To: | Bushnell Inc. (tmatlanta@seyfarth.com) |
Subject: | U.S. Trademark Application Serial No. 88406481 - TASCO GOLF - 070772200041 |
Sent: | July 08, 2019 03:16:22 PM |
Sent As: | ecom106@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88406481
Mark: TASCO GOLF
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Correspondence Address:
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Applicant: Bushnell Inc.
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Reference/Docket No. 070772200041
Correspondence Email Address: |
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The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: July 08, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SUMMARY OF ISSUES:
SECTION 2(D) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant has applied to register the mark “TASCO GOLF” for “Laser rangefinders; Rangefinders for golf” in International Class 9.
The cited registration is:
Registration No. 1891779 “TASCO” for “golf bags, golf balls, golf clubs, golf club heads, golf club shafts, golf headcovers, grip tapes for golf clubs, snow skis, ski sticks, ski boots, ski bindings, ice skates, roller skates, snow sled for recreational use, elbow guards for athletic use and knee guards for athletic use” in International Class 28.
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
Comparison of Marks
Applying the above analysis to this case, the marks are substantially similar. “TASCO” is a recognizable portion of applicant’s mark which is identical to the entirety of the registrant’s mark. Although applicant’s mark also contains the word “GOLF”, it is well-settled adding a term to a registered mark generally does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL and BENGAL LANCER and design confusingly similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part.
In addition, although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Matter that is descriptive of or generic for a party’s goods is typically less significant or less dominant in relation to other wording in a mark. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).
In the present case, the attached evidence shows that the wording “GOLF” in the applied-for mark is merely descriptive of or generic for applicant’s goods. See disclaimer section for more details. Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording “TASCO” the more dominant element of the mark.
Ultimately, when consumers encounter goods of applicant and registrant using marks with terms that differ by one word, but which are otherwise identical in part in appearance and overall impression, they are likely to believe that the marks identify a single source of goods. Thus, the marks are confusingly similar.
Comparison of Goods
The attached Internet evidence, consisting of websites from Callaway, TGW, MGI, and TourTrek establishes that the same entity provides and markets laser rangefinder, golf clubs, golf balls, and golf bags under the same mark. In addition, these goods are provided through the same trade channels and used by the same classes of consumers. Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Therefore, since the marks are identical in part and the goods are closely related, there is a likelihood of confusion and registration must be refused.
Although applicant’s mark has been refused registration, applicant may respond to the refusals by submitting evidence and arguments in support of registration. However, if applicant responds to the refusal, applicant must also respond to the requirement set forth below.
Applicant must provide a disclaimer of the un-registrable part of the applied-for mark even though the mark as a whole appears to be registrable. See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a). A disclaimer of an un-registrable part of a mark will not affect the mark’s appearance. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).
In this case, applicant must disclaim “GOLF” because it is not inherently distinctive. These un-registrable term at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
The attached evidence from Oxford Dictionary defines “GOLF” as “a game played on a large open-air course, in which a small hard ball is struck with a club into a series of small holes in the ground, the object being to use the fewest possible strokes to complete the course”. Thus, the wording merely describes that applicant’s goods can be used while playing golf.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “GOLF” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
How to respond. Click to file a response to this nonfinal Office action
/Marcya N. Betts/
Marcya N. Betts
Examining Attorney
Law Office 106
(571) 272-4913
Marcya.Betts@uspto.gov
RESPONSE GUIDANCE