Head Sport AGv.Dennis W. Ross

Trademark Trial and Appeal Board

Nov 10, 2004

No. 91155623 (T.T.A.B. Nov. 10, 2004)

Mailed: November 10, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
Trademark Trial and Appeal Board
_____________
Head Sport AG
v.
Dennis W. Ross
_____________
Opposition No. 91155623
to application Serial No. 76387413
filed on March 25, 2002
_____________
David M. Kelly of Finnegan, Henderson, Farabow, Garrett and
Dunner for Head Sport AG.
Dennis W. Ross, pro se.
_____________
Before Hanak, Quinn and Drost, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Dennis W. Ross (applicant) seeks to register in typed
drawing form HED GOLF for “golf clubs.” The intent-to-use
application was filed on March 25, 2002. At the request of
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opp. No. 91155623
2
the Examining Attorney, applicant agreed to disclaim what
the Examining Attorney referred to as “the descriptive
portion of [applicant’s] mark,” namely, the word GOLF.
Head Sport AG (opposer) filed a timely Notice of
Opposition in which opposer alleged that since long before
March 25, 2002, opposer both registered and extensively
used its mark HEAD for a wide variety of sporting equipment
and other goods, including in particular golf clubs.
Continuing, opposer alleged that “in view of the similarity
of the parties’ marks and the identical and/or closely
related nature of the parties’ goods,” the use of
applicant’s mark HED GOLF is likely to cause confusion with
opposer’s HEAD mark. In addition, opposer alleged that the
use of applicant’s mark HED GOLF is likely to dilute the
distinctive quality of opposer’s famous mark HEAD. (Notice
of Opposition paragraphs 8 and 9). In particular, opposer
made the following allegation in paragraph 6 of the Notice
of Opposition: “Moreover, Opposer’s HEAD mark became famous
well prior to the filing date of Application No.
76/387,413.”
In its answer, applicant stated that it had “no
opinion” as to whether the use of his mark HED GOLF would
be likely to cause confusion with or to dilute the
distinctive quality of opposer’s HEAD mark. However,
Opp. No. 91155623
3
applicant did concede that the allegations set forth in
paragraphs 1, 3, 4, 5, 6 and 7 of the Notice of Opposition
were “true.” Thus, applicant has conceded that prior to
his application filing date, opposer had both used and
registered HEAD for a wide array of goods including golf
clubs. Furthermore, applicant conceded as “true” that
opposer’s mark HEAD had become famous prior to March 25,
2002, applicant’s Intent-to-Use filing date.
Opposer and applicant have filed briefs. Neither
party requested a hearing. The record in this case is set
forth at pages 3-5 of opposer’s brief. In particular,
opposer notes at page 5 of its brief that “applicant has
taken no testimony and has offered no evidence.” In his
brief, applicant does not challenge opposer’s description
of the record and in particular, applicant acknowledges at
page 1 of his brief that he “did not submit any testimony
to the Board.” Moreover, the record reflects that
applicant did not submit any other evidence.
We note that opposer has properly made of record by
means of a Notice of Reliance various of its registrations
for the mark HEAD. One registration is particularly
pertinent in this proceeding in that it depicts opposer’s
mark HEAD in typed drawing form, and the goods are “golf
clubs and golf bags.” Registration No. 1,762,980. Thus,
Opp. No. 91155623
4
priority is not an issue in this proceeding in that it
rests with opposer, and applicant has in his answer
conceded this fact.
We will consider first opposer’s likelihood of
confusion claim pursuant to Section 2(d) of the Trademark
Act. In any likelihood of confusion analysis, two key,
although not exclusive, considerations are the similarities
of the marks and the similarities of the goods. Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976)(“The fundamental inquiry mandated
by the Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks.”).
Considering first the goods, while opposer has
registered its mark HEAD for a wide array of goods, we will
focus our likelihood of confusion analysis simply upon the
goods set forth in opposer’s Registration No. 1,762,980
because such goods encompass, besides golf bags, golf
clubs, the very goods for which applicant seeks to register
his mark HED GOLF. In other words, because opposer enjoys
superior rights in its mark HEAD for the identical goods
for which applicant seeks to register HED GOLF, there is no
point in considering the other goods for which opposer has
registered its mark HEAD. In an effort to distinguish his
Opp. No. 91155623
5
golf clubs from opposer’s golf clubs, applicant makes the
following argument at page 2 of his brief: “The applicant’s
product is a specialized golf club, a putter, with unique
special guidelines and specifications set forth by the
United States Golf Association.”
Applicant’s argument is misplaced. Opposer’s
Registration No. 1,762,980 includes, besides golf bags,
“golf clubs,” a term broad enough to encompass golf clubs
of all types including putters. Thus, for the purposes of
this Board proceeding, the goods of the parties are
absolutely identical. See Canadian Imperial Bank v. Wells
Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir.
1987)(It is well settled that in Board proceedings, “the
question of likelihood of confusion must be determined
based on an analysis of the mark as applied to the goods
and/or services recited in applicant’s application vis-à-
