J 2 Z

Trademark Trial and Appeal Board

Mar 12, 2013

No. 77934568 (T.T.A.B. Mar. 12, 2013)

Mailed:
March 12, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re J 2 Z
________

Serial No. 77934568
_______

George A. Pelletier Jr. of Cantor Colburn LLP for J 2 Z.

Barbara A. Rutland, Trademark Examining Attorney, Law
Office 101 (Ronald R. Sussman, Managing Attorney).
_______

Before Quinn, Grendel and Adlin, Administrative Trademark
Judges.

Opinion by Grendel, Administrative Trademark Judge:

INTRODUCTION.
J 2 Z (applicant) seeks registration on the Principal
Register of the mark depicted below, for goods identified
in the application as “house mark for a full line of
clothing, footwear, headwear.”1

1 Serial No. 77934568, filed on February 12, 2010. The
application is based on applicant’s allegation of a bona fide
intention to use the mark in commerce, pursuant to Trademark Act
Section 1(b), 15 U.S.C. § 1051(b).
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 77934568
2

The application includes the following description of the
mark: “The mark consists of the words 2 GOLF & MORE and a
design element.”
The Trademark Examining Attorney has issued a final
refusal to register applicant’s mark under Trademark Act
Section 2(d), 15 U.S.C. §1052(d). Additionally, the
Trademark Examining Attorney has issued a final refusal of
registration based on applicant’s failure to submit a
disclaimer of the word GOLF apart from the mark as shown.
See Trademark Act Section 6, 15 U.S.C. §1056.
The Trademark Examining Attorney’s Section 2(d)
refusal is based on her contention that applicant’s mark,
as used or intended to be used on applicant’s goods as
identified in the application, so resembles the mark 2GOLF,
previously registered on the Principal Register (in
standard character form) for services identified in the
registration as “retail store services featuring golf
Ser. No. 77934568
3
equipment,”2 as to be likely to cause confusion, to cause
mistake, or to deceive.
Applicant and the Trademark Examining Attorney have
filed briefs on appeal.
After careful consideration of the evidence of record
and the arguments of counsel, we AFFIRM the Section 2(d)
refusal. We also AFFIRM the final requirement for a
disclaimer of GOLF.

SECTION 2(d) REFUSAL.
Under Trademark Act Section 2(d), registration of a
mark is barred if it

... so resembles a mark registered in the Patent
and Trademark Office, or a mark or trade name
previously used in the United States by another
and not abandoned, as to be likely, when used on
or in connection with the goods [and/or services]
of the applicant, to cause confusion, or to cause
mistake, or to deceive.

Our likelihood of confusion determination under
Section 2(d) is a legal conclusion, based on an analysis of
all of the facts in evidence that are relevant to the
factors bearing on the likelihood of confusion issue (the
du Pont factors). See In re E. I. du Pont de Nemours &

2 Reg. No. 3110532, issued on June 27, 2006. Section 8 affidavit
accepted; Section 15 affidavit acknowledged.
Ser. No. 77934568
4
Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See
also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed.
Cir. 2005); In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531, 1533 (Fed. Cir. 1997).
“While it must consider each factor for which it has
evidence, the Board may focus its analysis on dispositive
factors, such as similarity of the marks and relatedness of
the goods [and/or services].” Han Beauty Inc. v. Alberto-
Culver Co., 236 F.3d 1333, 57 USPQ2d 1557, 1559 (Fed. Cir.
2001). See also In re Max Capital Group Ltd., 93 USPQ2d
1243, 1244 (TTAB 2010)(“In any likelihood of confusion
analysis, two key considerations are the similarities
between the marks and the similarities between the goods
and/or services.”)

