In a recent decision, the Trademark Trial and Appeal Board (the “TTAB”) found that the clothing mark GOLF SPORT and its “golfer” design is confusingly similar to the GOLFINO trademark and design for clothing. You can access the full opinion for this decision here (http://ttabvue.uspto.gov/ttabvue/ttabvue-91183317-OPP-19.pdf) and commentary here (TTAB Blog: http://thettablog.blogspot.com/2010/07/ttab-finds-golf-sport-and-golfino-both.html).
Gady Desler (the “Applicant”) applied for a trademark registration for GOLF SPORT identifying the goods as “dress shirts; golf shirts; polo shirts; shirts; short- sleeved or long-sleeved t-shirts; short-sleeved shirts; sport shirts.”
Thereafter, Golfino AG (the “Opposer”) filed an opposition to the Applicant’s registration on the ground that the trademark resembled the GOLFINO trade name, and previously registered GOLFINO trademarks. Opposer stated that allowing Applicant’s mark to obtain registration would likely cause confusion with its currently registered marks.
The Board’s main considerations in determining the likelihood of confusion were similarities between the marks and similarities between the goods.
For goods, the TTAB looked at the channels of trade and class of purchasers. The Board noted that the goods did not have to be identical for there to be a likelihood of confusion:
“The goods need not be identical or directly competitive in order for there to be a likelihood of confusion. Rather, the respective goods need only be related in some manner or the conditions surrounding their marketing be such that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods come from a common source.”
Because the Applicant’s listed goods of “golf shirts” and “shirts” were identical to the Opposer’s registered goods, the Board found that the goods of both the Applicant and the Opposer would be “sold in the same channel of trade and will be bought by the same class of purchasers.”
Additionally, due to Applicant’s admission in the record, the Opposer did not have to prove where the goods would be sold or that the goods would be sold in the same channel of trade (golf stores, golf pro shops, general merchandise stores, and department stores).
After concluding that the DuPont factors related to similarity of goods, similarity of the channels of trade, and similarity of the class of purchasers favored a finding of likelihood of confusion, the Board went on to consider the conditions of sale.
When analyzing the conditions of sale, the Board found that the risk of confusion increased. Because the Applicant’s goods did not include any prices the Board had to consider that the clothing would include inexpensive as well as expensive items. Inexpensive items require less purchaser sophistication and the exercise of a smaller degree of care when purchasing, which increases the likelihood of consumer confusion. Therefore, this factor also weighed in favor of the Opposer.
Lastly, the TTAB considered the similarity or dissimilarity of the marks in their entirety. The Board noted that when the goods and services are identical “the degree of similarity necessary to support a conclusion of likely confusion declines.”
The Board found through the Applicant’s admissions that the marks were “virtually identical” in appearance, sound, and meaning. The Applicant’s “Golfer” design was found to be descriptive and “predominated over the descriptive wording GOLF SPORT.” The Board also found that GOLF SPORT and GOLFINO were similar in sound and connotation because they both begin with the word GOLF.
Thus, after analyzing the DuPont factors, the Board ultimately found in favor of the Opposer. The Board agreed that the Opposer had priority and that the Applicant’s GOLF SPORT mark and design would likely be confused with the Opposer’s prior GOLFINO trademark for the same goods.