Dominant Golf, LLC

Trademark Trial and Appeal Board

Jul 25, 2016

No. 86378158 (T.T.A.B. Jul. 25, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: July 25, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Dominant Golf, LLC
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Serial No. 86378158
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Matthew H. Swyers of The Trademark Company, PLLC
for Dominant Golf, LLC.
Tiffany Y. Chiang, Trademark Examining Attorney, Law Office 113,
Odette Bonnet, Managing Attorney.
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Before Taylor, Lykos and Greenbaum,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
Dominant Golf, LLC (“Applicant”) seeks to register on the Principal Register the
mark Tour Tac in standard characters for “[g]olf club grips” in International Class
28.1
The Trademark Examining Attorney refused registration of Applicant’s mark
pursuant to Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the
ground that Applicant’s mark so resembles the registered mark TOURNA TAC in

1 Application Serial No. 86378158, filed August 27, 2014, under Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a), alleging June 1, 2014 as the date of first use anywhere and in
commerce.
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standard characters for “[g]rips for sports equipment in the nature of tape wrap” in
International Class 28,2 that, when used on or in connection with Applicant’s
identified goods, it is likely to cause confusion or mistake or to deceive.
When the refusal was made final, Applicant appealed and requested
reconsideration. The Trademark Examining Attorney maintained the refusal to
register and denied the request for reconsideration. Thereafter, the appeal was
resumed and is now briefed.
For the reasons set forth below, we affirm the Section 2(d) refusal.
I. Applicable Law
We base our determination under Section 2(d) on an analysis of all of the
probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”). See
also In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203
(Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key
considerations are the similarities between the marks and the similarities between
the goods. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir.
2004); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976). These factors and others are discussed below. See M2 Software, Inc. v.
M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944 (Fed. Cir. 2006) (even within du
Pont list, only factors that are “relevant and of record” need be considered).

2 Registration No. 3830030, issued on August 10, 2010 on the Principal Register; alleging
January 14, 2008 as the date of first use anywhere and June 3, 2008 as the date of first use
in commerce; Section 8 and 15 affidavit and declaration accepted and acknowledged.
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A. The Marks

We commence with the first du Pont likelihood of confusion factor which involves
an analysis of the similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression. See Palm Bay Imports,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005). “The proper test is not a side-by-side comparison of the marks,
but instead ‘whether the marks are sufficiently similar in terms of their commercial
impression’ such that persons who encounter the marks would be likely to assume a
connection between the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668
F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (quoting Leading Jewelers Guild,
Inc. v. LJOW Holdings, LLC, 82 USPQ2d 1901, 1905 (TTAB 2007)). The focus is on
the recollection of the average purchaser, who normally retains a general rather than
a specific impression of trademarks. In re Binion, 93 USPQ2d 1531 (TTAB 2009);
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). Our analysis cannot
be predicated on dissection of the involved marks. Stone Lion Capital Partners, LP v.
Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014). Rather,
we are obliged to consider the marks in their entireties. Id. See also Franklin Mint
Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is
axiomatic that a mark should not be dissected and considered piecemeal; rather, it
must be considered as a whole in determining likelihood of confusion.”).
Applicant argues that the involved standard character marks Tour Tac and
TOURNA TAC have “clear separate and distinct connotations” as well as visual
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differences, notably the addition of the suffix “-na” to Registrant’s mark. Applicant’s
Brief, p. 10; 4 TTABVUE 10. As Applicant contends, the marks project different
meanings and commercial impressions because the word “tour” in its applied-for
mark will be understood as a “traveling sporting event” or “the PGA tour”, whereas
the coined term “tourna” in the cited registration is more likely to be perceived as
either “foreign in nature akin to an Italian word” or as an abbreviation for the word
“tournament.” Id.
Applicant’s arguments are unconvincing. Both marks are similar in construction
and sound. Each are comprised of two terms, beginning with the same word or letter
string, TOUR followed by the identical term TAC. The sole distinction is that
Registrant’s mark includes “-NA” after “TOUR” resulting in TOURNA, a coined term
with no English meaning.3 Such a slight difference in sound and appearance does not
obviate the similarities of the marks. See, e.g., Crocker Nat’l Bank v. Canadian
Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom.
Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d
1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and
COMMUNICASH confusingly similar). Consumers are apt to focus on TOUR as the
recognizable word within the term TOURNA. The word “tour” is defined as “a journey
made by a sports team, in which they play in several different places” and “a round
of events in which top professionals compete.”4 Alternatively, consumers may view

