UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

EXAMINING ATTORNEY'S APPEAL BRIEF

 

 

            This is an appeal from a final refusal to register GOLDEN GLOVE intended for use on “baseball gloves for Little League baseball players.”  The mark has been refused registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because it is likely to cause confusion with the registered mark GOLD GLOVE used on “baseball gloves and mitts.”[1]  This is also an appeal from a final requirement to disclaim the exclusive right to use the descriptive term GLOVE apart from the mark GOLDEN GLOVE used on “baseball gloves for Little League baseball players” under Trademark Act Section 6, 15 U.S.C. §1056. 

 

 

STATEMENT OF FACTS

 

            On 30 April 2004, the applicant Millersport Inc. applied to register the mark GOLDEN GLOVE for baseball gloves on the Principal Register under Section 1(b) of the Trademark Act.  In the first Office Action issued on 29 November 2004, the examining attorney refused registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), citing U.S. Registration Nos. 990449, 1291345 and 1945584, and issued a requirement for a disclaimer of the descriptive term GLOVE under Trademark Act Section 6, 15 U.S.C. §1056.  In its response filed on 15 March 2005, the applicant presented arguments in favor of registration and stated that an appropriately worded disclaimer would be provided.  In the Office Action issued on 2 May 2005, the refusal under Section 2(d) citing U.S. Registration No. 1291345 was made final[2] and the requirement for a disclaimer of the descriptive term GLOVE was made final.  The applicant has filed an appeal.[3]

 

ISSUES ON APPEAL

 

I.                    Whether the applicant’s mark GOLDEN GLOVE when used on “baseball gloves for Little League baseball players” is likely to cause confusion with the cited registered mark GOLD GLOVE used on “baseball gloves and mitts.”

 

II.                 Whether GOLDEN GLOVE is a unitary phrase, thereby obviating the requirement for a disclaimer of the descriptive term GLOVE when it is used on “baseball gloves for Little League baseball players.”

 

ARGUMENT

 

I.  A likelihood of confusion exists because similar marks, GOLDEN GLOVE and GOLD GLOVE, are used on baseball gloves that presumably move in the same channels of trade.

 

                        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, to cause confusion, or to cause mistake or to deceive. TMEP section 1207.01.  The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), listed the principal factors to consider in determining whether there is a likelihood of confusion.  Among these factors are the similarity of the marks as to appearance, sound, meaning and commercial impression, the similarity of the goods and the similarity of trade channels of the 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). 

 

A.  Similar Marks

 

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.  The applicant’s GOLDEN GLOVE is highly similar to the registrant’s GOLD GLOVE in sight, sound and commercial impression.  Both marks consist of the unique combination of terms – GLOVE coupled with a variation of GOLD.  The terms GOLD and GOLDEN have essentially the same meaning.  GOLDEN is defined as “of, relating to, made of, or containing gold.”[4]  Therefore, the marks GOLD GLOVE and GOLDEN GLOVE communicate the same meaning and connotation – “a glove of gold.”

 

                        The applicant argues that the fact that U.S. Registration Nos. 990449 and 1945584 were withdrawn as cites results in a conclusion that the examining attorney had determined the marks were “different enough.”  This argument fails to be persuasive because such a determination cannot be concluded by the mere withdrawal of these registrations as citations.  This is simply a speculative comment on the part of the applicant.  Moreover, the reasoning behind the withdrawal of U.S. Registration Nos. 990449 and 1945584 as citations is not at issue in this instance and is therefore irrelevant.  At issue is whether the applicant’s GOLDEN GLOVE is sufficiently similar in meaning, appearance and sound to the cited registration GOLD GLOVE.  Clearly, both marks communicate the same meaning and connotation.  Furthermore, the marks are highly similar in appearance and sound.  The fact that the applicant adds the suffix “EN” to the term GOLD does not sufficiently distinguish the marks. 

 

                        Given that both marks both communicate the same meaning coupled with the substantial similarities in the appearance and sound of the marks, the average purchaser is not likely to distinguish the marks based on such a small difference.  The average purchaser normally retains a general rather than a specific impression of trademarks, thereby avoiding confusion.  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). 

 

                        The fallibility of the average purchaser’s memory however must be considered.  The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side‑by‑side comparison.  The issue is whether the marks create the same overall impression. Visual Information Institute, Inc. v. Vicon Industries Inc., 209 USPQ 179 (TTAB 1980).  The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.  Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP section 1207.01(b).  Furthermore, the Board has specifically addressed the issue of the fallibility of the average consumer’s memory in The Barbers, Hairstyling for Men & Women, Inc. v. The Baraber Pole, Inc., 204 USPQ 403 (TTAB 1979), wherein it stated:

            [P]urchasers and prospective purchasers...generally do not have the opportunity

            to compare the respective marks on a side-by-side basis, and, thus, the test which

            we must apply in determining likelihood of confusion is not whether the marks

            are distinguishable upon a side-by-side comparison, but whether they so resemble

            one another as to be likely to cause confusion and this necessarily requires us to

            consider the fallibility of the memory of the average purchaser, who normally

            retains but a general impression of trademarks over a period of time, and would

            not recollect minute details as to specific differences.

