Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.

gov
ESTTA Tracking number: ESTTA1059510
Filing date: 06/02/2020

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Proceeding 88215365
Applicant Driven Golf, Inc.
Applied for Mark DRIVEN GOLF
Correspondence ROB L. PHILLIPS
Address FISHERBROYLES, LLP
26431 PASEO INFINITA
SAN JUAN CAPISTRANO, CA 92675
UNITED STATES
[email protected], [email protected]
702-518-1239

Submission Appeal Brief

Attachments appeal brief.pdf(152629 bytes )
Exhibit A.pdf(586290 bytes )
Exhibit B.pdf(652525 bytes )
Filer's Name Rob L. Phillips
Filer's email [email protected], [email protected]
Signature /Rob L. Phillips/
Date 06/02/2020
Attorney Docket No. 011210.T001US TRADEMARK

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

Applicant : Driven Golf, Inc.

Serial No. : 88215365

Filed : December 4, 2018

Mark : DRIVEN GOLF

Examining
Attorney : RITTNER, HANNO I

APPEAL BRIEF

Assistant Commissioner for Trademarks

2900 Crystal Drive
Alexandria, VA 22202-3513

SECTION 2(d) REFUSAL

Applicant hereby submits that the Examining Attorney’s position is not consistent

with principles of trademark law and Applicant requests that the refusal be withdrawn for the

following reasons:

1. Applicant’s mark and Registrant’s mark differ in appearance, sound,

connotation and commercial impression.

2. The dissimilarity of the goods in which the marks are used.

3. The dissimilarity of trade channels.

THE STANDARD FOR EXAMINING LIKELIHOOD OF CONFUSION

Likelihood of confusion must be examined on a case-by-case basis and through the

application of the factors set forth in In re E.I. DuPont du Nemours & Co., 476 F.2d 1357,

177 U.S.P.Q. 563 (C.C.P.A. 1973). These factors are:

(1) The similarity of the marks in appearance, sound, connotation and commercial

impression;
Attorney Docket No. 011210.T001US

(2) The similarity of the goods in which the marks are used;

(3) The similarity of trade channels;

(4) The conditions under which consumers encounter the goods and the marks;

(5) The strength of the prior user’s mark;

(6) The number of similar marks in use;

(7) Any actual confusion;

(8) The length of time of any concurrent use without actual confusion;

(9) The variety of goods in which the mark is used;

(10) Any market interface or relationship between the senior and junior users of the mark;

(11) The extent to which Applicant has a right to exclude others from the use of its mark on

its goods;

(12) The extent of the potential for confusion; and

(13) Any other probative facts relating to the use of the marks.

When performing a Section 2(d) analysis, all the facts and circumstances bearing the

on the question of likelihood of confusion must be considered. Interstate Brands Corporation

v. Celestial Seasonings, Inc., 196 U.S.P.Q. 321 (TTAB 1977) aff’d 198 U.S.P.Q. 151

(C.C.P.A. 1979). Applicant respectfully submits that, if the focus is properly placed on the

relevant facts, the differences in the marks, the examiner should conclude that there is no

likelihood of confusion.

I. NO LIKELIHOOD OF CONFUSION WITH CITED REGISTRATION

The Examining Attorney has refused registration of Applicant’s mark DRIVEN

GOLF, U.S. Ser. No. 88215365 (“Applicant’s Mark”) on the grounds that Applicant’s Mark

is likely to be confused with the registered mark for DRIVEN BY PING, U.S. Registration

No. 4269857) (“Cited Registration”). Applicant submits the following arguments and

-2-
Attorney Docket No. 011210.T001US

evidence to support its position that there is no likelihood of confusion between Applicant’s

Mark and the Cited Registration.

Applicant respectfully submits that there is no potential for confusion between

Applicant’s Mark and the Cited Registration as the likelihood of confusion requires that

confusion be probable and not simply possible. See HMH Publishing Co. v. Brincat, 183

U.S.P.Q. 141, 144 (9th Cir. 1974); Fleischmann Distilling Corp. v. Maier Brewing Co., 136

U.S.P.Q. 508, 518 (9th Cir.), cert. denied, 374 U.S. 380, 37 U.S.P.Q. 913 (1963); J.B.

