From: Rittner, Hanno

Sent: 8/20/2020 12:15:43 PM

To: TTAB EFiling

CC:

Subject: U.S. Trademark Application Serial No. 88215365 - DRIVEN GOLF - 11210.T001US - EXAMINER
BRIEF

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Attachment Information:

Count: 1

Files: 88215365.doc
 United States Patent and Trademark Office (USPTO)

U.S. Application Serial No. 88215365

Mark: DRIVEN GOLF

Correspondence Address:
ROB L PHILLIPS

FISHERBROYLES LLP

26431 PASEO INFINITA

SAN JUAN CAPISTRANO, CA 92675

Applicant: Driven Golf, Inc.

Reference/Docket No. 11210.T001US

Correspondence Email Address:

rob.phillips@fisherbroyles.com

EXAMINING ATTORNEY’S APPEAL BRIEF

I. INTRODUCTION

Applicant has appealed the examining attorney’s refusal pursuant to Section 2(d) of the

Trademark Act, as amended, 15 U.S.C. §1052(d), to register the proposed standard character mark,

DRIVEN GOLF, for goods in multiple Classes, generally, golf training aids and clothing, on grounds that

Applicant's mark creates a likelihood of source confusion with the typed word mark DRIVEN BY PING in

U.S. Registration No. 4269857 for “golf clubs.” Applicant has also appealed requirements to amend the
identification of goods, as well as multi-class fee, restriction and classification requirements, which now

reads in Class 9 as “Golf training aids, namely tangible articles designed to attach to a golfer and/or golf

club and improve a golfer's swing.” It is respectfully requested the refusal and requirements be

affirmed.

II. FACTS

Applicant filed its application under Section 1(b) to register the composite mark, “DRIVEN GOLF”

for “Golf training aids, golf towels, golf bags, golf gloves, divot repair tools and pitch mark repair tools”

as well as “Apparel, namely T-shirts, shirts, hats, caps, sweatshirts, pants, sweats, hoodies and socks,”

without classification, paying the total fee for two International Classes.

An Office action dated March 11, 2019, refused registration pursuant to Section 2(d) citing U.S.

Registration No. 4269857 for the word mark DRIVEN BY PING for “golf clubs” in International Class 28.

Amendment of the indefinite recitation as well as restriction of the identification to the paid-for Classes

was also required, as well as disclaimer of “golf.”

On September 11, 2019, Applicant’s Response acceptably entered the disclaimer of “GOLF,”

traversed the 2(d) refusal, and amended the identification in two paid Classes to, as it now reads: 1)

“Golf training aids, namely tangible articles designed to attach to a golfer and/or golf club and improve a

golfer's swing” in Class 9 and 2) “Apparel, namely, T-shirts, shirts, hats, caps, sweatshirts, pants, sweat

suits, hoodies and socks,” in Class 25.

A Final action issued October 3, 2019, maintaining the Section 2(d) refusal, as well as,

maintaining the identification, classification and restriction requirements because “[the Class 9]

identification is too broad and could identify goods in more than one international class. See 37 C.F.R.
§2.32(a)(6); TMEP §§1402.01, 1402.03.”; in support, a deleted entry was referenced from the U.S.

Acceptable Identification of Goods and Services Manual, namely, “028 Golf training apparatus, namely,

devices used to help groove a repetitive putting” with the Note explaining:

On 02-28-2013, this 12-24-2009 entry was deleted because the description is overbroad
and may include goods in Class 9 or Class 28. General descriptions of sports training devices are
indefinite and must provide sufficient information about the function and/or purpose of the
goods to support classification in Class 9 as electronic or computer software-based training
apparatus or Class 28 as sports equipment.

Applicant noted its appeal and filed its brief.

III. OBJECTION TO APPLICANT’S EXHIBITS

Applicant submits new evidence with its brief, namely, Exhibits A and B (first referenced at

Applicant’s Brief, page 6). The evidence is untimely and should be refused consideration by the Board.

The record in an application should be complete prior to the filing of an appeal. 37 C.F.R. §2.142(d);

TBMP §§1203.02(e), 1207.01; TMEP §710.01(c). Because applicant’s new evidence was untimely

submitted during an appeal, the trademark examining attorney objects to this evidence and requests

that the Board disregard it. See In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018), aff’d

per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); In re Fiat Grp. Mktg. & Corp. Commc’ns

S.p.A, 109 USPQ2d 1593, 1596 (TTAB 2014); TBMP §§1203.02(e), 1207.01; TMEP §710.01(c). Applicant

filed no other evidence during examination; hence, applicant’s arguments are unsupported and

speculative.

