Ttabvue 88215365 Examiner's Statement
Ttabvue 88215365 Examiner's Statement
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)
Correspondence Address:
ROB L PHILLIPS
FISHERBROYLES LLP
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
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
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 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’
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
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
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
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
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
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).”
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
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.
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),
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
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
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
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
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).
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
Applicant’s identification is indefinite and overly broad such that it cannot be properly classified,
Respectfully submitted,
/Hanno Rittner/
Examining Attorney
571-272-7188
Brett J. Golden
Managing Attorney
571-272-9257