Williams Co. v. Le Conte Cosmetics, Inc., 186 U.S.P.Q. 317, 319 (9th Cir. 1975).

Additionally, “[t]he test for likelihood of confusion is whether a ‘reasonably prudent

consumer’ in the marketplace is likely to be confused as to the origin of the goods or services

bearing one of the marks.” Dreamwerks Production Group, Inc. v. SKG Studio, 142 F.3d

1127, 1129 (9th Cir. 1998).

To determine if there is a likelihood of confusion, "[t]he issue is not whether the

respective marks themselves, or the goods or services offered under the marks, are likely to

be confused but, rather, whether there is a likelihood of confusion as to the source or

sponsorship of the goods or services because of the marks used thereon." TMEP § 1207.01

(Jan. 2015). Thus, even in instances where the services at issue are similar or identical, a

likelihood of confusion will only be found if the relevant purchasing public would mistakenly

believe that the applicant's and registrant's services originated from the same source. See FBI

v. Societe: "M. Bril & Co.," 172 USPQ 310 (T.T.A.B. 1971). Moreover, for a likelihood of

confusion to exist, consumer confusion as to the source of the applicable goods or services

must be likely, not simply possible. See Signetics Corp. v. Sigona, 212 U.S.P.Q. 318, 320

(T.T.A.B. 1981) ("Unfortunately for opposer's case, likelihood, not possibility, is the test we

are required under the Trademark Act to apply.").

-3-
Attorney Docket No. 011210.T001US

The question of likelihood of confusion between marks is “not related to the nature of the

mark but to its effect ‘when applied to the goods of the applicant.’ The only relevant application

is made in the marketplace. The words ‘when applied’ do not refer to a mental exercise, but to all

of the known circumstances surrounding the use of a mark.” In re E.I. du Pont de Nemours &

Co., 476 F.2d 1357, 1360-61 (C.C.P.A. 1973) (internal citations omitted). In determining

whether there is a likelihood of confusion, courts look to many factors, e.g., the similarity or

dissimilarity of the marks in their entireties as to appearance, sounds, connotation and

commercial impression and the conditions under which buyers to whom sales are made, i.e.,

“impulse” vs careful sophisticated purchasing,” etc. Id. No single factor is dispositive in all

cases and “each [factor] may from case to case play a dominant role.” Id. at 1357.

Here, application of the most relevant du Pont factors demonstrates that there is no

likelihood of confusion between the Applicant’s Mark and the Cited Registration because (A)

the dissimilarity of the Applicant’s Mark and the Cited Registration in their entireties as to

appearance, sounds, connotation and commercial impression; (B) the dissimilarity of the

goods in which the respective marks are used; and (C) the dissimilarity of trade channels.

A. No Likelihood of Consumer Confusion Because the Marks are Dissimilar

in Their Entireties as to Appearance, Sounds, Connotation and
Commercial Impression.

The examining attorney states that the commercial impression of both marks derive

from the same dominant term “DRIVEN.” While applicant concedes that DRIVEN is the

dominant portion of Applicant’s Mark, applicant disagrees that DRIVEN is the dominant

portion of the Cited Registration. The Cited Registration includes the well-known PING

term. PING is a well-known and arguably itself a famous mark for golf clubs. PING to golf

clubs is akin to FORD for automotive vehicles. By including the term PING in the

Registered Mark, the owner is definitively telling the consumer that the golf clubs are a

-4-
Attorney Docket No. 011210.T001US

PING-branded product (i.e., “by PING”). On the other hand, the Applicant’s Mark has no

reference to PING and is dominated by the DRIVEN term.

In a similar case, GOLDEN CRUST for flour, and ADOLPH’S GOLD’N CRUST and

design (with "GOLD’N CRUST" disclaimed) for coating and seasoning for food items, was

found not likely to cause confusion, noting that the addition of “ADOLPH’S” is sufficient to

distinguish the marks. In this instance, PING, like ADOPLH’S, is sufficient to distinguish

the marks.

