Niblick Pty. Ltd.v.Kriton Golf Corp.

Trademark Trial and Appeal Board

Mar 2, 2001

No. 91110763 (T.T.A.B. Mar. 2, 2001)

03/02/01
Paper No. 20
JQ
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Niblick Pty. Ltd.
v.
Kriton Golf Corporation
_____
Opposition No. 110,763
to application Serial No. 75/088,018
filed on April 15, 1996
_____
Richard W. Young, Liisa M. Thomas and Jared D. Solovay of
Gardner, Carton & Douglas for Niblick Pty. Ltd.
Jay F. Moldovanyi1 for Kriton Golf Corporation.
______
Before Seeherman, Quinn and Rogers, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Kriton Golf
1 The Board, in an order dated December 13, 2000, denied
applicant’s attorney’s request to withdraw as counsel of record
in this proceeding. Mr. Moldovanyi had indicated that it was
difficult to communicate with applicant and that applicant had
not paid his legal bills for over one year. Mr. Moldovanyi
further indicated that he gave notice to applicant of his
withdrawal from employment on August 21, 2000, and that all
papers and property pertaining to this proceeding had been
delivered to applicant. A copy of this final decision is being
mailed to applicant at its mailing address of record, as well as
to applicant’s attorney.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 110,763
2
Corporation to register the mark shown below
for “golfing accessories, namely golf club locks and golf
bag locks.”2
Registration has been opposed by Niblick Pty. Ltd.
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, when applied to applicant’s goods, so
resembles opposer’s previously used and registered mark
NIBLICK for “sports clothing, namely shirts, jackets, pants,
rainwear and caps, footwear; [and] golf shoes”3 as to be
likely to cause confusion.
Applicant, in its answer, denied the salient
allegations of the notice of opposition, and set forth, as
“affirmative defenses,” amplifications of its denial of
likelihood of confusion, including an allegation that
opposer’s mark is descriptive when applied to golf
equipment.
The record consists of the pleadings; the file of the
involved application; and a certified copy of opposer’s
pleaded registration introduced by way of opposer’s notice
of reliance. Applicant neither took testimony nor
introduced any other evidence. When opposer failed to file
2 Application Serial No. 75/088,018, filed April 15, 1996, based
on Canadian Registration No. 485,957, issued December 11, 1997.
The term “Lock” is disclaimed apart from the mark.
Opposition No. 110,763
3
a brief, the Board issued an order, pursuant to Trademark
Rule 2.128(a)(3), to show cause why the Board should not
treat such failure as a concession of the case. Opposer
responded by indicating its continued interest in the
proceeding, and the order to show cause was discharged. The
Board ruled, however, that opposer failed to show excusable
neglect for the late filing of its brief on the case and,
therefore, the Board stated that it would not consider the
brief. Applicant did not file a brief. An oral hearing was
not requested.
In view of opposer’s ownership of a valid and
subsisting registration, there is no issue with respect to
opposer’s priority. King Candy Co., Inc. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Insofar as likelihood of confusion is concerned, our
determination under Section 2(d) is based on an analysis of
all of the facts in evidence that are relevant to the
factors bearing on the likelihood of confusion issue. In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks
and the similarities between the goods. Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976). As indicated above, the only evidence
3 Registration No. 1,952,944, issued January 30, 1996.
Opposition No. 110,763
4
introduced at trial consists of opposer’s pleaded
registration.
Our comparison of opposer’s mark NIBLICK and
applicant’s mark NIBLOCK (stylized) begins with taking
judicial notice of the dictionary definition of the term
“niblick:” “an iron golf club with a wide deeply slanted
face used for short shots out of sand or long grass or for
shots where quick loft and little roll is desired.”
Webster’s Third New International Dictionary (unabridged ed.
1993) In light of this meaning, opposer’s mark is
suggestive as used in connection with opposer’s goods, and
it is clear that applicant’s mark is a play on this golf
term. The marks suggest the same idea, both conjuring up
images of the game of golf.4 Further, the marks sound
alike, differing only slightly in the sound of the short
vowels which are the fifth letters in the marks. And,
although the fifth letters of the marks are different and
applicant’s mark is stylized, these differences are
insufficient to significantly distinguish the marks in terms
of appearance. In comparing the marks, we have kept in mind
the normal fallibility of human memory over time and the
fact that consumers retain a general rather than a specific