 

204 USPQ at 409.

 

Furthermore, marks may be confusingly similar in appearance where there are similar terms or phrases or similar parts of terms or phrases appearing in both applicant’s and registrant’s mark.  See e.g., Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986), aff’d 1 USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH and COMMUNICASH); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB and “21” CLUB (stylized)); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re Collegian Sportswear Inc., 224 USPQ 174 (TTAB 1984) (COLLEGIAN OF CALIFORNIA and COLLEGIENNE); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (MILTRON and MILLTRONICS); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (LUTEXAL and LUTEX); TMEP §§1207.01(b)(ii) and (b)(iii).

 

And finally, the examining attorney must resolve any doubt as to the issue of likelihood of confusion in favor of the registrant and against the applicant who has a legal duty to select a mark which is totally dissimilar to trademarks already being used.  Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979).

 

B.  Closely Related Goods

                        Both parties identify baseball gloves.  Nevertheless, the applicant argues that its baseball gloves are sufficiently different from the registrant’s baseball gloves because the registrant uses the highly similar mark on adult baseball gloves whereas the applicant uses its mark on baseball gloves for Little League baseball players.  The registrant, however, is not restricted to using its mark on adult baseball gloves.  It is well settled that the issue of likelihood of confusion between marks must be determined on the basis of the goods or services as they are identified in the application and the registration. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); Paula Payne Products Co. v. Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76 (C.C.P.A. 1973).  Therefore, the registrant’s broadly identified “baseball gloves and mitts” are not solely for adult use, as the applicant contends.  It is presumed that the registrant’s baseball gloves are for use by those playing Little League baseball as well as by adult baseball players. 

 

Even assuming that the baseball gloves are used by players of different ages, the baseball gloves of both parties are related as they are used for playing the same sport.  The fact that the goods of the parties differ is not controlling in determining likelihood of confusion.  The issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source of those goods.  See In re Rexel Inc., 223 USPQ 830, 831, (TTAB 1984), and cases cited therein; TMEP §§1207.01 et seq.  And furthermore, 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).

 

 

Indeed, the goods 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 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).  Given the facts of this case, it is clear that when consumers of the goods of both parties, baseball players in this instance, encounter highly similar marks on baseball gloves in the same sporting goods store or in the same sporting goods section of department stores, they are likely to be confused as to the source of these goods.   

 

C.  Same Channels of Trade

            The presumption under Trademark Act Section 7(b), 15 U.S.C. §1057(b), that the registrant is the owner of the mark, extends to all goods identified in the registration.  The presumption also implies that the registrant operates in all normal channels of trade and reaches all classes of purchasers.  RE/MAX of America, Inc. v. Realty Mart, Inc., 207 USPQ 960 (TTAB 1980).  As neither the applicant nor the registrant have limited the channels of trade for their baseball gloves, the examining attorney must assume that these sporting goods are sold and marketed everywhere that is normal for such items and these goods are found everywhere that is normal for such goods, such as sporting goods stores and sporting goods sections of department stores.  Consequently, it is presumed that the applicant and registrant share the same channels of trade. 

 

The marks of both parties create the same commercial impression and are highly similar in appearance and sound, the goods are closely related, if not the same, and the channels of trade are presumed to be the same.  Under these circumstances, the ordinary purchaser would be likely to confuse the origin of goods found under the applicant’s mark with the origin of the goods found under the registrant’s mark.  Such a likelihood of confusion is impermissible. 

 

II.  The descriptive term GLOVE must be disclaimed apart from the mark because GOLDEN GLOVE is not a unitary phrase. 

 

The issue before the Board is whether GOLDEN GLOVE is a unitary phrase, thereby obviating the requirement for a disclaimer of the descriptive term GLOVE as it is used on “gloves for use in playing Little League baseball.”  A term is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods.  In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987);  In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP section 1209.01(b).  In this instance, GLOVE immediately identifies the applicant’s goods -- gloves used in playing Little League baseball.  The average prospective purchaser, from whose standpoint the issue of descriptiveness must be decided, In re Abcor Development Corp., 200 USPQ 215 (CCPA 1978), would view the terminology and would immediately understand that the applicant’s goods are gloves.  No great amount of thought, imagination or perception is necessary to connect GLOVES to the applicant’s goods.

