Softspikes, LLC

Trademark Trial and Appeal BoardSep 22, 2016

No. 86426533 (T.T.A.B. Sep. 22, 2016)

This Opinion is not a Precedent of the TTAB Mailed: September 22, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Softspikes, LLC _____ Serial No. 86426533 _____ Ira C. Edell of Edell, Shapiro & Finnan, LLC, for Softspikes, LLC. Gina M. Fink, Trademark Examining Attorney, Law Office 109, Michael Kazazian, Managing Attorney. _____ Before Zervas, Shaw, and Hightower, Administrative Trademark Judges. Opinion by Hightower, Administrative Trademark Judge: Softspikes, LLC (“Applicant”) seeks registration on the Principal Register of the mark TOUR LOCK, in standard characters, for “cleats and cleat inserts for attachment to athletic shoes” (as amended) in International Class 25.1 The Trademark Examining Attorney has refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as 1 Application Serial No. 86426533 was filed on October 17, 2014, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s allegation of a bona fide intention to use the mark in commerce. Serial No. 86426533 - 2 - applied to the goods identified in the application, so resembles the mark TOUR LOCK, in standard characters, previously registered on the Principal Register for “golf equipment, namely, golf club grips and accessories sold as a unit therewith, namely, weights, screws, and plugs” in International Class 28,2 as to be likely to cause confusion, to cause mistake, or to deceive. After the Examining Attorney made the refusal final, Applicant appealed to this Board. We affirm the refusal to register. Our determination under Section 2(d) is based on an analysis of all probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key considerations are the similarities between the marks and the similarities between the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.”). We first address the du Pont likelihood of confusion factor focusing on “‘the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.’” Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2 Registration No. 3147937, issued September 26, 2006; renewed March 18, 2016. Serial No. 86426533 - 3 - 2005) (quoting du Pont, 177 USPQ at 567). Here, Applicant’s mark and the cited mark consist entirely of the identical phrase TOUR LOCK. The first du Pont factor thus weighs strongly in favor of a finding that confusion is likely. We next consider the second du Pont factor, the similarity of the goods. The test is not whether consumers would be likely to confuse the goods, but rather whether they would be likely to be confused as to their source. In re Anderson, 101 USPQ2d 1912, 1919 (TTAB 2012). Therefore, to support a finding of likelihood of confusion, it is not necessary that the goods be identical or even competitive. It is sufficient that the goods are related in some manner, or that the circumstances surrounding their marketing are such that they would be encountered by the same persons in situations that would give rise, because of the marks, to a mistaken belief that they originate from the same source or that there is an association or connection between the sources of the goods. In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009). Where, as here, the involved marks are identical, the degree of similarity between the goods required to support a finding that confusion is likely declines. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001). It is necessary only that there be a viable relationship between the two to support a finding of likelihood of confusion. In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015); In re Thor Tech, 90 USPQ2d at 1636. We must make our determination regarding the similarities between the goods, channels of trade, and classes of purchasers based on the goods as they are identified Serial No. 86426533 - 4 - in the involved application and cited registration, respectively, not on any extrinsic evidence of actual use. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Octocom Sys. Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). In other words, an applicant may not restrict the scope of the goods covered in the cited registration by argument or extrinsic evidence. In re Midwest Gaming & Entm’t LLC, 106 USPQ2d 1163, 1165 (TTAB 2013); see also In re Thor Tech, 90 USPQ2d at 1638 (“We have no authority to read any restrictions or limitations into the registrant’s description of goods.”); In re Bercut-Vandervoort & Co., 229 USPQ 763, 764-65 (TTAB 1986). As noted supra, the goods identified in the cited registration are “golf equipment, namely, golf club grips and accessories sold as a unit therewith, namely, weights, screws, and plugs,” while Applicant’s identified goods are “cleats and cleat inserts for attachment to athletic shoes.” We find that Applicant’s identification is broad enough to cover cleats and cleat inserts for attachment to golf shoes. Indeed, Applicant states in its appeal brief that “Applicant does sell one model of its TOUR LOCK cleats and inserts for use specifically with golf shoes.”3 Both the subject application and the cited registration comprise golf equipment and accessories. Neither is restricted as to price, channels of trade, or classes of customers. Nonetheless, Applicant argues that: 3 Appeal Brief at 6, 4 TTABVUE 7; see also