3 See the search results for “tourna” from the online version of the Oxford Dictionaries
(www.oxforddictionaries.com) attached to December 19, 2014 Office Action.
4 See id. (definition of “tour”).
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TOURNA as a shortened version of the word “tournament,” which also projects the
connotation and commercial impression of a sporting competition.5 TAC is a
recognized an abbreviation for “tactical”, meaning “characterized by adroitness or
skill.”6 Thus, when considered as a whole, both Applicant’s mark TOUR TAC and
Registrant’s TOURNA TAC are similar in appearance, sound, connotation and
commercial impression. Both marks imply that the identified products are designed
to improve a player’s adroitness or skill in sport competitions. The first du Pont factor
therefore weighs in favor of finding a likelihood of confusion.
B. The Goods
The next step in our analysis is a comparison of the goods identified in Applicant’s
application vis-à-vis the goods identified in the cited registration, the second du Pont
factor. See Stone Lion, 110 USPQ2d at 1161; Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See
also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed.
Cir. 2002). It is settled that it is not necessary that the respective goods be identical
or even competitive in order to find that they are related for purposes of our likelihood

5 We grant the Examining Attorney’s request in her appeal brief that the Board take judicial
notice of the attached dictionary definition of “tournament” as a “series of contests in which
a number of contestants compete and the one that prevails through the final round or that
finishes with the best record is declared the winner” from the online version of the American
Heritage Dictionary of the English Language (5th ed. 2015). See In re Hotels.com, L.P.,
87USPQ2d 1100, 1103 (TTAB 2007) (judicial notice of definition from The American Heritage
Dictionary of the English Language, retrieved from bartleby.com website), aff’d, 573 F.3d
1300, 91 USPQ2d 1532 (Fed. Cir. 2009)
6 See search results for “tac” from Abbreviations (www.abbreviations.com) and definition of
“tactical” from American Heritage Dictionary of the English Language (5th ed. 2015)
attached to December 19, 2014 Office Action.
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of confusion analysis. The respective goods need only be “related in some manner
and/or if the circumstances surrounding their marketing [be] such that they could
give rise to the mistaken belief that [the services] emanate from the same source.”
Coach Servs., 101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d
1715, 1724 (TTAB 2007)). See also In re Martin’s Famous Pastry Shoppe, Inc., 748
F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d
1386, 1388 (TTAB 1991). Evidence of relatedness may include news articles and/or
evidence from computer databases showing that the relevant goods/services are used
together or used by the same purchasers; advertisements showing that the relevant
goods/services are advertised together or sold by the same manufacturer or dealer;
and/or copies of prior use-based registrations of the same mark for both applicant’s
goods/services and the goods/services listed in the cited registration. See, e.g., In re
Davia, 110 USPQ2d 1810, 1817 (TTAB 2014) (finding pepper sauce and agave related
where evidence showed both were used for the same purpose in the same recipes and
thus consumers were likely to purchase the products at the same time and in the
same stores). The issue is not whether purchasers would confuse the goods, but rather
whether there is a likelihood of confusion as to the source of these goods. L’Oreal S.A.
v. Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012); In re Rexel Inc., 223 USPQ 830
(TTAB 1984).
Applicant argues that the involved goods are unrelated because its products
consist of “highly specialized grips manufactured exclusively for golf clubs”, whereas
Registrant provides “tape to assist generally for gripping of unspecified sports
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equipment.” Applicant’s Brief, p. 12; 4 TTABVUE 13. Applicant’s reasoning is flawed.
Because Registrant’s identification “[g]rips for sports equipment in the nature of tape
wrap” is broadly worded, it encompasses tape wrap for any type of sports equipment,
including golf clubs. As the evidence submitted by the Examining Attorney
summarized below shows, it is not uncommon for Applicant’s and Registrant’s goods
to be used together and therefore constitute complementary products:
“Grip size can have a visible effect upon your shot pattern and shaping, so
proper grip size is very important. The sizing chart below shows how mixing
grip core size with shaft size can “customize” grips. Also, grips can be built
up by adding wraps of tape to the shaft – one wrap will increase grip size
by 1/64, two wraps 1/32, etc. Or the easy way to achieve an oversized grip
is to start with one of Golf Pride’s Midsize models. And no guesswork is
needed.” Golf Pride Grips (www.golfpridegrips.com).