III. ARGUMENT
REGISTRATION IS PROPERLY REFUSED UNDER TRADEMARK ACT SECTION 2(d) BECAUSE “DRIVEN
GOLF” IS LIKELY TO CREATE SOURCE CONFUSION WITH “DRIVEN BY PING.”

Trademark Act Section 2(d) bars registration where an applied-for mark so resembles a

registered mark that it is likely, when applied to the goods and/or services, to cause confusion, mistake

or to deceive the potential consumer as to the source of the goods and/or services. TMEP §1207.01.

The Court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), listed the

principal factors to consider in determining whether there is a likelihood of confusion under Section

2(d). Any one of the factors listed may be dominant in any given case, depending upon the evidence of

record. In re Dixie Restaurants, Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997). In this case,

the following factors are the most relevant: similarity of the marks, and, the relatedness of the parties’

goods. Opus One, Inc., 60 USPQ2d 1812 (TTAB

2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca

Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.

Taking into account the relevant du Pont factors, a likelihood of confusion determination in this

case involves a two-part analysis. First, the marks are compared for similarities in appearance, sound,

connotation and commercial impression. In re E .I. du Pont de Nemours, supra. Second, the goods or

services are compared to determine whether they are similar or related or whether the activities

surrounding their marketing are such that confusion as to origin is likely. In re National Novice Hockey

League, Inc., 222 USPQ 638 (TTAB 1984); In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re Int’l

Tel. and Tel. Corp., 197 USPQ 910 (TTAB 1978); Guardian Prods. Co. v. Scott Paper Co., 200 USPQ 738

(TTAB 1978); TMEP §§1207.01 et seq.

A. Analysis of the Marks

The marks are compared in their entireties under a Trademark Act Section 2(d) analysis. See

TMEP §1207.01(b). In this case, the common literal element DRIVEN is the significant element creating

the overall commercial impression for each mark.

Registrant’s mark is a composite “DRIVEN BY PING” which engenders separable commercial

impressions: the house mark “PING” and the product mark “DRIVEN.” Together the mark “DRIVEN BY

PING” identifies a branded golf club, “Driven,” made “by Ping.” Applicant agrees that “PING is a well-

known and arguably itself a famous mark for golf clubs … [so] by including the term PING in the

Registered mark, the owner is definitively telling the consumer that the golf clubs are a PING-branded

product, (i.e., “by PING”).” (Response of 9/11/19, p 6). A house mark, whether famous or not, added to

an otherwise confusingly similar mark will not obviate a likelihood of confusion under Section 2(d). See

In re Fiesta Palms LLC, 85 USPQ2d 1360, 1366-67 (TTAB 2007) (finding CLUB PALMS MVP and MVP

confusingly similar); In re Christian Dior, S.A., 225 USPQ 533, 534 (TTAB 1985) (finding LE CACHET DE

DIOR and CACHET confusingly similar); TMEP §1207.01(b)(iii).

In comparison, Applicant’s mark is “DRIVEN GOLF” wherein “golf” is generic for the field in

which applicant operates. Disclaimed matter that is descriptive of or generic for a party’s goods and/or

services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co.,

903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d

1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). For example, by

various manners of use of the mark by applicant the emphasis on the word “golf” can be greatly

deemphasized that consequently draws even more attention to the dominant portion at the expense of

the whole, e.g., either visually (e.g., “golf” in tiny letters), or, promoting “golf” as insignificant to the

minds of consumers. Although applicant has not claimed use of the mark, relevant examples have been
made of record, whereby applicant deemphasizes the importance of the word golf, indeed eliminating it

entirely, thereby leaving a consumer with the impression that golf products originate from a source

named “Driven.” The evidence of record shows:

1) a Facebook™ page for Ryan Winther (president of Driven Golf, Inc., the applicant) wearing a

shirt with the proposed mark Driven Golf associated integrally with the NBC® sports

broadcasting logo;

2) Applicant’s Twitter™ page, the “home of Driven Golf Show on NBC Sports” wherein the

singular word “Driven” appears prominently twice in the header and logo; and,

3) Applicant’s YouTube™ page with video upload golf tips wherein again the same logo bearing

the singular word “DRIVEN” is promoted.