impression of trademarks encountered in the marketplace. We
4 Notwithstanding this suggestiveness, the record is devoid of
any other third-party uses or registrations of the same or
similar marks in the golf trade.
Opposition No. 110,763
5
conclude that the similarities in appearance, sound,
connotation and overall commercial impression outweigh the
differences between the marks.
With respect to the goods, we start with the premise
that they need not be identical or even competitive to
support a holding of likelihood of confusion. It is
sufficient that the goods are so related or that conditions
surrounding their marketing are such that they are
encountered by the same persons who, because of the
relatedness of the goods and the similarities between the
marks, would believe mistakenly that the goods originate
from or are in some way associated with the same producer.
Hercules Inc. v. National Starch and Chemical Corp., 223
USPQ 1244, 1247 (TTAB 1984).
The identification of goods in opposer’s registration
includes golf shoes. Further, the sports clothing items
listed in opposer’s registration are identified broadly
enough to encompass golf shirts, pants, caps and rainwear.
We find that opposer’s golf shoes and clothing are related
to golf accessories such as those listed in the involved
application. It is obvious, based on a comparison of the
goods as set forth in opposer’s registration and applicant’s
application, that the parties’ goods travel in the same
channels of trade (i.e., golf equipment stores, golf pro
Opposition No. 110,763
6
shops and sporting goods stores), and are purchased by the
same classes of purchasers (i.e., golfers).
To the extent that any of the dissent’s points would
cast doubt on our finding of likelihood of confusion, we
resolve that doubt, as we must in favor of the prior
registrant. Giant Food, Inc. v. Nation’s Foodservice, Inc.,
710 F.2d 1565, 218 USPQ 390, 395 (Fed. Cir. 1983).
Decision: The opposition is sustained and registration
to applicant is refused.
Seeherman, Administrative Trademark Judge, dissenting:
I respectfully dissent from the majority’s view that
opposer has sustained its burden in proving likelihood of
confusion.
I do agree with the majority that opposer’s identified
golf shoes and clothing items (which we must, under well-
settled principles, treat as including golf clothing) and
applicant’s golf club locks and golf bag locks would be sold
to golfers in the same channels of trade. However, there
are very real differences between the goods, namely,
opposer’s are clothing items while applicant’s are hardware.
Opposer has submitted no evidence whatsoever to show that
the same companies manufacture both clothing and golf club
and bag locks. Thus, there is nothing in this record that
Opposition No. 110,763
7
shows that golfers would expect golf shoes and clothing and
golf club and bag locks to emanate from the same source.
Further, opposer’s mark NIBLICK, which has the meaning
of a type of golf club, is obviously a suggestive mark for
golf clothing. As such, it is not entitled to a broad scope
of protection. There is nothing in this record to show that
opposer has promoted the mark, or has had any sales, or done
anything which would entitle the mark’s protection to extend
to all items in the golfing field, including the hardware
sold by applicant. Opposer has simply not shown that
consumers are likely to believe that any mark similar to
NIBLICK used for any items associated with playing golf
identifies goods emanating from opposer.
Further, although applicant’s mark is similar in
pronunciation, its appearance is different from opposer’s.
In this respect, I disagree with the majority’s view that
the stylization of applicant’s mark is insufficient to
distinguish the marks. Applicant’s mark is depicted with a
space between NIB and LOCK, so that LOCK stands out as a
separate word. Moreover, the interlocking “O” and “C”
emphasizes the LOCK portion of the mark, not just visually
but connotatively. Consumers viewing applicant’s mark will
certainly notice that it is a play on the word “niblick,”
but the overall connotation, because of the LOCK portion,
and the goods on which the mark is used, is to suggest a
Opposition No. 110,763
8
lock for one’s niblick (i.e., clubs). Opposer’s mark, on
the other hand, has only the connotation of a golf club, and
suggests merely that its clothing items are for playing
golf.
In an opposition the burden is on the opposer to prove
likelihood of confusion. Here, opposer has chosen to rely
only on its registration for NIBLICK, and has submitted no
other evidence. Opposer has simply not shown that
applicant’s use of the stylized NIB LOCK mark for golf club
locks and golf bag locks is likely to cause confusion.
Given the differences in the goods and the marks, and the
suggestiveness of opposer’s mark, I would dismiss the
opposition.