Jean M. Boudreau

Trademark Trial and Appeal Board

Feb 28, 2002

No. 75503725 (T.T.A.B. Feb. 28, 2002)

2/28/02
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Jean M. Boudreau
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Serial No. 75/503,725
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George E. Kersey for Jean M. Boudreau.

J. Brett Golden, Trademark Examining Attorney, Law Office
102 (Thomas Shaw, Managing Attorney).
_________________

Before Hanak, Quinn and Bottorff, Administrative
Trademark Judges.

Opinion by Hanak, Administrative Trademark Judge:

Jean M. Boudreau (applicant) seeks to register
LADYSGOLF.COM in typed drawing form for “on-line retail
store services, computerized on-line ordering services
featuring golf accessories, namely golf bags, golf clubs,
golf balls, golf tees, golf flags, golf shoes, golf
skirts and golf shirts.” The intent-to-use application
was filed on June 18, 1998.
The Examining Attorney has refused registration on
two grounds. First, citing Section 2(d) of the Trademark
Act, the Examining Attorney contends that applicant’s
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.

mark, when used in connection with applicant’s services,
is likely to
Ser. No. 75/503,725

cause confusion with the mark LADY GOLF previously
registered in the form shown below for “women’s golf
clothing; namely, shirts, pants, skirts and shoes” (Class
25); “women’s golf clubs, women’s golf gloves, golf bags,
golf balls, and golf tees” (Class 28); and “retail golf
store” (Class 42). Registration No. 1,941,535 issued
December 12, 1995.

Second, citing Section 2(e)(1) of the Trademark Act, the
Examining Attorney contends that applicant’s mark is
merely descriptive of applicant’s services.

When the refusal to register was made final,
applicant
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appealed to this Board. Applicant and the Examining
Attorney filed briefs. Applicant did not request a
hearing.
We will consider first the refusal 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 or services. Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976)
(“The fundamental inquiry mandated by Section 2(d) goes
to the cumulative effect of differences in the essential
characteristics of the goods [or services] and
differences in the marks.”).
Considering first applicant’s services and
registrant’s goods and services, we find that they are
very closely related. The cited registration covers

retail golf store services. Applicant seeks to register
its mark for on-line retail store services featuring a
wide array of items that would be sold in golf stores,
such as golf bags, golf clubs, golf balls, golf tees,
golf shoes, golf shirts and golf skirts. Obviously, in
recent years it has become
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Ser. No. 75/503,725

a common practice for retail stores to offer their
services “on-line,” that is, where a customer can order
goods from the store using his or her personal computer
without actually having to visit the store. Indeed,
applicant itself has done precisely this. Moreover, the
registered mark also covers golf related goods, such as
golf clothing, golf clubs, and other golf accessories.
These are the identical goods which applicant proposes to
offer through its on-line retail store. Hence,
applicant’s on-line retail store services featuring
various golf items and that portion of the cited
registration featuring the identical golf items causes
any differences in applicant’s services and registrant’s
goods “to be of little or no legal significance.” In re
Hyper Shoppes, 837 F.2d 463, 6 USPQ2d 1025, 1026 (Fed.

Cir. 1988).
Considering next the marks, we note at the outset
that when applicant’s services and registrant’s services
and goods are extremely similar 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. Century Life of America, 970 F.2d
874, 23
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USPQ2d 1698, 1700 (Fed. Cir. 1992). We find that the
first portion of applicant’s mark (LADYSGOLF) is
virtually identical to the registered mark in terms of
visual appearance, pronunciation and connotation. The
presence of the letter S in applicant’s mark does very
little to distinguish applicant’s mark from the
registered mark in terms of visual appearance,
pronunciation or connotation. Likewise, the fact that
the letter O in the registered mark looks like a golf
ball on a tee does very little to distinguish the two
marks because the relevant goods and services all involve
golf equipment and golf apparel.

The only real point of difference between the two
marks is that applicant’s mark ends with “.COM.”
However, there is no serious dispute that the designation
“.COM” (pronounced “dot com”) refers to commerce on the
Internet. Thus, in relation to applicant’s on-line
retail store services featuring various golf items, the
“.COM” portion of applicant’s mark is highly descriptive
in that it readily informs consumers that applicant’s on-
line retail store services featuring a wide array of golf
items are,
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indeed, available on-line. A consumer familiar with
registrant’s mark LADY GOLF and design for retail golf
store services and for a wide array of golf items, upon
seeing applicant’s mark LADYSGOLF.COM, would easily
assume that registrant has now expanded its retail golf
store services to offer said services on-line.
Accordingly, we find that the contemporaneous use of
applicant’s mark for its on-line retail store services
featuring a wide array of golf items is confusingly
similar to the registered mark LADY GOLF and design for

conventional retail golf store services, and for a wide
array of golf items. The refusal to register pursuant to
Section 2(d) of the Trademark Act is affirmed.
We turn now to a consideration of whether
applicant’s mark is merely descriptive of its services.
A mark is merely descriptive pursuant to Section 2(e)(1)
of the Trademark Act if it immediately conveys
information about a significant quality or characteristic
of the relevant goods or services. In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
At pages 3 and 4 of her reply brief, applicant
appears
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to argue that the word LADYSGOLF would bring to mind “the
game of golf as played by ladies or women,” and would not
bring to mind applicant’s services, namely, on-line
retail store services, computerized on-line ordering
services featuring golf accessories. We do not take
issue with applicant that taken by itself the word
LADYSGOLF would bring to mind golf played by ladies.
However, the problem with applicant’s reasoning is that

the mere descriptiveness of a mark is not judged in the
abstract, but rather is judged in relation to the goods
or services for which applicant seeks registration. In re
Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218
(CCPA 1978). When used in connection with on-line retail
store services featuring golf accessories, applicant’s
mark LADYSGOLF.COM would immediately inform consumers
that applicant’s on-line retail store services feature
golf accessories for ladies, and that applicant’s on-line
retail store services can indeed be accessed by a
computer. In this regard, we have already discussed the
highly descriptive nature of the “.COM” portion of
applicant’s mark. While not absolutely
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dispositive, we also note in passing that the owner of
the
registration for the cited mark LADY GOLF and design
disclaimed the exclusive right to use “lady golf” apart
from the mark in its entirety, thereby indicating that
the term “lady golf” was merely descriptive of women’s

golf clothing, women’s golf clubs and retail golf store
services.
Decision: The refusal to register is affirmed
pursuant to both Section 2(d) and Section 2(e)(1) of the
Trademark Act.

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