Pursell Technologies, Inc.

Trademark Trial and Appeal Board

Mar 19, 2004

No. 75916274 (T.T.A.B. Mar. 19, 2004)

Hearing: Mailed: March 19, 2004
January 27, 2004 Paper No. 22
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Pursell Technologies, Inc.
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Serial No. 75916274
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Theodore A. Breiner of Breiner & Breiner, L.L.C. for
Pursell Technologies, Inc.
Yong Oh (Richard) Kim, Trademark Examining Attorney, Law
Office 115 (Tomas Vlcek, Managing Attorney).
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Before Simms, Cissel and Hairston, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
On February 10, 2000 Pursell Technologies, Inc. filed
an intent-to-use application to register the mark FARMLINKS
for services identified as “golf club services.”
The Trademark Examining Attorney refused registration
of applicant’s mark under Section 2(d) of the Trademark
Act, 15 U.S.C. §1052(d), in view of the mark THE FARM which
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 75916274
2
is previously registered for “recreational services, namely
golf and country club services.”1
Applicant argued against the refusal to register and
sought to amend the recitation of services to “golf club
services for the public and to showcase fertilizer
products.” The Examining Attorney was not persuaded by
applicant’s arguments with respect to the refusal to
register under Section 2(d). In addition, the Examining
Attorney held that the proposed amendment to the recitation
of services was unacceptable because it is beyond the scope
of the original recitation of services.
When the Examining Attorney made final the refusal to
register under Section 2(d) and further declined to accept
applicant’s proposed amendment to the recitation of
services, applicant appealed. Briefs have been filed and
an oral hearing was held.
Considering first applicant’s proposed amendment to
the recitation of services, Trademark Rule 2.71(a) states
that “[t]he applicant may amend the application to
1 Registration No. 1,547,559 issued July 11, 1989; Section 8
affidavit accepted; Section 15 affidavit received. The
registration also covers “golf bags and golf balls.”
Registration was not refused on the basis of these goods.
Ser No. 75916274
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clarify or limit, but not broaden, the identification of
goods and/or services.” Applicant argues that its proposed
amendment is “clearly a narrowing amendment.” (Reply
brief, p. 3). If applicant’s proposed amendment were
simply “golf club services for the public,” this would be
acceptable because it clarifies that the services are for
the public and that they are not in the nature of a private
club. However, we disagree with applicant that the
addition of the language “to showcase fertilizer products”
narrows the recitation of services. On the contrary, such
language clearly broadens the scope of the original
recitation of services because “to showcase fertilizer
products” is an entirely different activity from golf club
services.
In view thereof, we agree with the Examining Attorney
that applicant’s proposed amendment to the recitation of
services is unacceptable.
We turn next to the issue of likelihood of confusion.
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. In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
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similarities between the marks and the similarities between
the goods and/or services. Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
Considering first the services of applicant and
registrant, applicant argues that the services are
different in nature because applicant’s services will be
in the nature of a public golf course, whereas registrant’s
services are in the nature of a golf and country club
requiring private memberships. The problem with
applicant’s argument is that registrant’s services are not
limited in the way applicant suggests. We must consider
registrant’s services as they are described in the
registration and we cannot read limitations into those
services. See Octocom Systems Inc. v. Houston Computer
Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir.
1987); Canadian Imperial Bank of Commerce v. Wells Fargo
Bank, N.A., 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987);
and In re Elbaum, 211 USPQ 639 (TTAB 1981). When we
consider registrant’s services as they are described in the
registration, we find that they are broadly described such
that they would include a public golf course. In any
event, there is no evidence of record to establish that a
golf course, which is part of a country club, is
Ser No. 75916274
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necessarily private, i.e., a membership is required and it
is not open to the public. In short, we find that
applicant’s and registrant’s services are legally
identical, and that they would be offered to the same class
of purchasers, namely persons who play golf.
We turn next to a consideration of the marks, keeping
in mind the well-established principle that when marks
would appear on 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 USPQ 1698, 1700
(Fed. Cir. 1992). Also, to determine whether applicant’s