vis the goods and/or services recited in opposer’s
registration, rather than what the evidence shows the goods
and/or services to be.”).
Turning to a consideration of the marks, we note at
the outset when the goods of the parties are legally
identical as is the case here, “the degree of similarity
[of the marks] necessary to support a conclusion of likely
confusion declines.” Century 21 Real Estate Corp. v.
Opp. No. 91155623
6
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992).
In considering the marks, we recognize that we are
obligated to compare the marks “in their entireties.” In
re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 750
(Fed. Cir. 1985). However, in comparing the marks in their
entireties, it is completely appropriate to give less
weight to a portion of a mark that is merely descriptive of
the relevant goods or services. National Data, 224 USPQ at
751 (“That a particular feature is descriptive … with
respect to the relevant goods or services is one commonly
accepted rationale for giving less weight to a portion of
the mark.”). As previously noted, in response to the
Examining Attorney, applicant conceded that the GOLF
portion of its mark is, at a minimum, merely descriptive of
its goods, golf clubs. Indeed, we find that the word
“golf” as applied to golf clubs is at the very least
extremely descriptive of golf clubs.
In addition, we note that applicant seeks to register
his mark HED GOLF in typed drawing form. Of course,
opposer’s mark HEAD is likewise registered in typed drawing
form for golf clubs. This means that applicant’s mark is
not limited to being “depicted in any special form,” and
hence we are mandated to “visualize what other forms the
Opp. No. 91155623
7
mark might appear in.” Phillips Petroleum Co. v. C.J. Webb
Inc., 442 F.2d 1376, 170 USPQ 35, 36 (CCPA 1971). See also
INB National Bank v. Metrohost Inc., 22 USPQ2d 1585, 1588
(TTAB 1992).
If applicant were to obtain a typed drawing
registration of his mark HED GOLF for golf clubs, then he
would be free to depict the HED portion of his mark in
large lettering on one line, and depict the extremely
descriptive GOLF portion of his mark on a second line in
far smaller lettering. As so depicted, applicant’s mark
would be highly similar in terms of visual appearance to
opposer’s mark HEAD. Indeed, given the extremely
descriptive nature of the GOLF portion of applicant’s mark,
if applicant’s mark were used on golf clubs in a manner in
which the HED portion of applicant’s mark were depicted on
one line in extremely larger lettering and the GOLF portion
of applicant’s mark were depicted on a second line in far
smaller lettering, consumers of golf clubs may well not
even notice the GOLF portion of applicant’s mark. Even if
the consumers did notice, they could well assume that HED
per se was the “trademark” and that the word GOLF depicted
in far smaller lettering merely indicated the obvious,
namely, that the goods were golf clubs.
Opp. No. 91155623
8
In sum, when taking into consideration the teachings
of Phillips Petroleum, we find that the two marks are, at a
minimum, extremely similar in terms of visual appearance.
While opposer’s mark HEAD consists of four letters, and the
source-identifying portion of applicant’s mark (HED)
consists of three letters, the presence of one additional
internal letter could easily be overlooked.
In terms of pronunciation, we find that opposer’s mark
HEAD and the source-identifying portion of applicant’s mark
(HED) are phonetically identical. In this regard, we note
that in his brief applicant has not even articulated how
HED might be pronounced other than as the word “head.” Of
course, it must be remembered that there is no correct
pronunciation of a trademark. In re Belgrade Shoe Co., 411
F.2d 1352, 162 USPQ 227 (CCPA 1969). In sum, we find that
opposer’s mark and the source-identifying feature of
applicant’s mark are phonetically identical.
Finally, in terms of connotation, we find that as
applied to golf clubs, both marks have the same connotation
in that they bring to mind the “head” of a golf club.
In concluding our Section 2(d) likelihood of confusion
analysis, we find that there clearly exists a likelihood of
confusion given the fact that opposer’s goods and
applicant’s goods are identical, and the additional fact
Opp. No. 91155623
9
that the two marks are, at a minimum, extremely similar in
terms of visual appearance, pronunciation and connotation.
Accordingly, we sustain the opposition on the basis that
applicant’s possible use of HED GOLF for golf clubs is
likely to cause confusion with opposer’s mark HEAD for golf
clubs.
We make this finding regardless of whether or not
opposer’s mark HEAD is famous for golf clubs. While
applicant, as previously noted, admitted the allegation of
paragraph 6 of the Notice of Opposition, said paragraph
merely alleges that “opposer’s HEAD mark became famous well
prior to” applicant’s filing date. Thus, applicant did not
admit that opposer’s mark HEAD was famous, in particular,
for golf clubs. Moreover, opposer has not otherwise
established that its mark HEAD is famous for golf clubs or
for that matter, any type of product.
Having sustained the opposition pursuant to opposer’s
Section 2(d) claim of likelihood of confusion, we elect not
to consider opposer’s claim that applicant’s use of HED
GOLF is “likely to dilute the distinctive quality of
opposer’s mark.” (Notice of Opposition paragraph 9).
Decision: The opposition is sustained solely pursuant
to opposer’s Section 2(d) likelihood of confusion claim.