Thursday, December 29, 2005

Finding Golf Equipment and T-Shirts Related, TTAB Affirms "MAN O'WAR" 2(d) Refusal

Third-party registration evidence led the Board to affirm a Section 2(d) refusal of the mark MAN O'WAR for golf clubs, golf balls, golf bags, and various other items of golf equipment. The Board found a likelihood of confusion with the registered mark MANOWAR (Stylized) (shown immediately below) for t-shirts and hats. In re Centex/Taylor, LLC, Serial No. 78975852 (December 16, 2006) [not citable].

Examining Attorney Charles L. Jenkins, Jr. relied on nine third-party registrations covering both t-shirts and golf items, to show the relatedness of the goods. According to In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993), third-party registrations "which individually cover a number of different items, and which are based on use in commerce, serve to suggest that the listed goods are of a type which may emanate from a single source."

Applicant candidly conceded that "golf clubs and t-shirts bearing identical marks are frequently offered by the same registrant" and that past registrations serve to suggest that the goods may emanate from the same source. But Applicant hopelessly argued that Registrant's goods exclude "golf enthusiasts." The Board promptly rejected that argument, since it was based upon an impermissible attempt to read limitations into the identification of goods in the cited registration. Similarly, Applicant's arguments regarding the actual use of Registrant's mark in the marketplace were irrelevant (and unsupported by proof). [The registered mark is owned by Joey DeMaio, leader of the heavy metal band MANOWAR]. The Board noted that the registration is not limited to any specific channel of trade, and therefore it presumed that the involved goods would "overlap in trade channels and ... would be offered to all normal classes of purchasers."

As to the marks, although there are slight differences, the literal portions of the marks are identical and the marks sound the same. The Board found unpersuasive Applicant's argument that its mark would bring to mind the famous race horse.

"Applicant's mark MAN O'WAR when used in connection with golf items is just as likely, if not more so, to evoke the literal meaning 'man of war' than the name of a historical race horse. Registrant's mark would also connote 'man of war,' at least, when spoken."

In view of the "identity of sound" and the "lack of stylization" in Applicant' mark, the commercial impressions of the mark are similar. The minimal stylization of the registered mark was deemed insufficient to distinguish the marks.

Thus the Board concluded that the marks are similar, the goods related, and the channels of trade the same or overlapping. It therefore affirmed the refusal to register.

TTABlog comment: This particular application of the Albert Trostel doctrine (a/k/a the Mucky Duck doctrine) seems particularly irksome. One suspects that third party registrations may be found that include t-shirts and/or hats and almost any other product or service one can think of -- given the common practice of marketing or distributing t-shirts or hats emblazoned with one's trademark.

So does that mean that every trademark clearance search should include a check of t-shirt and hat registrations in class 25? And then a check for registrations that include t-shirts and your client's product? Isn't this a situation where Mucky Duck has run amok?

Text Copyright John L. Welch 2005.


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