As stated in the first Office Action,

this wording [“golf’] is less significant in terms of affecting the mark’s commercial impression,
and renders the wording DRIVEN the more dominant element of the mark, which as shown in
the attached web evidence, is used by itself, i.e., Driven, by applicant in its promotions, in
particular, golf instruction videos and Twitter® social media feeds. Applicant describes itself in
the attached web page as a ‘multi purpose golf industry company’: “What We Do -- Multi
purpose golf industry company who focuses on on-line golf instruction, golf schools, speaking
engagements, golf fitness, luxury brand.”

Registrant’s mark as a whole also creates a more subtle secondary impression, namely, that the

golfer’s drive or ambition is “driven” by registrant, e.g., by using PING’S golf clubs the golfer’s goal to

improve is driven. Applicant argues its mark connotes the same: “DRIVEN GOLF conveys a will or desire

to get better at golf hence the goods comprising golf training aids (i.e., the golfer is driven to improve).”

(Applicant’s Brief, p. 5).

Hence, the “driven golf” brand of goods is likely to be mistakenly associated with “Driven” golf

clubs “by PING,” the famous golf brand, and thus likely to create confusion as to source.
B. Relatedness of the Goods

The registrant’s goods are “golf clubs,” a staple good of golf; applicant’s goods are

complementary goods, including “golf training aids … designed to attach to a … golf club and improve a

golfer's swing” and 2) “Apparel, namely, T-shirts, shirts….” The compared goods need not be identical

or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229

F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54

USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i). They need only be “related in some manner

and/or if the circumstances surrounding their marketing are such that they could give rise to the

mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v.

Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven

Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i). Moreover, neither of the

applicant’s or registrant’s identifications have any restrictions as to nature, type, channels of trade, or

classes of purchasers and are “presumed to travel in the same channels of trade to the same class of

purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting

Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).

In this instance, the goods are golf equipment or apparel directed to the same target audience,

i.e., golfers, (see, promotions of applicant through YouTube and Facebook) where applicant promotes

itself broadly as a “multi purpose golf industry company.” The training aids and clubs are of the type

sold through the same channels of trade, e.g., online golf sports equipment sites, and directed to the

same target audience, i.e., golfers. The evidence also shows applicant’s principal wearing applicant’s

marked shirt while holding a golf club of some unknown source, perhaps even a Ping club. (Facebook™

page of Ryan Winther). As admitted by applicant, PING is an arguably famous golf brand in the golf

industry; hence its name is not limited to an association with golf clubs, as evidenced by the “NBC Golf”

article from www.golfchannel.com in which the registrant’s clubs are being sold as part of a larger
charity efforts for others, specifically cancer research (“From the driver sales, 5 percent of the proceeds

will help [that] goal.”). The evidence from the Yahoo! Sports webpage reiterates that 5% of proceeds

from the sale are “going to ‘Bubba Long in Pink. Driven by Ping’ which is Ping’s part of [pro golfer

Bubba] Watson’s charity initiative.”

Moreover, by applicant’s own admission in the identification of goods, its golf aid “attach[es] to

a golf club” and thus is complementary to its use. Where evidence shows that the goods at issue have

complementary uses, and thus are often used together or otherwise purchased by the same purchasers

for the same or related purposes, such goods have generally been found to be sufficiently related such

that confusion would be likely if they are marketed under the same or similar marks. See In re Martin’s

Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1567, 223 USPQ 1289, 1290 (Fed. Cir. 1984) (holding bread

and cheese to be related because they are often used in combination and noting that “[s]uch

complementary use has long been recognized as a relevant consideration in determining a likelihood of

confusion”); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1272 (TTAB 2009) (holding medical MRI

diagnostic apparatus and medical ultrasound devices to be related, based in part on the fact that such

goods have complementary purposes because they may be used by the same medical personnel on the

same patients to treat the same disease). In this case, consumers could encounter a DRIVEN GOLF aid

used with a DRIVEN BY PING golf club, where the differences between the marks are insufficient to

overcome the likely mistaken association with PING as the source of each.

Furthermore, representative evidence was also made of record from the USPTO’s X-Search

database comprising third-party marks registered for use in connection with the same or similar goods,

namely golf clubs and golf training aids and clothing, showing they are of a kind that emanate from a

single source under a single mark. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re

Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d
1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988));

TMEP §1207.01(d)(iii).

Applicant’s arguments do not address the evidence of record, and instead raise speculative

arguments unsupported by any evidence of its own. “Attorney argument is no substitute for evidence.”

Enzo Biochem Inc. v. Gen-Probe Inc., 424 F.3d 1276, 76 USPQ2d 1616, 1622 (Fed. Cir. 2005); see also In

re Tokutake Industry Co., Ltd., SN 79018656 (TTAB Decision issued May 14, 2008).

