TTAB Tees Up Driven Golf's Mark for Registration
Driven Golf, Inc. ("Driven Golf") is the champion of the most recent round at the United States Patent and Trademark Office ("USPTO"). On November 19, 2020, the Trademark Trial and Appeal Board ("TTAB") reversed the Examining Attorney's refusal to register DRIVEN GOLF as a trademark for Driven Golf's golf training aids and apparel on the ground that the proposed mark was confusingly similar to an existing mark, DRIVEN BY PING, for golf clubs. (In re Driven Golf, Inc., Serial No. 88215365 (TTAB Nov. 19, 2020)).
In the first round back in December 2018, Driven Golf applied to register DRIVEN GOLF (disclaiming the word "Golf") for goods in International Class 25, apparel, and in Class 9, golf training aids, "namely tangible articles designed to attach to a golfer and/or golf club and improve a golfer's swing." On October 3, 2019, the Examining Attorney at the USPTO issued a final refusal to register DRIVEN GOLF, deciding that DRIVEN GOLF creates a likelihood of source confusion with the DRIVEN BY PING mark (Registration No. 4269857) because "the commercial impression of both marks derive from the same dominant term 'DRIVEN,'" and consumers who know the PING "Driven" brand "will presume that the [DRIVEN GOLF] mark is merely an offshoot [of the DRIVEN BY PING mark]." The Examining Attorney also stated that Driven Golf failed to submit an acceptable identification of its "golf training aids" under International Class 9, concluding that the wording "aids," among other things, must be clarified because it was too "indefinite."
Believing the Examining Attorney was off-course, in April 2020 Driven Golf appealed the final refusal to register its mark to the TTAB. Starting from the back tees, Driven Golf contended in its appeal brief that there was no potential for confusion between its mark and the PING mark as the likelihood of confusion requires that "confusion be probable and not simply possible." Using every club in the bag, Driven Golf raised several points: (1) the dominant portion of the DRIVEN BY PING mark was not "Driven" but "PING," which labeled a golf club a PING club, as opposed to the DRIVEN GOLF mark, which makes no such clear association; (2) there is insufficient similarity between the goods in question – golf training aids and golf clubs; and (3) the trade
channels are dissimilar, as golf clubs are typically expensive investments while golf aids are inexpensive tools, and in general, the big golf club manufacturers sell clubs, not training aids.
In response, the Examining Attorney's appeal brief began by stating the black letter law of consumer confusion: "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." The Examining Attorney took a healthy swing and argued that DRIVEN GOLF is likely to cause confusion with the DRIVEN BY PING mark owned by the widely-known company because: (1) Driven Golf's goods are golf equipment or apparel directed to the same target audience (i.e., golfers), and sold through the same channels of trade (online golf sports equipment sites); and (2) Driven Golf's golf aid product is attached to a golf club, and thus is "complementary to use" with, for example, PING golf clubs, and as such, consumers could encounter a DRIVEN GOLF aid used with a DRIVEN BY PING golf club, which could potentially lead to a mistaken association between the products. However, unlike many golfers who use PING golf clubs, the Examining Attorney missed the green.
In a non-precedential opinion, the TTAB analyzed the likelihood of confusion and concentrated on the following factors: the similarity or dissimilarity of (i) the nature of the goods and established, likely-to-continue trade channels, and (ii) the language of the marks. Driven Golf hit an ace in this round, as the TTAB found each factor weighed in favor of a determination that confusion is not likely. First, the TTAB stated, "[i]n comparing goods, 'the issue to be determined…is not whether the goods…are likely to be confused but rather whether there is a likelihood that purchasers will be misled into the belief that they emanate from a common source.'" The Examining Attorney had teed up various arguments about the similarity in the goods – golf apparel and equipment targeted at golfers. However, the TTAB found that the Examining Attorney had shanked it and presented a "sparse record" that consumers would likely believe Driven Golf's Class 9 and 25 goods emanate from the same sources as PING. Moreover, the TTAB rejected the Examining Attorney's trade channel conclusions, finding instead that golf clubs, training aids and golf apparel might be available in common trade channels, but there was "insufficient evidence in the record that these goods travel in the same channels of trade or may be purchased by the same classes of purchasers."
With respect to the last factor, the TTAB compared the marks in their entireties for similarities and dissimilarities in "appearance, sound, connotation, and commercial impression." The TTAB recognized both trademarks have the same first word, "Driven," but determined the marks, taken as a whole, were dissimilar due to the additional wording in each mark and a different pronunciation given that the marks end in a different word. Tallying the scorecard, the TTAB noted, DRIVEN BY PING "connotes PING-branded golf clubs, presumably drivers" and that DRIVEN GOLF connotes golf aids and clothing used by consumers who are driven to improve their game." Thus, the TTAB dispatched the Examining Attorney's refusal based on consumer confusion similarity into a watery grave.
While Driven Golf prevailed on the main issues, it did get stuck in the sand on one procedural point. The TTAB affirmed the Examining Attorney's determination that Driven Golf needed to submit a more definite identification of goods in Class 9 (i.e., Driven Golf's "golf training aids"), agreeing that Driven Golf's use of "aids" and "tangible articles" was too vague and could identify goods in multiple classes.
In the end, the TTAB reversed the refusal to register Driven Golf's mark under both classes of goods (i.e., Class 9 for golf training aids and Class 25 for apparel) after finding no likelihood of consumer confusion, but affirmed the finding that Driven Golf needed to submit a more definite identification of its Class 9 golf training goods. Even the best golfers do not birdie every hole and Driven Golf is certainly pleased with this mixed victory on the hallowed grounds at the TTAB.