UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT: TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE.

 

MAILING/E-MAILING DATE INFORMATION: If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number 78/777312

 

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

 

Registration Refusal – Likelihood Of Confusion

Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2404968. Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq. Please see the enclosed registration.

 

A likelihood of confusion determination in this case involves a two-part analysis. First, the marks are compared for similarities in appearance, sound, connotation and commercial impression. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). Second, the goods are compared to determine whether they are similar or related or whether the activities surrounding their marketing are such that confusion as to origin is likely. In re Nat’l Novice Hockey League, Inc., 222 USPQ 638 (TTAB 1984); In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re Int’l Tel. and Tel. Corp., 197 USPQ 910 (TTAB 1978); Guardian Prods. Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); TMEP §§1207.01 et seq.

 

The Marks Are Confusingly Similar In Sound And Appearance

The marks are first compared for similarities in sound, appearance, meaning or connotation. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). Similarity in any one of these elements may be sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1536 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); In re Mack, 197 USPQ 755 (TTAB 1977); TMEP §1207.01(b).

 

The applicant’s mark is EATON in stylized form. The registered mark is ETON in typed drawing form. The marks are essentially phonetic equivalents of each other as they both begin with a hard E sound and end with the letters TON. Though there are other possible pronunciations of the registered mark, there is no correct pronunciation of a trademark. Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ 461 (TTAB 1985); In re Great Lakes Canning, Inc., 227 USPQ 483 (TTAB 1985); In re Teradata Corp., 223 USPQ 361, 362 (TTAB 1984); In re Mack, 197 USPQ 755 (TTAB 1977); TMEP §1207.01(b)(iv). The marks in question could clearly be pronounced the same. Similarity in sound alone may be sufficient to support a finding of likelihood of confusion. RE/MAX of America, Inc. v. Realty Mart, Inc., 207 USPQ 960, 964 (TTAB 1980); Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469 (TTAB 1975); In re Cresco Mfg. Co., 138 USPQ 401 (TTAB 1963); TMEP §1207.01(b)(iv).

 

The only meaningful difference between the two marks is that applicant has presented its mark in a stylized manner. However, registration of a mark in typed drawing form means that the mark may be displayed in any lettering style. 37 C.F.R. §2.52(a). The rights associated with a mark in typed drawing form reside in the wording itself, and registrant is free to adopt any style of lettering, including lettering identical to that used by applicant. Therefore, applicant’s presentation of its mark in special form will not avoid likelihood of confusion with a mark that is registered in typed drawing form because the marks could be used in the same manner of display. See In re Melville Corp., 18 USPQ2d 1386, 1387-88 (TTAB 1991); In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2015 (TTAB 1988); Sunnen Prods. Co. v. Sunex Int’l Inc., 1 USPQ2d 1744, 1747 (TTAB 1987); In re Hester Indus., Inc., 231 USPQ 881, 882, n.6 (TTAB 1986); United Rum Merchants, Ltd. v. Fregal, Inc., 216 USPQ 217, 220 (TTAB 1982); Frances Denney, Inc. v. Vive Parfums, Ltd., 190 USPQ 302, 303-04 (TTAB 1976); TMEP §1207.01(c)(iii).

 

Consequently, the marks are confusingly similar in sound and appearance, and confusion as to source is likely.

 

The Goods Are Closely Related

Second, the examining attorney must compare the goods 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 Int’l Tel. and Tel. Corp., 197 USPQ 910 (TTAB 1978); Guardian Prods. Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978).

 

The applicant’s goods are “golf equipment, sport grips, golf grips, golf accessories.” The registrant’s goods, in pertinent part, are “golf tee bags; golf accessories, namely, tees, divot repair tools and ball markers; golf accessory pouches; electronic golf putting aids, namely, a machine for indoor golf ball putting practice with automatic return; and magnetic and non-magnetic board games.” The goods are closely related and overlapping in part in that both applicant and registrant offer a variety of golf accessories and equipment.

 

When confronted with closely related goods bearing highly similar marks, a consumer is likely to have the mistaken belief that the goods originate from the same source. Because this likelihood of confusion exists in this case, registration must be refused.

 

Doubt Resolved In Favor Of Registrant

Because the marks are very similar and the goods provided are closely related, the similarities among the marks and the goods are so great at to create a likelihood of confusion among consumers as to the source of the goods. 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).

 

Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration. If applicant chooses to respond to the refusal to register, then applicant must also respond to the following requirements.

 

Identification Of Goods

Applicant seeks registration for the following goods in class 28: golf equipment, sport grips, golf grips, golf accessories.

 

The terms “equipment” and “accessories” in the identification of goods needs clarification because it is broad and could refer to goods in several international classes.  Applicant must amend the identification by stating the common generic name of each item or by describing the nature, purpose and intended use of each item.  TMEP §§1402.01 and 1402.03. Applicant may change this wording to “golf equipment, namely, golf clubs, golf putters, golf irons, and golf balls,” and “golf accessories, namely, divot repair tools, golf tees, golf tee markers, and golf gloves,” if accurate.  TMEP §1402.01.

 

The wording “sport grips, golf grips” in the identification of goods needs clarification because it is indefinite. Applicant may change this wording to “handle grips for sporting equipment, golf club grips,” if accurate.  TMEP §1402.01.

 

Summary Of Recommendations

Applicant may adopt the following identification of goods, if accurate:

 

            Class 28:       Golf equipment, namely, golf clubs, golf putters, golf irons, and golf balls; handle grips for sporting equipment; golf club grips; golf accessories, namely, divot repair tools, golf tees, golf tee markers, and golf gloves

 

Scope Advisory

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

Identification Manual Advisory

For assistance with identifying and classifying goods in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.

 

Multiple Class Advisory

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1)   Applicant must list the goods by international class with the classes listed in ascending numerical order. TMEP § 1403.01; and

 

(2)   Applicant must submit a filing fee for each international class of goods not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov). 37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.

 

The filing fee for adding classes to an application is as follows:

 

(1)     $325 per class, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html; and

 

(2)     $375 per class, when the fees are submitted with a paper response.

 

37 C.F.R. §§2.6(a)(i) and (ii); TMEP §810.

 

If applicant has questions about its application or needs assistance in responding to this Office Action, please telephone the assigned trademark examining attorney directly at the number below.

 

/Christopher M. Ott/

Trademark Examining Attorney

Law Office 116

christopher.ott@uspto.gov (Questions Only)

571.272.8849

571.273.9116 (Fax)

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE: You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE: To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

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

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

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