Applicant contends that there is no rational basis for summarily claiming that

DRIVEN alone is dominant portion of the Cited Registration. As the Court of Appeals for

the Federal Circuit has noted, “in articulating reasons for reaching a conclusion on the issue

of confusion, there is nothing improper in stating that, for rational reasons, more or less

weight has been given to a particular feature of a mark, provided the ultimate conclusion rests

on consideration of the marks in their entireties." (emphasis added) In re Nat’l Data Corp.,

753 F.2d 1056, 1058, 224 USPQ 749, 750-51 (Fed. Cir. 1985); see also Juice Generation,

Inc. v. GS Enters. LLC, 794 F.3d 1334, 1340-41, 115 USPQ2d 1671, 1676 (Fed. Cir. 2015)

(noting that “the message of a whole phrase may well not be adequately captured by a

dissection and recombination”). Given its weight in the golf market, PING should not be

deemed less dominant than DRIVEN. The Cited Registration either has no clearly dominant

portion or if it does, the dominant portion is PING.

Additions or deletions to marks may be sufficient to avoid a likelihood of confusion

if: the marks in their entireties convey significantly different commercial impressions. Here

they do. DRIVEN BY PING immediately conveys golf clubs, namely drivers branded as

PING. This is especially true since PING is known for its drivers such that the term

DRIVEN conveys drivers. To the contrary, 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

-5-
Attorney Docket No. 011210.T001US

improve). Consequently, Applicant’s Mark and the Cited Registration convey different

commercial impressions.

B. No Likelihood of Confusion Because the Dissimilarity of the Goods in

Which the Marks are Used.

Applicant’s Mark is intended for use with golf training aids, namely items to improve

a golfer’s swing whereas the Cited Registration is limited to golf clubs. Golf is typically

made up of a few major golf equipment makers (e.g., Calloway, Ping, TaylorMade). The

equipment makers manufacture and distribute the “tools of the trade” such as clubs, balls,

bags and the like. It is left to other lesser known sources, like applicant, to develop and

distribute products to assist golfers with improving their craft – think infomercial. Applicant

has amended its goods to list only golf training aids, namely tangible articles designed to

attach to a golfer and/or golf club and improve a golfer's swing, in class 009. Thus, there is a

clear differentiation between golf clubs and golf training aids, namely items to improve a

golfer’s swing.

C. No Likelihood of Confusion Because the Dissimilarity of Trade Channels.

Applicant’s Mark for training aids generally relates to relatively inexpensive products

to help a golfer’s swing – again, think informercial. On the other hand, golf clubs, especially

drivers, are expensive. A cursory online review of PING products shows that a set of irons

starts at $499 and a single driver starts at $199. (See, Exhibits A and B). These are expensive

products and certainly not an impulse purchase. On the other hand, golf training aids tend to

be less expensive in most instances and tend to be aftermarket products produced by non-golf

club manufacturers.

The examining attorney attached 38 attachments to his final rejection. There are

several references (e.g., LIME HOOK (attachments 1-3) and PUTTOUT (attachments 32-

35)) to mark under which golf clubs and golf swing training aids are sourced and none are

well known in the golf club business. While there are exceptions, the well-known golf club

-6-
Attorney Docket No. 011210.T001US

manufacturers, like Ping, make and sell clubs, not training aids. Even the most famous golf

club manufacturer in the world, Calloway, uses a different mark/brand TRUVIS to source

training aids (see, attachments 8-11 of the examining attorneys’ final rejection) thereby

keeping its the golf club mark Calloway separate.

Sophisticated buyers of the expensive Ping golf clubs will not be confused as to the

source of lower priced golf training aids.

II. IDENTIFICATION OF GOODS

The current description of goods states “Golf training aids, namely tangible articles

designed to attach to a golfer and/or club and improve a golfer’s swing.” The examining

attorney opines that such description is indefinite. Applicant contends that the identification

of goods is specific, definite, clear, accurate, and concise. See, The Procter & Gamble Co. v.

Economics Laboratory, Inc., 175 USPQ 505 (TTAB 1972) , modified without opinion, 498

F.2d 1406, 181 USPQ 722 (C.C.P.A. 1974). Applicant promotes a series of different training

aids that meet the offered description. It is not necessary that the Applicant define each and

every good under the identification of goods. Applicant contends that the current description

is satisfactory under TMEP §1402.

III. CONCLUSION

Based on the foregoing, Applicant respectfully submits that there is no likelihood of

confusion between Applicant’s Mark and the Cited Registration such that the examining

attorneys’ final rejection should be reversed.