Du Pont Factor 1: Similarity of the Marks.
Under the first du Pont factor, we determine the
similarity or dissimilarity of applicant’s mark and the
cited registered mark when they are viewed in their
entireties in terms of appearance, sound, connotation and
commercial impression. See In re du Pont, supra, 177 USPQ
at 567; see also Palm Bay Imports, Inc., supra, 73 USPQ2d
at 1692.
Ser. No. 77934568
5
The test, under the first du Pont factor, is not
whether the marks can be distinguished when subjected to a
side-by-side comparison, but rather whether the marks are
sufficiently similar in their overall commercial
impressions as to be likely to cause confusion when used on
or in connection with the goods and/or services at issue.
See Midwestern Pet Foods, Inc. v. Societe Des Produits
Nestle S.A., 685 F.3d 1046, 1053, 103 USPQ2d 1435, 1449
(Fed. Cir. 2012). This necessarily requires us to take
into account the fallibility of memory over time and the
fact that the average purchaser retains a general rather
than a specific impression of trademarks. See In re
Association of the United States Army, 85 USPQ2d 1264, 1269
(TTAB 2007); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d
1467, 1468 (TTAB 1988).
Although the marks at issue must be considered in
their entireties, it is well-settled that one feature of a
mark may be found to be more significant than another in
terms of the mark’s function as a source-indicator, and it
is not improper to give more weight to this dominant
feature in determining the commercial impression created by
the mark, and in comparing the marks at issue under the
first du Pont factor. See In re Chatam International Inc.,
380 F.3d 1340, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004).
Ser. No. 77934568
6
In the present case, when considering the respective
marks in terms of appearance and commercial impression, we
find that the dominant feature of applicant’s mark is the
large stylized numeral “2” appearing above the highly
descriptive words “GOLF & MORE.”3 However, the cited
registered mark is depicted in standard character form. As
such, we must presume that the owner of the registration
may depict its mark in any manner and form. See Trademark
Rule 2.52, 37 C.F.R. §2.52. See also Citigroup Inc. v.
Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d
1253, 1258-59 (Fed. Cir. 2011). This would include a
display of the registered mark in a manner featuring a very
large and stylized “2”, combined with the descriptive and
essentially generic word “GOLF.”
Even if the manner in which the “2” might be stylized
in the registered mark is not the same as the manner in
which the “2” in applicant’s mark is stylized, if the “2”
in both marks is featured as a large and dominant element
of the mark, both marks would create a commercial
impression in which the numeral “2” would be likely to be
perceived as the indication of source, with the additional

3 As will be discussed below, the Trademark Examining Attorney
has required applicant to disclaim GOLF, alone, and not the “&
MORE.” Nonetheless, we find that “& MORE” has little or no
source-indicating significance, when the mark is considered in
its entirety.
Ser. No. 77934568
7
wording in both marks viewed only as merely descriptive or
generic matter.
In terms of sound, the marks differ to the extent that
applicant’s mark includes the highly descriptive matter “&
MORE,” which would be pronounced “AND MORE.” However, we
find that this difference does not suffice as a basis for
distinguishing the marks when they are considered in their
entireties. As for the phonetic elements “2 GOLF” in each
mark, we do not agree with applicant’s contention that
these elements necessarily would be pronounced or
emphasized differently in the two marks, especially if we
presume that the cited registered mark might be displayed
with a large and prominent numeral “2”. Additionally as to
“2GOLF” or “2 GOLF,” it is settled that there is no
“correct” pronunciation of trademarks when assessing how
consumers might actually pronounce the marks. See In re
Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912
(Fed. Cir. 2012); Centraz Indus. Inc. v. Spartan Chem. Co.,
77 USPQ2d 1698, 1701 (TTAB 2006).
In terms of connotation, we find that the cited
registered mark is likely to be perceived as meaning “to
golf.” However, applicant’s mark could be perceived as
having a similar meaning, “to golf and more.” The
descriptive and essentially non-source-indicating “& MORE,”
Ser. No. 77934568
8
in applicant’s mark does not suffice to distinguish the
meanings of the two marks in terms of their source-
indicating significance. Additionally, if purchasers
perceive the “2” in each mark to refer to the numeral
itself rather than “to,” the “2” would or reasonably could
be perceived by purchasers as having the same meaning in
both marks.
Moreover, even without presuming (as we must) that the
cited registered mark might display the numeral “2” in a
large and prominent manner like it is in applicant’s mark,
we find that the marks are similar when considered in their
entireties. As discussed below, the numeral “2” is highly
distinctive as applied to the goods and services involved
in this case, and its presence in both marks along with
other non-distinctive wording suffices to support a finding
that the marks are similar.
Again, the test under the first du Pont factor is not
whether the marks can be distinguished in a side-by-side
comparison. As the Board found in the case of In re Mucky
Duck Mustard Co. Inc., supra:

