Taylor Made Golf Co., Inc.

Trademark Trial and Appeal Board

Mar 25, 2009

No. 78423412 (T.T.A.B. Mar. 25, 2009)

Mailed: March 25, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Taylor Made Golf Co., Inc.
________

Serial No. 78423412
Filed: May 22, 2004
_______

Tim Epp and Deborah Gubernick, Sheppard, Mullin, Richter and
Hampton LLP, for Taylor Made Golf Co., Inc.

Jean Im, Trademark Examining Attorney, Law Office 101,
Ronald R. Sussman, Managing Attorney.
_______

Before Quinn, Mermelstein, and Bergsman, Administrative
Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:

Applicant seeks registration of the following mark

for “hats and caps” in International Class 25, and “golf
equipment, namely golf clubs, golf grips, putters, shafts,
golf balls, golf gloves, golf club covers and golf bags,” in
International Class 28.1

1 Alleging a bona fide intent to use the mark in commerce. During
the course of this appeal, applicant filed an Amendment to Allege
Use. The examining attorney requested and was granted a remand
to examine the amendment. Nonetheless, applicant ultimately
withdrew the amendment and this application remains in “intent-
THIS DECISION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78423412
2

Registration has been finally refused pursuant to
Trademark Act § 2(d), 15 U.S.C. § 1052(d), on the ground
that applicant’s mark so resembles the marks in the two
registrations set out below (owned by different entities) as
to be likely, if used on the identified goods, to cause
confusion, to cause mistake, or to deceive. Trademark Act
§ 2(d); 15 U.S.C. § 1052(d).
We reverse.
Reg. No. Mark Goods Use & Use In
Commerce
Issue Date
1001596 TP2 Golf equipment, including golf clubs, golf balls and golf gloves.
International Class 28
Nov. 1, 1965 Jan. 14, 1975
2778264 TP-3503 Golf equipment namely golf clubs and woods. International Class 28 Feb. 26, 2001 Oct. 28, 2003

I. Preliminary Matter
Applicant attached five exhibits (A-E) to its brief
filed August 7, 2006. The examining attorney objected to
consideration of this evidence in her brief. Ex. Att. Br.
at 1-2.
The record in the application should be complete
prior to the filing of an appeal. The Trademark
Trial and Appeal Board will ordinarily not

to-use” status. Following withdrawal of the AAU and resumption
of this appeal, applicant filed a supplemental brief. Because
applicant’s supplemental brief merely references arguments made
in its original brief (and was accordingly unnecessary),
references in this decision are to applicant’s original brief.
2 Registered to Pine Enterprises, a Florida Corporation. Post-
registration filings under Trademark Act §§ 8, 9, and 15,
accepted, granted, and acknowledged.
3 Registered to Dunlop Slazenger Group Americas Inc., a Delaware
Corporation.

Serial No. 78423412
3
consider additional evidence filed with the Board
by the appellant or by the examiner after the
appeal is filed. After an appeal is filed, if the
appellant or the examiner desires to introduce
additional evidence, the appellant or the examiner
may request the Board to suspend the appeal and to
remand the application for further examination.

Trademark Rule 2.142(d). Applicant did not request a remand
of the file for the purpose of submitting new evidence, and
we accordingly find the attachments to applicant’s brief to
be untimely. Accordingly, the evidence attached to
applicant’s brief, and arguments in applicant’s brief based
upon it, have not been considered.4
II. Applicable Law
Our determination under Trademark Act § 2(d) is based
on an analysis of all of the probative facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue. See In re E.I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm
Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201

4 As we recently noted in an inter partes proceeding, “[e]xhibits
or attachments to briefs are of little or no use in a Board
proceeding. ... [T]he Board will usually ignore them, because
they comprise either untimely evidence or unnecessary copies of
timely evidence.” Life Zone Inc. v. Middleman Group Inc., 87
USPQ2d 1953, 1955 (TTAB 2008). The statement is just as valid in
an ex parte proceeding.
Serial No. 78423412
4
(Fed. Cir. 2003); In re Dixie Rests. Inc., 105 F.3d 1405,
41 USPQ2d 1531 (Fed. Cir. 1997).
In considering the evidence of record on these factors,
we keep in mind that “[t]he 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.” Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209
(TTAB 1999).
II. Discussion
A. The Similarity Or Dissimilarity And Nature Of The
Goods as Described in the Application.

The goods in the application on appeal are “hats and
caps” in International Class 25, and “golf equipment, namely
golf clubs, golf grips, putters, shafts, golf balls, golf
gloves, golf club covers and golf bags,” in International
Class 28. The cited registrations are registered for “golf
equipment, including golf clubs, golf balls and golf gloves”
(‘596 Registration), and “golf equipment namely golf clubs
and woods” (‘264 Registration). Applicant’s golf equipment
is either identical or closely related to the goods set out
in the cited registrations.
We reject applicant’s suggestion that its Class 28
goods differ from those of the cited registrants. On the
Serial No. 78423412
5
contrary, where goods are identified identically, we must
consider them to be identical, regardless of any actual
differences in the goods as marketed.
The authority is legion that the question of
registrability of an applicant's mark must be
decided on the basis of the identification of
goods set forth in the application regardless of
what the record may reveal as to the particular
nature of an applicant's goods, the particular
channels of trade or the class of purchasers to
which sales of the goods are directed.