mark and the registered mark, when considered in their
entireties, are similar in sound, appearance, connotation
and commercial impression, the test is not whether the
marks can be distinguished when subjected to a side-by-side
comparison. Rather, the question is whether the marks are
sufficiently similar in terms of their overall commercial
impressions that confusion as to the source of the goods or
services offered under the respective marks is likely to
result. The focus is on the recollection of the average
purchaser, who normally retains a general rather than a
specific impression of trademarks. Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975). Furthermore,
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although the marks at issue must be considered in their
entireties, it is well settled that one feature of a mark
may be more significant than another feature, and it is not
improper to give weight to the dominant feature in
determining the commercial impression created by the mark.
In re National Data Corp., 753 F.2d 1056, 224 USPQ 749
(Fed. Cir. 1985). For instance, according to the court,
“that a particular feature is descriptive . . . with
respect to the involved goods or services is one commonly
accepted rationale for giving less weight to a portion of a
mark . . .” Id.
In registrant’s mark, THE FARM, the word FARM is
clearly the dominant feature because the word THE has no
source-indicating significance. In applicant’s mark,
FARMLINKS, the word FARM is also the dominant element. The
Examining Attorney has made of record an excerpt from the
American Heritage Dictionary of the English Language (3rd
ed. 1992) wherein “links” is defined as: 1. Sports. A
golf course. In view of this definition, the term “links”
is highly descriptive, if not generic, of applicant’s
services. Considering the marks THE FARM and FARMLINKS in
their entireties, we find that they are substantially
similar in their overall commercial impressions.
Purchasers may well believe that, due to the shared term
Ser No. 75916274
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FARM, the golf club services offered by applicant under the
mark FARMLINKS represent a new golf course from the same
source as THE FARM golf club services.
Applicant contends that marks containing the word FARM
are weak marks and thus are entitled to a limited scope of
protection. Applicant points to Registration No. 2,466,349
for the mark THE OLDE FARM for “recreational services,
namely golf club services.” It is well settled that third-
party registrations, by themselves, are entitled to little
weight on the question of likelihood of confusion because
they are not evidence of what happens in the marketplace or
that the public is familiar with the use of those marks.
Third-party registrations may not be used to justify the
registration of another confusingly similar mark. In this
case, this single third-party registration hardly
demonstrates that marks containing the word FARM are weak.
Also, a review of the evidence submitted by applicant in
connection with this registration shows that the owner of
the registration obtained a consent to register from the
owner of the cited registration herein.
Applicant also argues that golfers are knowledgeable
about golf club services and are selective and careful in
their purchasing decisions. However, there is no evidence
to support this conclusion. In any event, we are not
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persuaded that golfers are so knowledgeable or careful that
they would be immune to source confusion arising from the
use of these confusingly similar marks in connection with
identical services.
In addition, applicant points to the lack of evidence
of any actual confusion. This is hardly surprising since
applicant’s application is an intent-to-use application and
there is no indication that applicant has begun use of its
mark other than in promotional materials. We note that
applicant stated that its golf course was scheduled to open
in 2003. While the absence of any instances of actual
confusion over a significant period of time is indeed a du
Pont factor, 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. In particular, there must be
evidence showing that there has been an opportunity for
incidents of actual confusion to occur.
Finally, applicant’s contention that the registered
mark is not famous does not alter our conclusion that
confusion is likely. It would indeed be unlikely that
evidence establishing the fame of the registrant’s mark
would be available to an Examining Attorney for submission
in support of the refusal to register. Suffice it to say
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that such evidence is not necessary in order to find
confusion likely.
In view of the substantial similarity in the marks,
the identity of the services and class of purchasers, we
find that there is a likelihood that purchasers would be
confused when applicant uses the mark FARMLINKS for golf
club services in view of the previously registered mark THE
FARM for recreational services, namely golf and country
club services.
Decision: The Examining Attorney’s refusal to
register under Section 2(d) is affirmed; and the refusal to
accept applicant’s proposed amendment to the recitation of
services is affirmed.