Considering the substantial similarities between
the marks in this case, it seems to us that a
purchaser who sees one mark and later encounters
the other is likely to think, if the two marks
are applied to the same or related goods and/or
services, that the second mark is the same mark
Ser. No. 77934568
9
he had seen earlier, or, if he realizes that
there are some differences in the marks, that the
second is simply a slightly varied version of the
first, with both serving to indicate origin in
the same source.

In re Mucky Duck, supra, 6 USPQ2d at 1468.
For all of the reasons discussed above, we find that
the two marks, when considered in their entireties in terms
of appearance, sound, connotation and commercial
impression, are similar. This finding under the first du
Pont factor supports a conclusion that a likelihood of
confusion exists.

Du Pont Factor 2: Similarity of the Goods and Services.
Under the second du Pont factor, we determine the
similarity or dissimilarity of the goods and/or services as
they are identified in the application and in the cited
registration, respectively. See In re E. I. du Pont de
Nemours & Co., supra, 177 USPQ at 567; see also In re
Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, >>>
(Fed. Cir. 2003).4
It is not necessary that the respective goods and/or
services be identical or even competitive in order to find

4 We note that applicant has never argued, either in its brief or
in response to the Trademark Examining Attorney’s various Office
actions, that the goods identified in its application are not
related to the services identified in the cited registration.
Ser. No. 77934568
10
that they are related for purposes of our likelihood of
confusion analysis. “Even if the goods and services in
question are not identical, the consuming public may
perceive them as related enough to cause confusion about
the source or origin of the goods and services.” Hewlett-
Packard Co. v. Packard Press Inc., 227 F.3d 1261, 62 USPQ2d
1001, 1004 (Fed. Cir. 2002).
In comparing the goods and/or services under the
second du Pont factor, it is the identifications of goods
and/or services in the application and the cited
registration that control, regardless of what the record
might reveal as to the actual nature of the identified
goods and/or services. See Packard Press Inc. v. Hewlett-
Packard Co., 227 F.3d 1352, 56 USPQ2d 1351, 1354 (Fed. Cir.
2000). If the goods are identified broadly in the
application and/or in the cited registration (as they are
in this case), we must presume that they encompass all
goods and/or services of the nature and type identified.
See Canadian Imperial Bank of Commerce, National
Association v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813, 1815 (Fed. Cir. 1987).
Applicant’s goods, as identified in the application,
are “house mark for a full line of clothing, footwear,
headwear.” The services identified in the cited
Ser. No. 77934568
11
registration are “retail store services featuring golf
equipment.”
Applicant’s “clothing” and “headwear” are identified
broadly in the application, and we must presume that they
include clothing and headwear used in connection with
playing golf. Pages from applicant’s website, attached to
the Trademark Examining Attorney’s August 29, 2011 final
Office action, in fact display applicant’s clothing and
headwear items alongside photographs of people holding golf
clubs, clearly suggesting that applicant’s goods may be
used in connection with playing golf. In its brief,
applicant has acknowledged that “Applicant’s goods
certainly can be worn while playing golf…” (Applicant’s
Brief at 8.)
The Trademark Examining Attorney also has attached to
her final Office action pages from the websites of several
third-party golf equipment retailers, which show that these
retailers sell clothing and headwear as well as and
together with golf equipment. These retailers include
AdamsGolf, Nike, TaylorMade, Callaway, Cleveland Golf and
Titleist.
It is settled that particular goods, and the service
of selling those particular goods at retail, are considered
to be related goods and services for purposes of the second
Ser. No. 77934568
12
du Pont factor. See In re Hyper Shoppes, 837 F.2d 463, 6
USPQ2d 1025 (Fed. Cir. 1988); see also Saks & Co. v. TFM
Industries Inc., 5 USPQ2d 1762 (TTAB 1987). In this case,
the evidence establishes that golf equipment retailers also
sell golf-related clothing like applicant’s.
For these reasons, we find that applicant’s goods as
identified in the application are related to the services
identified in the cited registration. This finding under
the second du Pont factor supports a conclusion that
confusion is likely.