 

In fact, the applicant does not argue that the term GLOVE is not descriptive.  The applicant has essentially addressed the requirement by providing two statements:  (1)  “An appropriately worded disclaimer will be provided,”[5] and (2) The term GLOVE is “part of a unitary two-word sequence of an adjective (GOLDEN) and noun (GLOVE) and is exempt from disclaimer,” an argument presented for the first time in the applicant’s appeal brief.  The applicant’s mere statement that the mark is unitary fails to be persuasive for the following reasons.

 

The examining attorney agrees with the applicant that a mark or portion of a mark is considered "unitary" when it creates a commercial impression separate and apart from any unregistrable component.  That is, the elements are so merged together that they cannot be divided to be regarded as separable elements.  If the matter that comprises the mark or relevant portion of the mark is unitary, no disclaimer of an element, whether descriptive, generic or otherwise, is required.  TMEP §1213.05.  However such is not the case in this instance.  The “two-word sequence” comprised of GOLDEN with GLOVE fails to create a commercial impression separate and apart from the descriptive commercial impression created by the term GLOVE when it is used on gloves used to play baseball. 

 

Furthermore, the examining attorney must consider a number of factors in determining whether matter is part of a single or unitary mark:  whether it is physically connected by lines or other design features; the relative location of the respective elements; and the meaning of the terminology as used on or in connection with the goods or services.  Dena Corp. v. Belvedere International Inc., 950 F.2d 1555, 1561, 21 USPQ2d 1047, 1052 (Fed. Cir. 1991).  TMEP §1213.05.  First, lines or other design features do not physically connect the words.  Second, the location of the terms is not such that a unitary phrase is created.  The mark is comprised simply of an adjective placed before the noun it modifies.  And third, the registrant does not proffer a new or different meaning that is understood when GOLDEN GLOVE is used on baseball gloves. 

 

Moreover, TMEP §1213.05 identifies the following as examples of unitary marks:  compound word marks, comprised of either telescoped words or compound words formed with hyphen or other punctuation, slogans, marks that comprise a “double entendre,” marks comprised of terms that create an incongruity, marks that form a sound pattern that creates a distinctive impression, and marks that create a visual display that form a unitary whole.  The specific combination of these two words fails to communicate a new meaning, to create a compound mark, to create a slogan, to create a double entendre, or an expression capable of more than one interpretation, to create an incongruity by combining two disparate terms and to have any particular sound pattern that would result in a unitary phrase.  Moreover, the display of the words of the mark does not form a unitary whole.  Indeed, the result is a non-unitary mark comprised of two terms, one of which is merely descriptive of the applicant’s goods as it identifies them as “gloves.” 

 

In further support of the determination that GOLDEN GLOVE is not a unitary mark, reference is made to the cited registered mark, U.S. Registration No. 1291345.  The registered mark, GOLD GLOVE, for use on baseball gloves and mitts includes a disclaimer of the obviously descriptive term GLOVE.  As the applicant’s mark, GOLDEN GLOVE, and the registrant’s mark, GOLD GLOVE, communicate a meaning that is essentially the same, it follows that a disclaimer of the descriptive term GLOVE in this instance is similarly warranted. 

 

And finally, it is not always easy to articulate why matter is unitary.  However, if one cannot spell out exactly why a mark is unitary, then the mark is probably not unitary and nondistinctive elements within the mark must be disclaimed.  In general, a mark is unitary if the whole is something more than the sum of its parts. TMEP §1213.05.  The sole fact that the applicant combines an adjective with a noun to create its mark fails to create a mark that as a whole is something more than the sum of its parts.

    

CONCLUSION

                        The refusal to register the applicant’s GOLDEN GLOVE on the basis of likelihood of confusion, citing the registered mark GOLD GLOVE, is strongly supported in light of the similarity of the marks, the close relationship of the identified goods and the presumed shared channels of trade.  The examining attorney therefore respectfully requests the Board to affirm the refusal to register the mark GOLDEN GLOVE under Trademark Act Section 2(d), 15 U.S.C. §1052(d). 

 

 Furthermore, for the reasons stated above and for the reasons stated in the Office Actions mailed on 29 November 2004 and 20 May 2005, the requirement for the applicant to disclaim the descriptive term GLOVE apart from the mark GOLDEN GLOVE has been made final.  GLOVE merely identifies the applicant’s goods – gloves used for playing Little League baseball.  GOLDEN GLOVE is not a unitary phrase such that would obviate the requirement for a disclaimer of the descriptive term GLOVE.  The examining attorney therefore respectfully requests the Board to affirm the requirement for the applicant to disclaim the descriptive term GLOVE apart from the mark GOLDEN GLOVE under Trademark Act Section 6, 15 U.S.C. §1056. 

 

                                           Respectfully submitted,

 

/Katherine Stoides/

Trademark Examining Attorney

Law Office 101

(571) 272-9230

 

 

Ronald R. Sussman

Managing Attorney

Law Office 101