Chih AnInter-national, Inc.

Trademark Trial and Appeal Board

Jul 20, 2006

No. 76561382 (T.T.A.B. Jul. 20, 2006)

Mailed: July 20, 2006
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Chih An International, Inc.
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Serial No. 76561382
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Scott A. McCollister of Fay, Sharpe, Fagan, Minnich &
McKee, LLP for Chih An International, Inc.

Verna Beth Ririe, Trademark Examining Attorney, Law Office
104 (Chris Doninger, Managing Attorney).
_______

Before Seeherman, Hairston and Walsh, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

Chih An International, Inc. has filed an application
to register the mark CROSS for “golf clubs.”1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the
ground that applicant’s mark, when applied to the
identified goods, so resembles the mark GOLFCROSS for “golf

1 Serial No. 76561382, filed on November 21, 2003, which alleges
a bona fide intention to use the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76561382
2
clubs,”2 as to be likely to cause confusion or mistake, or
to deceive.
Applicant has appealed. Briefs have been filed, but
an oral hearing was not requested. We affirm the refusal
to register.
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. duPont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Company, 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
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. Both

2 Registration No. 2,413,608 issued December 19, 2000. The
registration covers goods and services in classes 25, 28, and 41.
The identification of goods in class 28 reads “golf balls, golf
clubs, target nets for use in a golf-type game.” It is clear
from the examining attorney’s Office actions and brief that the
refusal to register is based only on “golf clubs.”
Ser No. 76561382
3
applicant’s and registrant’s goods, as identified, are
“golf clubs.” Applicant argues that there are differences
in the nature of the goods, trade channels, and purchasers.
Specifically, applicant argues that its golf clubs will be
used in playing conventional golf whereas registrant’s golf
clubs are used in a golf-type game, known as “GolfCross,”
where a special oval-shaped ball is hit into a target net.
Further, applicant maintains that “GolfCross” is played in
New Zealand and not in the United States, resulting in
different trade channels and purchasers. Finally,
applicant argues that it appears that the registrant is not
selling golf clubs bearing the mark GOLFCROSS in the United
States because applicant conducted a “Google” search which
did not return any “hits” for retailers in the United
States selling goods under the mark GOLFCROSS. Applicant
has submitted an Internet printout from what appears to be
registrant’s website explaining the game of “GolfCross.”
There is a fundamental problem with applicant’s
argument. While we recognize that the “target nets” in the
cited registration are identified as “for use in a golf-
type game,” the “golf clubs” are not limited in this
manner. In other words, the “golf clubs” are not limited
for use in the game of “GolfCross” as argued by applicant.
It is well established that the issue of likelihood of
Ser No. 76561382
4
confusion must be determined on the basis of the goods as
they are set forth in the involved application and the
cited registration, and not in light of what such goods are
shown or asserted to actually be. See e.g. Octocom Systems
Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16
USPQ2d 1783 (Fed. Cir. 1990); Canadian Imperial Bank of
Commerce, N.A. v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813, 1815 (Fed. Cir. 1987) [It is well settled that in
Board proceedings, “the question of likelihood of confusion
must be determined based on an analysis of the mark as
applied to the goods and/or services recited in applicant’s
application vis-à-vis the goods and/or services in [the
cited] registration, rather than what the evidence shows
the goods and/or services to be”].
In the absence of any limitations in the cited
registration with respect to “golf clubs,” we must presume
that such golf clubs are for use in conventional golf.
Thus, for purposes of our likelihood of confusion analysis,
the goods are identical. Further, in view of the identity
of the goods, we must presume that such goods would be sold
to the same classes of purchasers, namely, professional and
amateur golfers, through the same trade channels, such as
Ser No. 76561382
5
golf pro shops and sporting goods stores.3 Moreover, even
if we were to accept the limitation urged by applicant,
that is, that the golf clubs in the cited registration are
for use in the game of “GolfCross,” we note that the
Internet printout that explains the game contains the
following question and answer:
Can I use my golf clubs for GolfCross®?

Yes, exactly the same clubs are used but you won’t
need a putter.

Thus, it would appear from the foregoing that the golf
clubs in the cited registration are actually conventional
golf clubs. In any event, if the same or similar marks are
used on applicant’s and registrant’s identified goods,
confusion as to source or sponsorship of the goods is
likely.
Turning then to the marks, we note that applicant does
not contest, in its brief, that the marks are similar.
Rather, applicant argues that marks which include the term
CROSS for golf-related products are weak marks and
therefore entitled to a narrow scope of protection.
Applicant submitted copies of four third-party

3 We must presume that the registered mark is in “use in
commerce” (i.e., used in commerce with or in the United States)
on golf clubs. If applicant believes that the mark is not in use
in commerce on golf clubs, applicant may wish to consider filing
a petition for cancellation of the registration with respect to
such goods on the ground of abandonment.
Ser No. 76561382
6
registrations that include the word CROSS, namely CROSSCAP
for inter alia, golf clubs and golf balls; CROSS LINE for
golf grips; CROSS COUNTRY for golf bags and golf bag
covers; and CROSS GRIP for an auxiliary grip for golf
clubs. Because of the numerous “uses” of marks that
include the word CROSS, applicant argues that the public
distinguishes the various CROSS marks.
With respect to the marks, we must determine whether
applicant’s mark and registrant’s mark, when compared in
their entireties, are similar or dissimilar in terms of
sound, appearance, connotation and commercial impression.
Although the marks 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). Furthermore, the test 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 commercial impression that
confusion as to the source of the goods and/or services
offered under the respective marks is likely to result.
The focus is on the recollection of the average purchaser,
Ser No. 76561382
7
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). Further, when the
goods of the parties are identical 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 USPQ2d 1698, 1700 (Fed. Cir. 1992).
When we compare the marks CROSS and GOLFCROSS in their
entireties, we find that they are similar in sound,
appearance, connotation and commercial impression. While
undoubtedly the presence of the word GOLF in the registered
mark is a difference, it does not significantly change the
sound, appearance, connotation or commercial impression of
the marks. Because the word GOLF is highly descriptive, if
not generic for golf clubs, this word is entitled to little
weight in our likelihood of confusion analysis. Both marks
are dominated by the word CROSS and the mere addition of
the word GOLF in registrant’s mark does not make the marks
dissimilar. Wella Corp. v. California Concept Corp., 558
F.2d 1019, 194 USPQ 419 (CCPA 1977) [CALIFORNIA CONCEPT and
surfer design is likely to be confused with CONCEPT for
hair care products].
Ser No. 76561382
8
The existence of four third-party registrations
apparently held by different entities containing the word
CROSS does not change the result herein. These
registrations are not evidence that the marks which are
shown therein are in use or that the public is familiar
with them. AMF Inc. v. American Leisure Products, Inc.,
474 F.2d 1403, 177 USPQ 268 (CCPA 1973). Nor can such
registrations justify the registration of a confusingly
similar mark. Also, we note that none of the marks in the
third-party registrations is as similar to the cited mark
as is applicant’s mark.
We conclude that persons familiar with registrant’s
golf clubs offered under the mark GOLFCROSS would be likely
to believe, upon encountering applicant’s mark CROSS for
identical goods, that applicant’s goods originated with or
are somehow associated with or sponsored by the same
entity.
Decision: The refusal to register under Section 2(d)
is affirmed.