Date: June 2, 2020 Respectfully submitted,

FISHERBROYLES, LLP
885 Woodstock Road, Suite 430-383 By: /Rob L. Phillips/
Roswell, GA 30075 Rob L. Phillips
Telephone: (702) 518-1239 Registration No. 40,305
[email protected]

-7-
6/2/2020 PING Drivers | Best Price Guarantee at DICK'S

Search

ORDER ANYTIME WITH CURBSIDE CONTACTLESS PICKUP

HOURS VARY. CHECK THE STATUS OF YOUR LOCAL STORE. LEARN MORE

FREE SHIPPING ON $49+

DETAILS

PING Golf Clubs

PING Drivers
12 Products

Filter By Sort By

PING G400 MAX Driver - Used Demo

NOW: $229.99 (42% off!)

WAS: $399.00*

Feedback
PING G410 Plus Driver

NOW: $399.00 (20% off!)

WAS: $499.00*

PING G400 MAX Driver

$399.00

PING G400 Driver - Used Demo

NOW: $229.99 (42% off!)

WAS: $399.00*

https://www.dickssportinggoods.com/products/ping-drivers.jsp 1/4
6/2/2020 PING Drivers | Best Price Guarantee at DICK'S

PING G Driver

NOW: $229.00 (42% off!)

WAS: $399.00*

PING G SF Tec Driver

NOW: $229.00 (42% off!)

WAS: $399.00*

Feedback
PING G410 SFT Driver

NOW: $399.00 (20% off!)

WAS: $499.00*

PING G LS Tec Driver

NOW: $229.00 (42% off!)

WAS: $399.00*

PING G400 SF Tec Driver - Used Demo

NOW: $229.99 (42% off!)

WAS: $399.00*

https://www.dickssportinggoods.com/products/ping-drivers.jsp 2/4
6/2/2020 PING Drivers | Best Price Guarantee at DICK'S
PING Women's G Le 2.0 Driver

$399.00

PING G30 Driver

NOW: $199.00 (42% off!)

WAS: $349.00*

PING G30 LS Tec Driver

NOW: $199.00 (42% off!)

WAS: $349.00*

Feedback
Page 1 of 1
1

Featured Categories

Best Price Guarantee

If You Find a Lower Price, We’ll Match It.
Learn More

Curbside Contactless Pickup

Grab Your Gear and Go
Learn More

Free Shipping
Online Only. Exclusions Apply.
Details

Sports Matter
Join Us in Helping Save Youth Sports.
Donate

CONNECT WITH US & SAVE

https://www.dickssportinggoods.com/products/ping-drivers.jsp 3/4
6/2/2020 PING Drivers | Best Price Guarantee at DICK'S
Sign Up For Email and Get 1 0 % Off

Email Address SIGN UP

Want $ 2 0 Off $ 1 0 0 ?
Join DICK’S Text Alerts to Receive Special Offers! Online Only. Exclusions Apply. Click For Details

Need More Help?

CONTACT US

COVID- 1 9 UPDATES

SCORE MORE. GIVE MORE. PLAY MORE.

Gift Cards & eGift Cards
Give the Gift That Always Fits. Shop Gift Cards

ScoreCard & ScoreCard Gold

Feedback
Earn One Point for Every $ 1 and get a $ 10 Reward rfoEvery 300 Points. Learn More

ScoreRew ards® Credit Card

Accelerate your Rewards and earn 2 points for every $ 1 on qualified purchases with a ScoreRewards cred
i t card. Learn More

COMPANY

SERVICES

SHOP

RESOURCES

FEATURED SEARCHES

© 2020 DICK's Sporting Goods

*Price Promotions - Due to manufacturer restrictions, select new release and other specified products are excluded from price promotions. Additionally, there are restrictions on the use
of coupon codes.

If you are using a screen reader and are having problems using this website, please call 877-846-9997 for assistance.

