Centex/Taylor, LLC

Trademark Trial and Appeal Board

Dec 16, 2005

No. 78975852 (T.T.A.B. Dec. 16, 2005)

Mailed: December 16, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In Centex/Taylor, LLC
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Serial No. 78975852
_______

Mitchell A. Tuchman of Womble Carlyle Sandridge & Rice,
PLLC for Centex/Taylor, LLC

Charles L. Jenkins, Jr., Trademark Examining Attorney, Law
Office 105 (Thomas G. Howell, Managing Attorney).
_______

Before Quinn, Bucher and Kuhlke, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Centex/Taylor, LLC, applicant, has filed an
application to register the mark MAN O’WAR (typeset word)
for “golf and golf course related accessories, namely, golf
clubs, golf club shafts, golf club inserts, golf club
beads, golf irons, golf putters, golf putter covers, grip
tapes for golf clubs, hand grips for golf clubs, head
covers for golf clubs, golf balls, golf ball sleeves, golf
ball retrievers, golf ball markers, golf bags, golf bag
tags, golf bag pegs, golf bag covers, golf towel clips for
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 78975852
2
attachment to golf bags, golf accessory pouches, golf
gloves, golf flags, golf tee markers, modular foam
prefabricated putting surfaces, divot repair tools and non-
motorized golf carts” (hereinafter “golf items”) in
International Class 28.1
Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when used on its identified goods, so
resembles the registered mark shown below

for “t-shirts and hats” in International Class 25,2 as to be
likely to cause confusion, mistake or deception.
We note that the first Office action only discussed
the possible relationship of applicant’s International
Class 25 goods that were later divided out from this child

1 Application Serial No. 78975852, filed May 8, 2003, alleging a
bona fide intent to use the mark in commerce. This is a child
application divided out from application Serial No. 78247087.
The parent application was expressly abandoned on June 6, 2005.

