Nickent Golf, Inc.

Trademark Trial and Appeal Board

Sep 14, 2009

No. 78786389 (T.T.A.B. Sep. 14, 2009)

Mailed:
September 14, 2009
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Nickent Golf, Inc.
________

Serial No. 78786389
_______

Scott A. McCollister of Fay Sharpe LLP for Nickent Golf,
Inc.

N. Gretchen Ulrich, Trademark Examining Attorney, Law
Office 113 (Odette Bonnet, Managing Attorney).1
_______

Before Walsh, Cataldo and Taylor, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

Nickent Golf, Inc. (applicant) has applied to register
the mark 3DX in standard characters on the Principal
Register for goods identified as “golf clubs” in
International Class 28.2

1 A different examining attorney acted on this application prior
to this appeal.
2 Application Serial No. 78786389, filed January 6, 2006,
claiming first use of the mark anywhere and first use of the mark
in commerce on March 31, 2003.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 78786389
2
The Examining Attorney has issued a final refusal
under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), on
the grounds that there is a likelihood of confusion between
applicant’s 3DX mark and the mark DX in typed form on the
Principal Register in Registration No. 879423 for goods
identified as “golf clubs and golf bags” in International
Class 28. The cited registration issued on October 28,
1969. The registration has been renewed and it is active.
The registration claims first use of the mark anywhere and
first use of the mark in commerce on December 12, 1964.
Applicant has appealed. Applicant and the Examining
Attorney have filed briefs. We affirm.
Before addressing the merits of the appeal we must
attend to one evidentiary matter. With its brief applicant
submitted a listing of third-party registrations for marks
which include “DX.” The Examining Attorney objects to this
evidence because applicant failed to submit copies of the
registrations, and also because the submission was late.
The Examining Attorney is correct on both counts. The
record must be complete prior to appeal, subject to certain
exceptions not relevant here. See 37 C.F.R. § 2.142(d).
Applicant’s submission here is manifestly late. Therefore,
we exclude this evidence from consideration. We note
further that, even if applicant had submitted this evidence
Serial No. 78786389
3
prior to appeal, it is not in acceptable form. The Board
does not take judicial notice of office records related to
third-party registrations; applicants must submit
appropriate copies of USPTO records to make registrations
of record in an appeal. In re Dos Padres Inc., 49 USPQ2d
1860, 1861 n.2 (TTAB 1998); In re Wada, 48 USPQ2d 1689,
1689 n.2 (TTAB 1998), aff’d, 194 F.3d 1297, 52 USPQ2d 1539
(Fed. Cir. 1999). Furthermore, even if we had considered
this evidence, we would reach the same conclusions in this
appeal.
Turning to the merits, Section 2(d) of the Trademark
Act precludes registration of an applicant’s mark “… which
so resembles a mark registered in the Patent and Trademark
Office… as to be likely, when used on or in connection with
the goods of the applicant, to cause confusion….” 15
U.S.C. § 1052(d). The opinion in In re E.I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1977)
sets forth the factors to consider in determining
likelihood of confusion. Here, as is often the case, the
crucial factors are the similarity of the marks and the
similarity of the goods identified in the application and
the cited registrations. Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976) (“The fundamental inquiry mandated by Section 2(d)
Serial No. 78786389
4
goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in
the marks.”).
The Goods and Channels of Trade
First, we consider the respective goods. In general,
the goods of applicant and the registrant need not be
identical to find a likelihood of confusion under Trademark
Act Section 2(d). We may find the goods to be related if
the circumstances surrounding their marketing would result
in relevant consumers mistakenly believing that the goods
originate from or are associated with the same source. See
In re International Telephone & Telegraph Corp., 197 USPQ
910, 911 (TTAB 1978).
Furthermore, in comparing the goods we must consider
the goods as identified in the application and cited
registration. Paula Payne Products v. Johnson Publishing
Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973) (“Trademark
cases involving the issue of likelihood of confusion must
be decided on the basis of the respective descriptions of
goods.”).
In this case, applicant has not presented any
arguments with respect to the goods. Applicant’s goods and
the goods identified in the cited registration are
identical, at least in part. Both include golf clubs.
Serial No. 78786389
5
Furthermore, golf clubs and golf bags are otherwise
related. The cited registration covers both, and golf bags
are used to carry golf clubs. Also, because the respective
goods are identical in part, we also conclude that the
purchasers and channels of trade for the goods are
identical. Genesco, 66 USPQ2d at 1268 (“Given the in-part
identical and in-part related nature of the parties’ goods,
and the lack of any restrictions in the identifications
thereof as to trade channels and purchasers, these clothing
items could be offered and sold to the same classes of
purchasers through the same channels of trade”); In re
Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994)
(“Because the goods are legally identical, they must be
presumed to travel in the same channels of trade, and be
sold to the same class of purchasers”).
Accordingly, we conclude that applicant’s goods are
identical and otherwise related to the goods in the cited
registration and that the respective goods travel in the
same channels of trade to the same potential purchasers.
The Marks
Next, we consider the marks, and we begin by noting
that the degree of similarity between the marks necessary
to support a finding of likelihood of confusion declines
when the goods are identical. Century 21 Real Estate Corp.
Serial No. 78786389
6
v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698,
1701 (Fed. Cir. 1992), cert. denied, 506 U.S. 1034 (1992).
More generally, in comparing the marks in their
entireties we must consider the appearance, sound,
connotation and commercial impression of the marks at
issue. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005).
Also, “… it is well established that the test to be
applied in determining likelihood of confusion is not
whether marks are distinguishable on the basis of a side-
by-side comparison but rather whether they so resemble one
another as to be likely to cause confusion, and this
necessarily requires us to consider the fallibility of
memory over a period of time. That is to say, the emphasis
must be on the recollection of the average purchaser, who
normally retains a general rather than a specific
impression of trademarks.”
The Examining Attorney argues that the marks are
similar because applicant’s 3DX mark incorporates the
letter elements of the registered mark in their entirety,
that is, DX, and because numbers are used to identify
different types of golf clubs, both irons and woods. The
Examining Attorney submitted pages from The Historical
Serial No. 78786389
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Dictionary of Golfing Terms (1992) and David Graham’s Guide
to Golf Equipment (1993) to show that numbers are used in
this way on golf clubs.3
On the other hand, applicant argues that DX is
descriptive, and therefore weak, and that the “3” in
applicant’s mark is sufficient to distinguish the marks.
Applicant also argues that the goods are “high cost golf
clubs” which would not be purchased on impulse, and that
the “manufacturer name” would control the purchasing
decision, “not a model designation.” Applicant’s Brief at
2.
First, we reject applicant’s argument that DX is
descriptive and weak. The argument amounts to a collateral
attack on the validity of the cited registration which we
cannot entertain in this proceeding. See In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1535 (Fed.
Cir. 1997). The cited DX mark is registered on the
Principal Register. Consequently, we must and do accord
the mark the full scope of protection Trademark Act Section
7(b), 15 U.S.C. § 1057(b), affords. Among other things,

