods,” even if applicant has shown that the cited mark is “weak,” such marks are still entitled to protection against registration by a subsequent user of the same or similar mark for the same or closely related goods.  See Hollister Incorporated v. Ident A Pet, Inc., 193 USPQ 439 (TTAB 1976) and cases cited therein.

C. SUMMARY

          Because the goods of applicant and registrant are identical and the marks are highly similar, there is a likelihood that purchasers would confuse the sources of these goods.

CONCLUSION

          For the foregoing reasons, the refusal to registration under Section 2(d) of the Trademark Act should be affirmed.

                                           Respectfully submitted,

 

 

/AMY GEARIN/

Trademark Attorney

Law Office 115

United States Patent and Trademark Office

571-272-9473

 

 

TOMAS V. VLCEK

Managing Attorney

Law Office - 115