Octocom Sys. Inc. v. Houston Computers Svcs. Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
Applicant does not address in its brief the
relationship of its International Class 25 goods to the golf
equipment identified in the cited registrations. On the
other hand, the Examining Attorney argues that applicant’s
hats and caps include hats and caps which are golf-related,
and would be purchased by the same customers and in the same
channels of trade as the registrants’ golf equipment. Ex.
Att. Br. at 7-8. To the extent applicant contests this
point, we agree with the examining attorney.
The fact that applicant’s goods are identical or
closely related to the goods of the cited registrants
supports the examining attorney’s refusal to register.
B. The Similarity Or Dissimilarity of the Marks.
In a likelihood of confusion analysis, we compare the
marks for similarities and dissimilarities in appearance,
Serial No. 78423412
6
sound, connotation and commercial impression. Palm Bay,
73 USPQ2d at 1692. We begin our comparison with the
observation that “[w]hen marks would appear on virtually
identical goods or services, the degree of similarity
necessary to support a conclusion of likely confusion
declines.” Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir.
1992). As noted above, applicant’s goods are in part
identical to those identified in the cited registration and
are otherwise closely related.
Applicant’s mark consists of a crest featuring two
crossed flags (one checkered, one solid with the letter “T”
in a circle). Between the flags is a device which appears
to be either the letter “P,” or the letters “T” and “P,”
superimposed upon each other such that they share the same
vertical stroke:

It is this combined T and P character (or possibly just
P or T) which lies at the root of the examining attorney’s
refusal to register because of its asserted similarity with
the marks in the prior registrations, TP (‘596 Registration)
Serial No. 78423412
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and TP-350 (‘264 Registration). In our opinion, the marks
are not substantially similar.
We consider the marks at issue in their entireties.
Nonetheless, it is entirely appropriate to accord greater
importance to the more distinctive elements in the marks.
As the Court of Appeals for the Federal Circuit observed,
“in articulating reasons for reaching a conclusion on the
issue of confusion, there is nothing improper in stating
that, for rational reasons, more or less weight has been
given to a particular feature of a mark, provided the
ultimate conclusion rests on consideration of the marks in
their entireties. Indeed, this type of analysis appears to
be unavoidable.” In re Nat’l Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985).
When considering a word and design mark, it has often
been found that literal elements of the mark are dominant
because they will be used to call for or refer to the goods.
See CBS Inc. v. Morrow, 708 F.2d 1579, 1581-82 (Fed. Cir.
1983); In re Dakin’s Miniatures Inc., 59 UPSQ2d 1593, 1596
(TTAB 2001); In re Appetito Provisions Co., Inc., 3 USPQ2d
1553, 1554 (TTAB 1987). But as with many “rules” of
trademark law, this principle is not a per se rule, because
the ultimate determination must be made by comparing the
Serial No. 78423412
8
marks as a whole, and not by considering elements of the
marks in the abstract.
In this case, we find that the “TP” (or “P” or “T”)
element of applicant’s mark is not a dominant element of the
overall design. First, it is a relatively small portion of
the mark as a whole, and is considerably smaller than the
crossed flags and shield, which visually dominate the mark.
Second, it is not immediately clear what the superimposed
letters are. The combined letters “P” and “T” are not a
character in standard English. A prospective consumer might
not immediately recognize them as letters at all, or might
consider them to be the letters “PT” or “P,” or “T,” just as
easily as “TP.” Finally, and particularly in light of the
uncertainty over the perception of the letter device, it is
not at all clear that this element of the mark would be used
to refer to or call for the goods as “TP” brand golf
equipment and clothing.
We conclude that the letter device is not the dominant
portion of applicant’s mark as a whole, and to the extent
consumers focus on it apart from the entire mark, they may
not view it as identical or even similar to the letters “TP”
used in the cited registrants’ marks. On the other hand,
the differences between the marks are considerable,
applicant’s mark including the shield and design elements,
Serial No. 78423412
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and not including the “-350” element used in the ‘264
Registration.
Applicant argues that “TP” (at least as used in the
cited registrations) is a weak mark in the context of golf
equipment, relying primarily on registrations which are not
in the record (and which in any event are different than the
marks at issue here). It does not escape our notice,
however, that the cited marks (owned by different entities)
are more similar to each other than either is to applicant’s
mark, and for identical goods. While this is not itself a
sufficient basis to conclude that “TP” is weak, it is a
factor we have considered.
Considered in their entireties, we find that
applicant’s mark is not sufficiently similar in appearance,
meaning, sound and commercial impression to the marks in the
cited registrations as to be likely to cause confusion.
III. Conclusion
After careful consideration of the record evidence and
argument, we conclude that because of the differences in the
marks at issue, confusion is not likely to result from
applicant’s use of its mark on the identified goods.
Decision: The refusal to register under Trademark Act
§ 2(d) is accordingly reversed.