When a Section 2(d) refusal is affirmed in an opinion of a mere eight pages, that case is a prime candidate for the “WYHA?” label. But wait! The application for GOLF WITH PURPOSE included not only clothing, but golf ball markers and golf tee marker in class 28, whereas the cited registration for GOLF WITH A PURPOSEcovered only clothing. Moreover, applicant argued that the marks have different connotations. Was there hope? Would you have appealed? In re Russell Ortiz, Serial No. 86817718 (November 22, 2017) [not precedential] (Opinion by Judge Thomas W. Wellington).

The class 25 goods were in part identical, As to applicant’s class 28 goods, The Examining Attorney submitted evidence establishing that golf shirts are related to golf ball and tee markers because these items are featured in retail and online stores that specialize in golf-related goods.

As to the marks, applicant argued that the inclusion of the article “A” in registrant’s mark is significant:

The differences in the use of the wording “purpose” instead of “a purpose” is not minor, and in fact distinguishes not only the appearance of Applicant’s mark from Registrant’s, but conveys a different meaning, as well. For example, to golf with purpose connotes the idea that there is a passion behind playing golf. In contrast, golf with “a purpose” connotes the idea that golf is for a specific charitable cause. *** In this case, “a purpose” for Registrant[‘s] mark is supporting a charitable organization for combatting cystic fibrosis.

The Board was unmoved, finding that consumers “will discern little, if any, different connotations conveyed by the marks.” “In both cases, consumers viewing the two extremely similar marks, will likely understand the marks in the same manner. That is, viewed in the context of identical clothes or related golf goods, the marks invoke a passion for or dedication to the sport of golf.”

And so the Board affirmed the refusal to register.

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TTABlog comment: What if the Miami Dolphins held a fan event called “Golf With a Porpoise”? Confusion? Dilution? Offsides?