Wednesday, September 29, 2010

TTAB Finds "ESCAPE" Confusingly Similar to "THE GREAT ESCAPE" for Golf Clubs

Applicant King Par got roughed up in its attempt to escape a Section 2(d) refusal of the mark ESCAPE for golf clubs. The Board affirmed the refusal, finding the mark likely to cause confusion with the registered mark THE GREAT ESCAPE, also for golf clubs. It turns out that King Par probably chose the wrong course for its challenge. In re King Par Corporation, Serial No. 77488735 (September 14, 2010) [not precedential].

The underlying factual scenario is rather interesting. King Par had a registration for the mark ESCAPE for golf clubs, and it blocked the application that ultimately resulted in registration of THE GREAT ESCAPE. The applicant for THE GREAT ESCAPE appealed, arguing no likelihood of confusion, but while the appeal was pending, King Par's prior, blocking ESCAPE registration was cancelled for failure to renew. By the time King Par filed the instant application, the registration for THE GREAT ESCAPE had issued, and it blocked the new King Par application. [Since King Par claims to have an earlier first use date, why didn't it petition for cancellation? - ed.]

The Board presumed that the goods of the parties, being identical, travel in the same channels of trade to the same classes of consumers. Examining Attorney Tasneem Hussain submitted evidence showing that golf clubs are not necessarily expensive, and the Board therefore presumed that the goods include relatively inexpensive items that may be purchased with nothing more than ordinary care. Moreover, as the Board noted later, even if the goods were expensive and purchased with some care, even careful purchasers may be confused when encountering identical products sold under similar marks.

Turning to the marks, the Board found them to be similar in sound and appearance. Moreover, they convey "similar ideas, namely that the club will allow a player to 'escape' a tough situation, as in escaping from a bunker (in the case of a sand wedge) or the rough (in the case of a 'trouble wood'). Registrant’s mark merely adds a superlative, 'THE GREAT,' to emphasize the quality of the 'escape' golf shot by using registrant’s club."

King Par maintained that consumers "will immediately associate 'THE GREAT ESCAPE' with the 1963 'award-winning' motion picture starring Steve McQueen," but the Board was unpersuaded, since the meaning of a mark must be determined in the context of the goods.

King Par pointed to the lack of evidence of actual confusion, but the Board noted that, in an ex parte context, this lack of evidence has little probative value (since the Registrant has had no chance to submit evidence). Moreover, there was no proof regarding the extent of use of each mark and thus the existence of meaningful opportunities for confusion.

Applicant also lamely argued that it is the prior user, but of course that constitutes an improper collateral attack on the cited registration. "Applicant (assuming that it is the prior user) has an adequate remedy, that is, a petition for cancellation. However, there is nothing to indicate that applicant has sought to cancel the cited registration."

And so the Board affirmed the refusal.

Text Copyright John L. Welch 2010.


At 2:28 PM, Anonymous Anonymous said...

So when they now file a Petition for Cancellation based on confusion and prior use, will the Registrant throw the evidence back in their face where the Applicant claimed there would be no confusion.

I always am concerned about making those arguments in an appeal, when you may have to eat those words later.

At 4:36 PM, Blogger John L. Welch said...

See Meier's case, Canc. No. 92044883 and cases cited therein. Those prior arguments are not treated as admissions against interest. Also Anthony's Pizza case (TTAB 2009), saying there is no "file wrapper estoppel" in trademark cases.

At 5:18 PM, Anonymous Orrin A. Falby said...

John. the wealth of your knowledge amazes me. I have supported a lot of attorneys in my paralegal role (as you know, I am not an attorney) and if I had a dollar for each time I have been told that "I do not want to make any admissions in an office action response that would hurt the client in a future proceeding", I would be a rich man. After explaining to them that there is no "prosecution estoppel" in trademark cases, the usual response I get is either a blank stare or "prosecution what?". Patent attorney's usually get it, since this is something they are too familiar with.

Thanks for everything and keep up the good work. Life would be a lot more difficult without your blog.

At 7:43 PM, Anonymous Anonymous said...

But see Freedom Card Inc. v. JPMorgan Chase & Co., 77 U.S.P.Q.2d 1515, 1525 (3d Cir. 2005) (plaintiff’s earlier, contrary averments to the PTO regarding the widespread use of the word “freedom” undermined plaintiff’s attempt to prove likelihood of confusion); Petro Stopping Ctrs. L.P. v. James River Petroleum Inc., 44 U.S.P.Q.2d 1921, 1926 (4th Cir. 1997) (party’s “own representations to the PTO in 1981 undercut the company’s current arguments to this court”).

At 7:53 PM, Blogger John L. Welch said...

I think you have to distinguish between statements of fact and argument.


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