“I would like to know how many extra wraps of tape would make a
standard grip the equivalent of a midsize? … It is important to know what
core size you grips are....either .60 (M60) or .580 (M58)........both are
considered standard, most are .60…Shafts are generally .60 also, but not
always. See if you can find what size shafts you have…Remember, masking
tape is used for building up grips, not double sided grip tape. Only the
final layer is grip tape. And the final layer of grip tape is not included as
one of the build up layers. Read the notes on the right side of the diagram.”
GolfWRX (www.golfwrx.com).

“TOO LOOSE? EASILY INCREASE THE THICKNESS OF YOUR GOLF
GRIP WITH TAPE… If you don't want to spend the money or have the
potential hassle of completely re-gripping your clubs, you can use tape to
adjust the diameter of your grip. Using tape to change the diameter of
your grip works especially well because wrapping layers of tape around
your grips makes very small adjustments. In fact, each layer of tape
you wrap around your grip will change the diameter of your grip by 1/64th
of an inch. While that might not sound drastic, believe me, you'll notice the
difference with a layer or two.” PURE grips (www.puregrips.com).

See Denial of Request for Reconsideration dated October 19, 2015 (emphasis added).
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In addition, the Examining Attorney made of record third-party, used-based
registrations showing that the same entity has registered a single mark identifying
both Applicant’s and Registrant’s goods or the legal equivalent thereof. By way of
illustration, note particularly the following underscored items:7
Registration No. 2004619 for the typed mark CLUB CHAMP for “golf
putting cups, putting mats, chipping and driving mats and nets, brush
for cleaning golf balls, tethered golf balls, golf bag covers, golf bag tags,
golf ball retrievers, golf club grip tape, golf club hand grips, golf club head
covers, golf tees, golf chipping nets, golf ball cleaners, golf club cleaning
brushes, golf putting cups, golf spikes, golf spike wrenches, golf club
swing weights, golf bag travel covers” in International Class 28;

Registration No. 2906911 for the typed mark AGGRESSIVE GOLF for
“golf bags, golf bag tags, golf bag covers, golf balls, golf tees, golf ball
markers, golf ball retrievers, non-motorized golf carts, golf clubs, golf
irons, golf putters, golf club heads, golf club inserts, golf club shafts, head
covers for golf clubs, hand grips for golf clubs, grip tapes for golf clubs,
golf flags, golf gloves, and golf accessory pouches” in International Class
28;

Registration No. 3778553 for the standard character mark DEAD
CENTER GOLF for “Covers for golf clubs; Divot repair tools; Fitted
covers for non-motorized golf carts; Fitted head covers for golf clubs; Golf
accessory pouches; Golf bag covers; Golf bag pegs; Golf bag tags; Golf
bags; Golf ball markers; Golf ball retrievers; Golf ball sleeves; Golf balls;
Golf club bags; Golf club covers; Golf club grips; Golf club heads; Golf club
inserts; Golf club shafts; Golf clubs; Golf flags; Golf gloves; Golf irons;
Golf putter covers; Golf putters; Golf putting aids, namely, line and
weight; Golf tee markers; Golf tees; Golf towel clips for attachment to golf
bags; Golf training equipment, namely, a golf training cage; Grip tapes
for golf clubs; Hand grips for golf clubs; Head covers for golf clubs; Impact
markers in the nature of pressure sensitive reusable impact labels for
attachment to the head of a golf club to indicate where the club hits the
ball; Modular foam prefabricated miniature golf courses and putting
surfaces; Non-motorized golf carts; Putting practice mats” in
International Class 28;

7 In making our determination, we did not consider Registration Nos. 3715640 and
3716169 which were cancelled on July 1, 2016.
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Registration No. 3862570 for the stylized mark IKASU for “Golf
equipment, namely, golf bags; golf balls; golf club heads; golf club inserts;
golf club shafts; golf clubs; grip tapes for golf clubs; hand grips for golf
clubs; golf gloves; golf accessory pouches; golf bag covers; golf bag tags;
golf ball markers; golf irons; golf putter covers; golf putters; golf tee
markers; golf tees” in International Class 24; and