3 The Examining Attorney provided this evidence with her brief
and requests that we take judicial notice of these materials as
dictionaries or similar reference works. We grant the request.
See University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).

Serial No. 78786389
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Section 7(b) requires that we recognize the registration as
prima facie evidence of the “… validity of the registered
mark, of the registrant’s ownership of the mark, and of the
registrant’s exclusive right to use the registered mark in
commerce on or in connection with the goods or services
specified in the certificate, subject to any conditions or
limitations stated in the certificate.”
Furthermore, we note the absence of any evidence that
DX is weak as a result of third-party use in relation to
the relevant goods. Cf. Knight Textile Corp. v. Jones
Investment Co., 75 USPQ2d 1313, 1316 (TTAB 2005).
Also, in view of these circumstances, and the evidence
of record showing that numbers, such as “3”, are used to
identify types of golf clubs, we concur with the Examining
Attorney in concluding that DX is the dominant element of
applicant’s mark. Of course, DX is the entirety of the
cited, registered mark.
We also reject applicant’s argument that potential
purchasers will look to the manufacturer’s name to identify
the source of the goods. Here again, applicant fails to
recognize the statutory protection the registration affords
the cited mark – the same protection which applicant seeks
for its 3DX mark. Neither would be conditioned on use of
the respective marks with a manufacturer’s name or any
Serial No. 78786389
9
other source identifier. In presenting these arguments
applicant relies on the reasoning from infringement cases
in the federal courts, such as, Programmed Tax Systems,
Inc. v. Raytheon Company, et al., 419 F.Supp 1251, 193 USPQ
435 (S.D.N.Y. 1976).4 Applicant’s reliance on these cases
is misplaced because the infringement analysis in those
cases takes into account circumstances, such as the use of
“other marks” on the product, which we generally do not
consider in a registration case. In re Bercut-Vandervoort
& Co., 229 USPQ 763, 764 (TTAB 1986).
In sum, when we consider the 3DX and DX marks in their
entireties, we find the marks highly similar in appearance,
sound, connotation and commercial impression.
Lastly, we are not persuaded by applicant’s argument
regarding the care potential purchasers would exercise in
selecting the relevant goods. Applicant asserts that its
goods are high cost without providing any cost information.
Furthermore, neither the application nor the cited
registration limits the goods to any particular cost
category. We concede that a certain degree of care would
attend the purchase of any golf club; it is not an impulse
purchase comparable to chewing gum. Nonetheless, under the

4 Also, this is a decision denying a motion for a preliminary
injunction, not a final disposition on the merits.
Serial No. 78786389
10
circumstances of this case, we conclude that purchaser care
or sophistication would not diminish the likelihood of
confusion.
And finally, after considering all evidence and
arguments bearing on the du Pont factors, including any we
have not specifically discussed here, we conclude that
there is a likelihood of confusion between applicant’s 3DX
mark when used in connection with “golf clubs” and the
registered DX mark when used in connection with “golf clubs
and golf bags.”
Decision: We affirm the refusal under Trademark Act
Section 2(d).