A trademark applicant earns a mulligan on its application to register a golf-related mark.
The ex-parte appeal was brought by Driven Golf, Inc., which had originally suffered a defeat when the U.S. Patent and Trademark Office examining attorney assigned to its application determined there to be a likelihood of confusion with another mark that was registered in a different class of goods and services.
Driven Golf, Inc. applied to register the trademark DRIVEN GOLF. The claimed use was for two classes: Class 9 (Golf training aids, namely tangible articles designed to attach to a golfer and/or golf club and improve a golfer’s swing) and Class 25 (Apparel, namely T-shirts, shirts, hats, caps, sweatshirts, pants, sweat suits, hoodies and socks).
The examining attorney assigned to the application had made a determination that a previously registered mark — DRIVEN BY PING — was likely to be confused by DRIVEN GOLF. The prior registered mark was registered for use in Class 28 for golf clubs.
The TTAB’s analysis focused on three components of a likelihood of confusion analysis: (1) similarity or dissimilarity and nature of the goods; (2) the similarity or dissimilarity of established, likely-to-continue trade channels; and (3) similarity or dissimilarity of the marks.
1. Similarity or dissimilarity and nature of the goods.
“Simply put, this very sparse record is insufficient to establish that consumers are likely to believe Applicant’s goods emanate from the same sources as those identified in the cited registration,” states the TTAB’s opinion in determining that the evidence fails to support a finding that the goods in the DRIVEN BY PING registration are related to those in the DRIVEN GOLF application (Classes 9 and 25).
2. The similarity or dissimilarity of established, likely-to-continue trade channels.
It was found that there is no presumption that the goods travel in common trade channels and are marketed to the same consumers. The TTAB said that is because there was insufficient evidence that the Class 9 and 25 goods of the Applicant is related to the Class28 goods in the DRIVEN BY PING registration.
“While we recognize that golf clubs, golf training aids and clothing that is broadly identified to include clothing worn while golfing may be available in common trade channels, there is insufficient evidence in the record that these goods travel in the same channels of trade or may be purchased by the same classes of purchasers,” stated the TTAB in its opinion.
3. Similarity or dissimilarity of the marks.
The TTAB noted that, in appearance, the only similarity between the Applicant’s mark and the registered mark is the common word DRIVEN, which appears at the beginning of both marks.
“However, although both marks are in standard-character format and could be presented in the same or similar stylization, they are somewhat more dissimilar than similar due to the additional wording in each mark,” stated the TTAB.
It was also pointed out that the marks are largely dissimilar in pronunciation even though the first word in each mark is identical and would be pronounced identically.
“The mark DRIVEN BY PING connotes PING-branded golf clubs, presumably drivers,” wrote the TTAB. “Applicant’s mark, on the other hand, connotes golf aids used by consumers who are driven to improve their game, and clothing related thereto. Thus, while we agree with the Examining Attorney that the addition of a house mark such as PING to a mark does not necessarily obviate a likelihood of confusion, the marks at issue herein are more dissimilar than similar in connotation.”
Ultimately, confusion was deemed unlikely and the refusal to register the mark was reversed. It is an interesting case where two somewhat similar marks operating in the general field of golf may co-exist and both be registered. The examining attorney is not always immune from a challenge when initially denying a trademark application from being registered.