Terms of Use Privacy Policy Accessibility Policy California Disclosures Site Feedback

https://www.dickssportinggoods.com/products/ping-drivers.jsp 4/4
6/2/2020 Ping Irons | Curbside Pickup Available at DICK'S

F I LT E R

Search S TO R E P I C K U P Select Store

0 Available to Ship (17)

S O R T: To p S e l l e r s ORDER ANYTIME WITH CURBSIDE CONTACTLESS PICKUP

HOURS VARY. CHECK THE STATUS OF YOUR LOCAL STORE. LEARN MORE

FREE SHIPPING ON $49+

DETAILS

Home

PING IRON SETS

View:   All | 17 Products

Feedback
PING G4 0 0 Black Dot Irons – ( Steel) PING G4 0 0 Black Dot Irons – ( Graphite)

$ 4 9 9 . 0 0 -$ $787.00
5 7 -2$ .899.00*
0 0 $ 6 8 0$ .999.00*
0 0
(81) (69)

PING G4 1 0 Black Dot Irons – ( Steel) PING G4 1 0 Black Dot Irons – ( Graphite)

$ 7 8 8 . 0 0 -$ $875.00
8 9 -9$ .999.00*
0 0 $ 9 9 9$ .1099.00*
0 0
(72) (69)

https://www.dickssportinggoods.com/f/ping-iron-sets 1/4
6/2/2020 Ping Irons | Curbside Pickup Available at DICK'S

F I LT E R

S TO R E P I C K U P Select Store

Available to Ship (17)

S O R T: To p S e l l e r s

PING G7 1 0 Irons – ( Steel) PING Women' s G Le 2 . 0 Hy brid/ Irons – ( Graphite)

$ 1137.00 $ 875.00 - $ 1000.00

(5) (3)

Limited Stock!

Feedback
PING G7 1 0 Custom Irons PING i5 0 0 Black Dot Irons – ( Steel)

$ 162.43 - $ 1575.00 $ 1137.00

(79)

PING G Yellow Dot Irons – ( Steel) PING G7 0 0 Black Dot Irons – ( Graphite) – Standard
Length

$ 6 9 9$ .799.00*
0 0 $ 9 6 2$ .1137.00*
0 0
(41) (105)

Limited Stock!

https://www.dickssportinggoods.com/f/ping-iron-sets 2/4
6/2/2020 Ping Irons | Curbside Pickup Available at DICK'S

F I LT E R

S TO R E P I C K U P Select Store

Available to Ship (17)

PING i2 1 0 Black Dot Irons – ( Steel) PING G7 0 0 Black Dot Irons – ( Steel) – Standard
th Leng

S O R T: To p S e l l e r s

$ 875.00 $ 8 7 5$ .1049.00*
0 0
(61) (109)

PING G7 1 0 Irons – ( Graphite) PING G Black Dot Irons – ( Steel)

Feedback
$ 1225.00 $ 6 9 9$ .799.00*
0 0
(5)

Limited Stock!

PING G3 0 Black Dot Irons - ( Graphite) PING G Black Dot Irons – ( Graphite)

$ 899.00 $ 6 9 9$ .799.00*
0 0
(26)

Limited Stock! Limited Stock!

PING Bl i tI ( St l)
https://www.dickssportinggoods.com/f/ping-iron-sets 3/4
6/2/2020 Ping Irons | Curbside Pickup Available at DICK'S
PING Blueprint Irons – ( Steel)
F I LT E R

S TO R E P I C K U P Select Store
$ 1487.00
(21) Available to Ship (17)

Limited Stock!

S O R T: To p S e l l e r s

Find what you are looking for?

Te l l u s w h a t y o u t h i n k a b o u t o u r f i l t e r s !

Lear n Mo r e Abo u t Pin g Ir o n s

Selection

Featured Categories

Best Price Guarantee

If You Find a Lower Price, We’ll Match It.
Learn More

CONNECT WITH US & SAVE

Feedback
Sign Up For Email and Get 1 0 % Off

Email Address SIGN UP

*First-time subscribers only. Returning subscribers will be resubscribed for marketing/promo emails.

Need More Help?

© 2020 DICK's Sporting Goods

*Price Promotions - Due to manufacturer restrictions, select new release and other specified products are excluded from price promotions. Additionally, there are restrictions on the use
of coupon codes.

If you are using a screen reader and are having problems using this website, please call 877-846-9997 for assistance.

Terms of Use Privacy Policy Accessibility Policy California Disclosures Site Feedback

https://www.dickssportinggoods.com/f/ping-iron-sets 4/4