Thus, applicant’s and registrant’s goods are highly related and source confusion is likely.

IV. IDENTIFICATION IS INDEFINITE AND CANNOT BE CLASSIFIED

The identification of goods as currently amended and classified by applicant in Class 9, namely,

“Golf training aids, namely tangible articles designed to attach to a golfer and/or golf club and improve a

golfer's swing” remains indefinite. See TMEP §1402.01. The Trademark Act requires that a trademark

application include a “specification of … the goods” in connection with which the mark is being used or

will be used. 15 U.S.C. §1051(a)(2) (emphasis added), (b)(2) (emphasis added); see 15 U.S.C. §1053.

Specifically, a complete application must include a “list of the particular goods or services on or in

connection with which the applicant uses or intends to use the mark.” 37 C.F.R. §2.32(a)(6) (emphasis

added). This requirement for a specification of the particular goods and/or services applies to

applications filed under all statutory bases. See 15 U.S.C. §§1051(a)(2), 1051(b)(2), 1053, 1126(d)-(e),

1141f; 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.01(b)-(c).

The U.S. Acceptable Identification of Goods and Services Manual (herein “Manual”) specifically

addresses the issue regarding sporting goods, in particular golf training devices. The Manual entry,
“028 Golf training apparatus, namely, devices used to help groove a repetitive putting stroke,” was

deleted by the Office from the Manual because

the description is overbroad and may include goods in Class 9 or Class 28. General descriptions
of sports training devices are indefinite and must provide sufficient information about the
function and/or purpose of the goods to support classification in Class 9 as electronic or
computer software-based training apparatus or Class 28 as sports equipment.

Applicant’s identification closely parallels this deleted entry, which identifies an “aid” (instead of

“apparatus”) which are “tangible articles” (rather than “devices”). The remaining purpose of applicant’s

“aid” does not specify whether it is electronic in nature or not. See TMEP §§1402.01, 1402.03. This

renders the identification too broad and could identify goods in more than one international class. See

37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.

For example, the Office Action referenced the following acceptable identification from the

Manual, “Golf training equipment, namely, a motorized golf chipping practice aid,” as classified in

International Class 28 because the function is motorized, hence mechanical in nature, and not in the

nature of an electronic device. Applicant fails to describe the nature of the aid, merely that it is

“designed to attach to a golfer” or “designed to attach to a club” neither of which is determinative of

function or classification. The wording “aid” and “tangible article” is equally meaningless to define the

nature of the golf training aid for classification purposes. The USPTO has the discretion to determine

the degree of particularity needed to clearly identify goods covered by a mark. In re Fiat Grp. Mktg. &

Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365,

83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)). Accordingly, the USPTO requires the description of goods

and/or services in a U.S. application to be specific, definite, clear, accurate, and concise. TMEP

§1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem.

Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954). In this case,
applicant’s recitation essentially defines no more than an “aid designed to improve a golfer’s swing” and

leaves a reader guessing how it operates.

Applicant argues that it “promotes a series of different training aids that meet the offered

description” and therefore “[i]t is not necessary that the Applicant define each and every good under

the identification of goods.” (Applicant’s Brief, p. 7). Applicant’s argument misses the point: the

recitation identifies goods in more than one International Class; therefore, applicant has submitted an

indefinite identification, and thereby has further failed to satisfy all the requirements for each

International Class based on Trademark Act Section 1(b) by failing to submit sufficient fees or

alternatively restricting the identifications to Classes paid. The application identifies goods that are

classified in at least 3 classes; however, applicant submitted a fee sufficient for only 2 classes. See 15

U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01,

1403.02(c).

Accordingly, the requirements must be affirmed.

V. CONCLUSION

Applicant’s mark is driven by the dominant portion “DRIVEN” rendering the marks similar in

commercial impression; applicant’s goods are closely related to Registrant’s goods, marketed to the

same consumers in the same channels of trade, such that there exists a likelihood of source confusion

under Section 2(d).

Applicant’s identification is indefinite and overly broad such that it cannot be properly classified,

and therefore applicant has failed to satisfy all multi-class requirements.

 For the foregoing reasons, the trademark examining attorney respectfully requests that the

requirements and refusal to register Applicant’s mark be affirmed.

Respectfully submitted,

/Hanno Rittner/

Examining Attorney

Law Office 119

hanno.rittner@uspto.gov

571-272-7188

Brett J. Golden

Managing Attorney

Law Office 119

571-272-9257

Brett.golden@uspto.gov