Pro Select, Inc.

Trademark Trial and Appeal Board

Mar 4, 2003

No. 76092271 (T.T.A.B. Mar. 4, 2003)

Mailed: March 4, 2003
Paper No. 10
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Pro Select, Inc.
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Serial No. 76/092,271
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Marshall A. Burmeister for Pro Select, Inc.
Dawn J. Feldman, Trademark Examining Attorney, Law Office
111 (Craig D. Taylor, Managing Attorney).
_______
Before Hanak, Hairston and Drost, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
Pro Select, Inc. has filed an application to register
TRIUMPH as a trademark for “golf clubs, golf club shafts,
golf club head covers, golf balls and golf tees.”1
The Trademark Examining Attorney refused registration
under Section 2(d) of the Trademark Act, 15 U.S.C.
§1052(d), on the ground that applicant’s mark, as used in
1 Serial No. 76/092,271, filed July 20, 2000, claiming first use
and first use in commerce as of October 1984.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76/092,271
2
connection with the identified goods, is likely to cause
confusion or mistake or to deceive consumers, in view of
the prior registration of the mark TRIUMPH for “softballs
and tennis rackets.”2
When the refusal was made final, applicant appealed.3
Both applicant and the Examining Attorney have filed
briefs, but an oral hearing was not requested. We affirm
the refusal to register.
Our determination under Section 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). In the
analysis of likelihood of confusion presented by this case,
two key considerations are the identity 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).
We begin with the marks. Applicant’s mark TRIUMPH is
identical in every respect to the mark TRIUMPH in the cited
registration. “This fact weighs heavily against
2 Registration No. 1,221,926 issued December 28, 1982; affidavits
under Section 8 and 15 accepted and acknowledged, respectively.
3 The Examining Attorney’s final refusal focused solely on
“tennis rackets” as the basis therefore. Thus, we have given no
further consideration to “softballs” in the cited registration.
Ser No. 76/092,271
3
applicant.” In re Martin’s Famous Pastry Shoppe, Inc., 748
F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984). The Board
has stated in the past that “[i]f the marks are the same or
almost so, it is only necessary that there be a viable
relationship between the goods or services in order to
support a likelihood of confusion.” In re Concordia
International Forwarding Corp., 222 USPQ 355, 356 (TTAB
1983).
Turning then to the goods, it is well settled that
goods or services need not be identical or even competitive
in order to support a finding of likelihood of confusion.
Rather, it is sufficient that the goods or services are
related in some manner or that the circumstances
surrounding their marketing are such that they would be
likely to be encountered by the same persons in situations
that would give rise, because of the marks used thereon, to
a mistaken belief that they originate from or are in some
way associated with the same producer or that there is an
association between the producers of the goods or services.
See In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991); and
In re International Telephone & Telephone Corp., 197 USPQ
910 (TTAB 1978).
Also, it has been repeatedly held that, when
evaluating the issue of likelihood of confusion in Board
Ser No. 76/092,271
4
proceedings regarding the registrability of marks, the
Board is constrained to compare the goods and/or services
as identified in the application with the goods and/or
services as identified in the registration. See Octocom
Systems Inc. v. Houston Computers Services, Inc., 918 F.2d
937, 16 USPQ2d 1783 (Fed. Cir. 1990) and Canadian Imperial
Bank of Commerce, National Association v. Wells Fargo Bank,
811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
In this case, we find that applicant’s golf equipment
and registrant’s tennis rackets are closely related goods.
The Trademark Examining Attorney has submitted printouts of
16 used-based third-party registrations which include in
their identifications of goods both golf equipment and
tennis rackets. Although these registrations are not
evidence that the marks therein are in commercial use, or
that the public is familiar with them, they nevertheless
are probative evidence to the extent that they suggest that
the goods identified therein are of a type which may
emanate from a single source under a single mark. See In
re Albert Trostel & Sons Co., 29 USPQ2d 1783; and In re
Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467 (TTAB 1988).
Moreover, the identifications of goods in the involved
application and cited registration are not restricted as to
channels of trade and/or purchasers. Because neither
Ser No. 76/092,271
5
party’s identification restricts the trade channels or
purchasers, the Board must presume that applicant’s and