February 6, 2015 Office Action at 4 (page from Applicant’s website discussing its golf cleats, but not in association with the TOUR LOCK mark). Serial No. 86426533 - 5 - the goods are clearly vastly different and, not surprisingly, are differently classified in the international trademark classification system. From these obvious differences it is patently evident that the goods of the Registrant and Applicant are so disparate that no consumer could be confused into believing that there is any connection between their respective suppliers.4 In response to Applicant’s arguments, we first note that a difference in classification has no bearing on the relationship of the identified goods or the question of likelihood of confusion. The classification of goods and services is a purely administrative determination for the convenience of the Office. See Jean Patou Inc. v. Theon Inc., 9 F.3d 971, 29 USPQ2d 1771, 1774 (Fed. Cir. 1993); In re Leon Shaffer Golnick Adver., Inc., 185 USPQ 242, 242 n.3 (TTAB 1974). Second, we reiterate that because the involved marks are identical, there need be only a viable relationship between the identified goods to support a finding of likelihood of confusion. Applicant itself owns a registration for the mark shown at right for both “golf club grips” and “cleats and cleat receptacles for attaching cleats to athletic shoes.”5 Record evidence indicates that Applicant uses this design mark in association with both golf club grips and golf cleats:6 4 Appeal Brief at 6, 4 TTABVUE 7. 5 Reg. No. 3849925, attached to February 6, 2015 Office Action at 17-19. 6 Attached to September 16, 2015 Final Office Action at 26. Serial No. 86426533 - 6 - In addition, the Examining Attorney submitted at least 13 existing use-based, third-party registrations covering goods of the type identified in both the subject application and the cited registration. Nine of the registrations identify both “golf cleats” and “golf club grips,”7 while four others cover the following goods: • Reg. No. 4436641: “Golf cleats,” “Golf club grips,” and “Weights for attachment to golf clubs for use as a golf swing aid” (attached to February 6, 2015 Office Action at 48-50); • Reg. No. 4415925: “golf cleats,” “cleats for attachment to sports shoes,” and “golf club grips” (id. at 35-38); • Reg. No. 4415924: “golf cleats,” “cleats for attachment to sports shoes,” and “golf club grips” (attached to September 16, 2015 Final Office Action at 17- 20); and • Reg. No. 3808618: “Golf apparel and accessories, namely, ... cleats” and “Golf equipment and merchandise, namely, ... golf club grips” (id. at 11-13). 7 Reg. No. 4112543, attached to February 6, 2015 Office Action at 23-25; Reg. No. 4258846, id. at 32-34; Reg. No. 4338713, id. at 39-41; Reg. No. 4338747, id. at 42-44; Reg. No. 4576574, id. at 45-47; Reg. No. 3664583, attached to September 16, 2015 Final Office Action at 5-7; Reg. No. 3768476, id. at 8-10; Reg. No. 4204762, id. at 14-16; Reg. No. 4777610, id. at 21-23. Serial No. 86426533 - 7 - While these registrations are not evidence that the marks shown therein are in use or that the public is familiar with them, they nonetheless have probative value, suggesting that the identified goods are of a kind which are produced or marketed by a single source under a single mark. In re Anderson, 101 USPQ2d at 1919; In re Davey Prods. Pty. Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009). Applicant argues that “the goods in the cited registration are not merely golf club grips per se; they are a weighting system containing ‘golf club grips and accessories sold as a unit therewith, namely, weights, screws, and plugs’.”8 Although there is no indication that the golf club grips identified in the third-party registrations are sold as a unit with weights, screws, and plugs, that does not undermine our conclusion that there is a viable relationship between the goods identified in the application and cited registration. Even if Registrant’s goods are more expensive or technologically sophisticated than the golf club grips identified in the other registrations of record, the offer of Applicant’s related goods under an identical mark is likely to lead to a mistaken belief that these types of golf equipment and accessories originate from the same source. The third-party registrations and evidence of Applicant’s use and registration demonstrate that the types of goods identified in the application and cited registration may emanate from the same sources under the same marks. In our likelihood of confusion analysis, these findings under the second du Pont factor support a finding that confusion is likely. 8 Appeal Brief at 8, 4 TTABVUE 9. Serial No. 86426533 - 8 - We have considered all of the arguments and evidence of record, including those not specifically discussed herein, as they pertain to the relevant du Pont likelihood of confusion factors. We have found that Applicant’s mark is identical to the cited mark, and that the goods identified in the subject application and cited registration are related. We find that Applicant’s mark is likely to cause confusion with the mark in cited Registration No. 3147937 when used in association with “cleats and cleat inserts for attachment to athletic shoes.” Decision: The refusal to register Applicant’s mark is affirmed.