2 Registration No. 2361781, issued June 27, 2000 to Joey De Maio.
The cited registration also includes the following goods and
services: (1) a series of pre-recorded audio and video cassettes
featuring music and lyrics, and a series of pre-recorded compact
discs featuring music and lyrics, in International Class 9; (2)
ornamental lapel pins and collectible ornamental pins, in
International Class 14; and (3) entertainment services, namely,
live performances rendered by a vocal and/or instrumental group,
in International Class 41.
Ser No. 78975852
3
application. In the final Office action and response to
applicant’s request for reconsideration, the examining
attorney maintained the Section 2(d) refusal and included
argument and evidence to support his position that the
International Class 28 golfing items are related to
registrant’s t-shirts and hats.
When the refusal was made final, applicant appealed.
The appeal is fully briefed. No oral hearing was
requested. We affirm the refusal to register.
As a preliminary matter, the examining attorney’s
objection to the evidence attached to applicant’s brief
which was not introduced into the record during the
prosecution of the application is sustained and those
exhibits have been given no consideration. Trademark Rule
2.142(d); TBMP §1203.02(e) (2d ed. rev. 2004).
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,
two key considerations are the similarities between the
marks and the similarities between the goods and/or
Ser No. 78975852
4
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
We turn first to a consideration of the goods
identified in the application and the cited registration.
It is well settled that goods need not be similar or
competitive in nature to support a finding of likelihood of
confusion. The question is not whether purchasers can
differentiate the goods themselves, but rather whether
purchasers are likely to confuse the source of the goods.
See Helene Curtis Industries Inc. v. Suave Shoe Corp., 13
USPQ2d 1618 (TTAB 1989). Further, we must consider the
cited registrants’ goods as they are described in the
registrations and we cannot read limitations into those
goods. See Hewlett-Packard Co. v. Packard Press Inc., 281
F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); and Octocom
Systems Inc. v. Houston Computer Services Inc., 918 F.2d
937, 16 USPQ2d 1783 (Fed. Cir. 1987). If the cited
registration describes goods or services broadly, and there
is no limitation as to the nature, type, channels of trade
or class of purchasers, it is presumed that the
registration encompasses all goods or services of the type
described, that they move in all channels of trade normal
Ser No. 78975852
5
for these goods, and that they are available to all classes
of purchasers for the described goods. See In re Linkvest
S.A., 24 USPQ2d 1716 (TTAB 1992).
The examining attorney has presented evidence in
support of his position that applicant’s golf items and
registrant’s t-shirts and hats are related through third-
party registrations showing that entities have registered a
single mark for both golf items and t-shirts. Third-party
registrations which individually cover a number of
different items, and which are based on use in commerce,
serve to suggest that the listed goods are of a type which
may emanate from a single source. In re Albert Trostel &
Sons Co., 29 USPQ2d 1783 (TTAB 1993). Approximately half
of these third-party registrations have little probative
value inasmuch as, in addition to t-shirts and golf items,
they include a wide variety of goods, from, for example,
stationary to underwear to a hand-held unit for playing
video games. See, e.g., Reg. No. 2497192 logo design for
Baltimore Ravens. These registrations are for a broad
range of goods, many of which are not related to another,
and, therefore, no conclusion can be drawn as to the
relationship between the goods in issue in this case.
However, nine of the remaining third-party registrations
clearly show t-shirts and the type of applicant’s various
Ser No. 78975852
6
golf items registered under a single mark and are probative
to the extent that they serve to suggest that applicant’s
golf items and registrant’s t-shirts are goods which may
emanate from a single source. See, e.g., Reg. No. 2669829
for THE GOLF AMBASSADORS for, inter alia, t-shirts and golf
clubs; Reg. No. 2677642 for HAMILTON FARM GOLF CLUB (and
design) for, inter alia, t-shirts and golf clubs; Reg. No.
2621292 for a design of a person swinging a golf club for,
inter alia, t-shirts and golf clubs; and Reg. No. 2131169
for SUBPAR for, inter alia, t-shirts and golf clubs.
Applicant, in fact, “concedes that golf clubs and t-
shirts bearing identical marks are frequently offered by
the same registrant, e.g., golf courses with pro shops” and
that the “‘prior registrations in which golf clubs and t-
shirts are offered by the same entities’ made of record by
the Examining Attorney, ‘serve to suggest that the goods
and/or services listed therein are of the kinds which may
emanate from a single source.’” Brief p. 8. Applicant
argues, however, that the third-party registrations are not
evidence of likelihood of confusion between “this
Applicant’s goods and this Registrant’s goods.” The
primary problem with applicant’s arguments along this line
of reasoning and regarding “relevant purchasers,” is that
applicant impermissibly reads a limitation into the
Ser No. 78975852
7
registration. The identification of goods in the
registration does not limit the channels of trade in any
way, therefore, these t-shirts could be sold anywhere,
including golf pro shops. There is simply no evidence to
support applicant’s proposition that the registrant’s goods
exclude “golf enthusiasts” as the relevant consumer base.
In addition, applicant’s arguments concerning use in
the marketplace of registrant’s mark, are not persuasive.
An applicant may not restrict the scope of the goods
covered in the registrant’s registration by extrinsic
evidence, or in this case, a mere unsupported statement.
See In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB
1986). Thus, applicant’s unsupported statements do not
serve to rebut the Examining Attorney’s prima facie case
that these goods are related.
In view of the above, the du Pont factor of the
similarity of the goods weighs in favor of a finding of
likelihood of confusion. In addition, because the
identification of goods in the registration is not limited
to any specific channels of trade, we presume an overlap in
trade channels and that the goods would be offered to all
normal classes of purchasers.
We turn now to the first du Pont factor, i.e., whether
applicant’s mark and opposer's marks are similar or
Ser No. 78975852
8
dissimilar when compared in their entireties in terms of
appearance, sound, connotation and commercial impression.
We make this determination in accordance with the following
principles. 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 terms of their overall
commercial impression that confusion as to the source of
the goods 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. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975). Furthermore,
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, and it is not
improper to give more weight to this dominant feature in
determining the commercial impression created by the mark.
See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749
(Fed. Cir. 1985). Finally, the meaning or connotation of a
mark must be determined in relationship to the named goods
or services. See In re Sears, Roebuck and Co., supra; In
re British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984); In re
Sydel Lingerie Co., Inc., supra.
Ser No. 78975852
9
While the appearance of applicant’s mark is slightly
different from the mark in the registration due to the
presence of the stylization in registrant’s mark and the
separation of the lettering and addition of the apostrophe
between the letters “O” and “W” in applicant’s mark, the
literal portion of the marks is identical and when spoken,
the marks sound the same. Further, we are not persuaded by
applicant’s argument that the consumer will perceive the
connotation of a race horse when its mark is used in
connection with its golf items. Applicant’s arguments that
its golf course development plans affect the connotation of
the mark, are not persuasive. We analyze the connotation
of the mark in relationship to the named goods. See In re
Sears, supra. Applicant’s mark MAN O’WAR when used in
connection with golf items is just as likely, if not more
so, to evoke the literal meaning “man of war” than the name
of a historical race horse. Registrant’s mark would also
connote “man of war,” at least, when spoken. Finally, in
view of the identity of sound and the lack of stylization
in applicant’s mark the commercial impression is similar to
registrant’s mark. The minimal stylization in registrant’s
mark is not sufficient to distinguish applicant’s mark from
the cited mark. Thus, the factor of the similarity of the
marks also favors a finding of likelihood of confusion.
Ser No. 78975852
10
In conclusion, we find that because the marks are
similar, the goods are related, and the channels of trade
are the same or overlapping, confusion is likely between
applicant’s mark and the cited registration. Finally, to
the extent that any of the points argued by applicant cast
doubt on our ultimate conclusion on the issue of likelihood
of confusion, we resolve that doubt, as we must, in favor
of the prior registrant. In re Hyper Shoppes (Ohio), Inc.,
837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988).
Decision: The refusal to register is affirmed.