registrant’s respective goods are marketed in all normal
trade channels to all normal classes of purchasers for such
goods. See In re Elbaum, 211 USPQ 639 (TTAB 1981). These
trade channels would include not only “pro” shops, but also
sporting goods retailers and mass merchandisers. The
purchasers would include not only professional golfers and
tennis players, but also novice and amateur golfers and
tennis players. Although we recognize that professional
golfers and tennis players are discriminating purchasers,
we are not convinced that all novice and amateur golfers
and tennis players exercise a great degree of care in
purchasing golf equipment and tennis rackets. Further,
although applicant contends that the respective goods are
bought by different purchasers, there is no evidence that
golfers and tennis players are distinct classes of
purchasers. On the contrary, it is reasonable to assume
that there are persons who play both golf and tennis, and
that these persons would purchase both golf equipment and
tennis rackets.
In addition, applicant contends that the term
“triumph” is suggestive of sporting goods and therefore the
cited registration is entitled to only a narrow scope of
Ser No. 76/092,271
6
protection. Given the commonly understood meaning of
“triumph,”4 we are mindful of the suggestive significance of
the term when used in connection with sporting goods.
Nevertheless, it is well settled that suggestive marks are
entitled to protection against the registration by a
subsequent user of the same mark for related goods. In re
Textron Inc., 180 USPQ 341 (TTAB 1973). Further, in the
present case, the same suggestion is conveyed by each mark.
Where as here, the identical mark is used on closely
related goods, the relevant purchasers are likely to be
confused as to the source of the goods. Purchasers may
believe that registrant is now marketing golf equipment.
Finally, applicant has submitted the declaration of
its vice-president Matthew Adams who states, in relevant
part, that:
I have closely observed the sporting goods
market for over 17 years, and I have an up
to date knowledge of this market. I regularly
attend sporting goods exhibitions, shows and
conventions, but I cannot recall seeing a
TRIUMPH softball or tennis racket. Most
exhibitions, shows and conventions that I
attend are limited to golf equipment, and
those that exhibit golf equipment and other
types of sports equipment generally locate
the other sports equipment, including
softballs and tennis equipment, in different
areas from golf equipment. I also read
4 We take judicial notice of the following definition submitted
with applicant’s appeal brief: “triumph: to be victorious or
successful; win.” The American Heritage Dictionary of the
English Language (Third edition 1996).
Ser No. 76/092,271
7
golfing magazines and industry literature
relating to golf. I do not recall seeing
an advertisement or mention of a TRIUMPH
softball or tennis racket in such
literature.
During the past 17 years, neither I nor to
my knowledge any one associated with
Triumph Golf Company, R&M Golf Company or
Pro Select, Inc. have become aware of any
confusion between TRIUMPH golf clubs, or
other golfing equipment, and TRIUMPH
tennis rackets or TRIUMPH softballs.
First, if applicant believes that registrant is not
using the TRIUMPH mark, it was incumbent upon applicant to
file a petition to cancel the cited registration on the
ground of abandonment, if appropriate. Otherwise, the fact
that applicant’s vice-president has not encountered
registrant’s products at trade shows or by way of
advertisements is not particularly probative of whether
there is a likelihood of confusion among consumers in the
marketplace.
Second, while the absence of any instances of actual
confusion over a significant period of time is indeed a
du Pont factor which is indicative of no likelihood of
confusion, it is a meaningful factor only where the record
demonstrates appreciable and continuous use by the
applicant of its mark in the same markets as those served
by registrant under its mark. See, e.g., Gillette Canada
Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992).
Ser No. 76/092,271
8
However, in this case there is no evidence of applicant’s
and registrant’s geographic areas of sales, or the amount
of the sales under the respective marks. Further, we have
not had an opportunity to hear from the registrant in this
ex parte proceeding as to what have been its experiences
regarding confusion.
In view of the foregoing, we conclude that purchasers
and prospective customers, familiar with the mark TRIUMPH
for tennis rackets, would be likely to believe, upon
encountering the identical mark TRIUMPH for golf equipment,
that such closely related goods emanate from or are
associated with the same source. See A.G. Spalding & Bros.
V. Bancroft Racket Company, 149 USPQ 391 (TTAB 1966) [Use
of the identical mark EXECUTIVE for tennis and squash
rackets and golf clubs and golf balls is likely to cause
confusion.].
Decision: The refusal to register under Section 2(d)
is affirmed.