Du Pont Factor 3: Trade Channels and Purchasers.
We also find that the trade channels and classes of
purchasers of the respective goods and services, which are
not limited or restricted in anyway in the respective
identifications of goods and services, are similar and
related. Consumers of the respective goods and services
would include golfers of all abilities. They would
encounter golf clothing like applicant’s when they
patronize stores selling golf equipment. This finding
under the third du Pont factor supports a conclusion that
confusion is likely.

Du Pont Factor 4: Conditions of Purchase.
Ser. No. 77934568
13
We find that the purchasers of the parties’ respective
goods and services would include ordinary consumers,
including golfers of all abilities, who would exercise only
a normal degree of care in making their purchasing
decisions. Additionally, the goods at issue, such as hats,
are generally not expensive goods which would be purchased
with care. These findings under the fourth du Pont factor
support a conclusion that confusion is likely.

Du Pont Factor 6: Similar Marks in Use on Similar Goods
and Services.

There is no evidence in the record which would
establish that the numeral “2” in the cited registered mark
is commonly used in trademarks or service marks for the
goods and services involved in this case. Absent such
evidence, we find that the “2” is highly distinctive as
applied to or used in connection with these goods and
services, and that the cited registered mark accordingly is
entitled to a broad scope of protection which encompasses
the similar mark applicant seeks to register. This finding
under the sixth du Pont factor supports a conclusion that
confusion is likely.

Likelihood of Confusion: Conclusion.
Ser. No. 77934568
14
For all of the reasons discussed above and based on
the evidence of record as it pertains to the relevant du
Pont factors, we conclude that a likelihood of confusion
exists. We therefore affirm the Trademark Examining
Attorney’s Section 2(d) refusal of registration.

DISCLAIMER REQUIREMENT.
Applicant has appealed the Trademark Examining
Attorney’s final requirement for a disclaimer of GOLF apart
from the mark as shown. A requirement under Trademark Act
Section 6 for a disclaimer of unregistrable matter in a
mark is appropriate when that matter is merely descriptive
of the goods at issue. See In re Stereotaxis Inc., 429
F.3d 1039, 77 USPQ2d 1087 (Fed. Cir. 2005). Cf. Trademark
Act Section 2(e)(1), 15 U.S.C. §1052(e)(1).
As noted above, the record is clear that applicant’s
goods are intended for use and may be used in connection
with playing golf. This clearly is a significant
characteristic or function of applicant’s goods. GOLF
therefore is deemed to be merely descriptive of the goods.
See In re Chamber of Commerce of the United States of
America, 675 F.3d 1297, 102 USPQ2d 1217 (Fed. Cir. 2012);
In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370
(Fed. Cir. 2004). Contrary to applicant’s argument, it is
Ser. No. 77934568
15
not dispositive that the goods might also be used in
connection with activities other than playing golf. A term
need not describe all of the features or characteristics of
the relevant goods in order to be found to be merely
descriptive of such goods. See In re Chamber of Commerce,
supra; In re Oppedahl & Larson LLP, supra.
In short, we find that GOLF is merely descriptive as
applied to applicant’s goods, and that the requirement for
a disclaimer of GOLF therefore is well-taken. We affirm
the final refusal based on applicant’s failure to submit
such disclaimer. See In re Stereotaxis Inc., supra; In re
Omaha Nat’l Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir.
1987).

DECISION:
The Section 2(d) refusal is affirmed.
The refusal based on applicant’s failure to submit a
disclaimer of GOLF is affirmed.