Registration No. 4535057 for the standard character mark ID GRIPS for
“Hand grips for golf clubs; grip tapes for golf clubs, baseball bats, tennis
rackets, lacrosse sticks and hockey sticks; hand grips for baseball bats,
tennis rackets, lacrosse sticks and hockey sticks” in International Class
28.
See June 24, 2015 Final Office Action (emphasis added). As a general proposition,
although use-based third-party registrations alone are not evidence that the marks
shown therein are in use or that the public is familiar with them, they nonetheless
may have probative value to the extent they may serve to suggest that the goods are
of a kind that emanate from a single source. See 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); and In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467,
1470 n.6 (TTAB 1988).
We further direct our attention to the Examining Attorney’s evidence obtained
from third-party Internet websites showing that golf club grips and golf grip tape are
sold together, highlighting the following:
Global Tour Golf (http://store.ggolf.com): An online retailer and
manufacturer of golf equipment offering golf grips and golf grip tape,
under the same mark Global Tour Golf.

JumboMax (www.jumbomax.com): An online retailer and
manufacturer of golf equipment offering golf grips and grip tape, under
the same mark JUMBOMAX.

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Overstock (www.overstock.com): An online retailer selling a variety of
goods showing Golf Pride offering golf grips and grip tape as a packaged
unit - “Grip kit includes the following: 13 grips, 13 strips of 2 [inches]
double-sided grip tape, 4 oz bottle of grip solvent, rubber vise clamp”)
and Karma also offering golf grips and grip tape as a packaged unit.

Hireko (www.hirekogolf) an online retailer of golf equipment showing
Taylor Made offering a “Grip Kit” comprised of golf grips and grip tape
as a packaged unit and Black Widow offering a “Grip Kit” comprised of
golf grips and grip tape as a packaged unit, and explaining that golf
grip installation required grip tape.

See June 24, 2015 Final Office Action. As the aforementioned evidence demonstrates,
it is not uncommon for manufacturers of golf equipment to produce and offer for sale
golf club grips and tape wrap under the same mark. This constitutes further evidence
that consumers may expect to find both Applicant’s and Registrant’s goods as
identified in the involved application and cited registration as emanating from a
common source, and as such, the goods are closely related.
In view of the evidence of record, we find that the goods identified in the
application and registration are closely related and complimentary in nature. Both
Applicant’s and Registrant’s goods serve the same function of improving or
strengthening a golf player’s grip. As such, the second du Pont factor also weighs in
favor of finding a likelihood of confusion.
C. Trade Channels
Next we consider established, likely-to-continue channels of trade, the third du
Pont factor. Because the identifications in the application and cited registration for
the mark have no restrictions on channels of trade, we must presume that the goods
travel in all channels of trade appropriate for such goods, which the record shows
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include online retailers specializing in golf products. See 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)).
See also June 24, 2015 Final Office Action (evidence summarized above from third
party web sites). In addition, both parties’ goods may be encountered by the same
prospective consumers, namely golf enthusiasts seeking to either strengthen or
adjust the size of the golf club grip.
As such, the third du Pont factor regarding the similarity or dissimilarity of
established, likely to continue trade channels also favors a finding of likelihood of
confusion.
D. Actual Confusion
Lastly, Applicant points to the absence of evidence of actual confusion. A showing
of actual confusion would of course be highly probative, if not conclusive, of a
likelihood of confusion. The opposite is not true, however. The lack of evidence of
actual confusion carries little weight. J.C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d
960, 144 USPQ 435, 438 (CCPA 1965). The issue before us is the likelihood of
confusion, not actual confusion. Herbko Int’l Inc. v. Kappa Books Inc., 308 F.3d 1156,
64 USPQ2d 1375, 1380 (Fed. Cir. 2002) (actual confusion not required). Further, any
suggestion that there has been no actual confusion between the marks based on the
coexistence of Applicant’s mark and the cited registration is entitled to little probative
value in the context of an ex parte appeal. In re Majestic Distilling Co., Inc., 65
USPQ2d at 1205. Therefore, this du Pont factor is neutral.
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II. Conclusion
After considering all of the evidence of record and arguments pertaining to the
du Pont likelihood of confusion factors, the first, second and third du Pont factors
discussed above favor a finding of likelihood of confusion. The remaining factor
discussed above is neutral, and we treat as neutral any du Pont factors for which
there is no evidence of record. We therefore find that there is a likelihood of confusion
between Applicant’s mark Tour Tac in standard characters for “[g]olf club grips” and
Registrant’s mark TOURNA TAC also in standard characters for “[g]rips for sports
equipment in the nature of tape wrap” in International Class 28.
Decision: The Section 2(d) refusal is affirmed.