To: | Nalla, Anand (trademarks@paiplaw.com) |
Subject: | U.S. Trademark Application Serial No. 88924265 - GHOST GOLF - N/A |
Sent: | November 29, 2020 08:02:14 PM |
Sent As: | ecom105@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88924265
Mark: GHOST GOLF
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Correspondence Address:
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Applicant: Nalla, Anand
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Reference/Docket No. N/A
Correspondence Email Address: |
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FINAL OFFICE ACTION
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) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: November 29, 2020
This Office Action is in response to applicant’s communication filed on November 2, 2020.
In a previous Office Action(s) dated August 20, 2020, the trademark examining attorney refused registration of the applied-for mark based on the following:
- Trademark Act Section 2(d) for a likelihood of confusion with the mark in Reg. No. 4025990 - GHOST
In addition, applicant was required to satisfy the following: Add a disclaimer of the wording GOLF.
Based on applicant’s response, applicant has satisfied the following: disclaimer requirement. See TMEP §§713.02, 714.04.
The trademark examining attorney maintains and now makes FINAL the refusal(s) in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4025990. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. The registration was attached previously.
The applied for mark is GHOST GOLF for “Golf accessories, namely, carriers and dispensers for golf balls; Golf bags; Golf balls; Golf club covers; Golf divot repair tools; Golf putter covers; Golf tees” in Class 28.
The registered mark is GHOST for “golf club” in 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 and/or services. 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 the Marks
In response, the applicant contends that the marks, GHOST and GHOST GOLF are not confusingly similar.
The applicant argues that the commercial impression, sound and appearance of the marks are difference due to the addition of the wording GOLF in the applied for mark. This argument is not persuasive because, as stated previously, the addition of merely descriptive wording will not obviate the overall similarity between the marks. 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). 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 this case, the matter common to the marks is not merely descriptive or diluted because GHOST is not a term commonly used in relation to golfing goods.
In addition, when comparing the marks in their entireties, the marks do not convey a significantly different commercial impression from the other because the addition of GOLF does not create a different commercial impression, as the goods are directly relating to golfing.
Therefore, the marks are confusingly similar.
Comparison of the Goods
The prior attached Internet evidence, consisting of screenshots from www.callaway.com, www.taylormadegolf.com, www.titleist.com establishes that the same entity commonly provides the relevant goods and markets the goods under the same mark and the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. 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).
In response, applicant falsely stated that “something more” must be shown “to demonstrate that the goods are sufficiently related to weigh in favor of a finding of likelihood of confusion.” The In Coors Brewing Co. case reference by applicant applies to situations involving the similarity between food/beverage products and food services ((i.e., restaurants, catering). See In re Coors Brewing Co., 343 F.3d 1340, 1345, 68 USPQ2d 1059, 1063 (Fed. Cir. 2003); In re Giovanni Food Co., 97 USPQ2d 1990, 1991-92 (TTAB 2011) (finding the Office had not satisfied the “something more” requirement and had thus failed to meet its burden of proving likelihood of confusion where the marks were JUMPIN’ JACKS for barbeque sauce and JUMPIN JACK’S for catering services, because evidence indicating that some restaurants also provide catering services and sell barbeque sauce was not sufficient to establish catering services alone are related to barbeque sauce); TMEP §1207.01(a)(ii)(A). Relevant factors to consider in determining whether the “something more” requirement is satisfied include the strength of the marks, the degree of similarity between the marks, common practices in the food service industry as it relates to the goods and services at issue, and the types of items featured on the establishment’s menu. Accordingly, this argument is not persuasive in regards to the similarity of applicant and registrant’s golf goods.
Similarly, Applicant asserts that applicant specializes in golf clubs, specifically putters, while the applicant provides various golf accessories. However, as state previously and evidenced further from the sources below, the same entity commonly provides the relevant goods and markets the goods under the same mark and the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. 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):
- www.odysseygolf.com/
- http://www.scottycameron.com
- www.ping.com
- http://bettinardi.com/
- http://www.mizunousa.com
Lastly, generally, the greater degree of similarity between the applied-for mark and the registered mark, the lesser the degree of similarity between the goods and/or services of the parties is required to support a finding of likelihood of confusion. In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001)); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009).
Thus, there is a likelihood of confusion between the applied for mark and the registered mark. Given the similarity of the marks and the relatedness of the goods, refusal of applicant’s mark under Section 2(d) is maintained and made FINAL.
RESPONSE GUIDELINES
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.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
Mark Peisecki
/Mark Peisecki/
Trademark Examining Attorney Law Office 105
(571) 270-5399
mark.peisecki@uspto.gov
RESPONSE GUIDANCE