Tom Cunningham v. Laser Golf Corporation (Now Known as Belair Golf)Tom Cunningham v. Laser Golf Corporation (Now Known as Belair Golf)
- Reporters:
- , , ,
- Before:
- Linn
Appellant Tom Cunningham seeks review of a final decision of the Trademark Trial and Appeal Board (“Board” or “TTAB”) canceling his registration for the mark LASERSWING, for golf clubs, in light of the appellee’s prior use and registration of the mark LASER for golf clubs and golf balls. See Laser Golf Corp. v. Tom Cunningham, Cancellation No. 26,-054, slip op. at 7, 1999 WL 421020 (TTAB June 21, 1999). Because the Board’s findings are supported by substantial evidence, we hold that the Board did not commit reversible error and affirm.
BACKGROUND
Cunningham produces a device that looks like a wood, a type of golf club. However, the device has a hollow plastic head that is not designed to impact golf balls. Rather, the device is used by golfers to practice and improve their golf swing with the aid of two light-emitting diodes of different colors contained in the
It is undisputed that Laser Golf Corp. (“Laser Golf’), the appellee, uses the mark LASER to market golf clubs and golf balls, and that in 1983 it received separate registrations for the mark LASER when used with either of these goods. These registrations are Reg. No. 1,243,793 for the mark LASER for golf clubs and Reg. No. 1,247,799, also for the mark LASER but for golf balls. The parties do not contest Laser Golfs priority. Laser Golf filed a petition to cancel Cunningham’s registration and the Board granted the petition, pursuant to
DISCUSSION
A. Standard of Review
A determination of likelihood of confusion is a legal conclusion based on underlying facts. See In re Dixie Restaurants, Inc., 105 F.3d 1405, 1406, 41 USPQ2d* 1531, 1533 (Fed.Cir.1997). This court reviews the legal conclusion without deference and the underlying factual findings for substantial evidence. See Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 1327, 54 USPQ2d 1894, 1897 (Fed.Cir.2000) (applying In re Gartside, 203 F.3d 1305, 53 USPQ2d 1769 (Fed.Cir.2000) to decisions of the TTAB).
B. Analysis
1. Cancellation Proceedings
The Lanham Act allows for cancellation of a Principal Register registration by anyone “who believes that he is or will be damaged . . . by the registration.”
Standing is the more liberal of the two elements and requires only that the party seeking cancellation believe that it is likely to be damaged by the registration. See Golden Gate, 332 F.2d at 188, 141 USPQ at 664 (finding standing, which requires only a belief in damage, but finding no likelihood of confusion); McCarthy, §§ 20:7, 20:41, 20:46. A belief in likely damage can be shown by establishing a direct commercial interest. See International Order, 727 F.2d at 1092, 220 USPQ at 1020 (finding sufficient the petitioner’s production and sale of merchandise bearing the registered mark); McCarthy, §§ 20:7, 20:46. In this case, as stated earlier, Laser Golf owns two prior registrations. These registrations and the products sold under the mark they register suffice to establish Laser Golf’s direct commercial interest and its standing to petition for cancellation of Cunningham’s LASERSWING mark.
Establishing the second element, a valid ground for cancellation, is simplified if the registered mark has been on the Principal Register for less than five years.
See International Order,
727 F.2d at 1091, 220 USPQ at 1020;
McCarthy,
§ 20:42.
2. The DuPont Requirements
In Application of E.I. DuPont DeNemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), a case also involving an appeal from the Board, one of our predecessor courts listed thirteen factors that are relevant in a likelihood of confusion analysis. See id. at 1361, 177 USPQ at 567. The thirteen factors are: (1) the similarity or dissimilarity of the marks in their en-tireties as to appearance, sound, connotation and commercial impression; (2) the similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use; (3) the similarity or dissimilarity of established, likely-to-continue trade channels; (4) the conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing; (5) the fame of the prior mark (sales, advertising, length of use); (6) the number and nature of similar marks in use on similar goods; (7) the nature and extent of any actual confusion; (8) the length of time during and conditions under which there has been concurrent use without evidence of actual confusion; (9) the variety of goods on which a mark is or is not used (house mark, “family” mark, product mark); (10) the market interface between applicant and the owner of a prior mark; (11) the extent to which applicant has a right to exclude others from use of its mark on its goods; (12) the extent of potential confusion, i.e., whether de minimis or substantial; and (13) any other established fact probative of the effect of use. See id.
Cunningham
1
argues that
DuPont
requires all thirteen listed factors to be analyzed. For support, Cunningham cites the following passage from
Bongrain Int’l (Am.) Corp. v. Delice de France, Inc.,
811 F.2d 1479, 1485, 1 USPQ2d 1775, 1779 (Fed.Cir.1987): ‘We approach that issue [of likelihood of confusion], of course, on the basis of the situation as a whole and in light, at least, of all 13 of the ‘DuPont factors’ upon which Bongrain relied before the board and here.”
Id.
Cunningham’s interpretation of
DuPont
goes too far.
Bongrain
simply acknowledged that all factors relevant to the likelihood of confusion issue and addressed by the evidence in the record must be considered. As the
DuPont
court explains, the relevant factors,
“when of record,
must be considered.”
DuPont,
476 F.2d at 1361, 177 USPQ at 567 (emphasis added);
see also Olde Tyme Foods, Inc. v. Roundy’s, Inc.,
961 F.2d 200, 202, 22 USPQ2d 1542, 1544 (Fed.Cir.1992) (factors must be considered “when relevant evidence is of record”);
Giant Food, Inc. v. Nation’s Foodservice, Inc.,
710 F.2d 1565, 1569, 218 USPQ 390, 393 (Fed.Cir.1983) (factors must be considered “when of record”). Thus, the obligation to consider a factor does not arise in a vacuum and only arises if there is evidence of record relating to that factor. The
Bongrain
court, which considered all of the factors “upon which Bongrain relied before the board and here,”
Bongrain,
811 F.2d at 1485, 1 USPQ2d at 1779, considered the
Cunningham also argues that the Board erred in its analysis of most of the DuPont factors. Cunningham admits that the Board analyzed, albeit briefly, factors 1, 2, 6, and 9. With regard to the remaining factors, however, Cunningham claims that the Board either failed to analyze them or expressly ignored relevant evidence relating to them. Cunningham also alleges that the Board erred in its analysis of factor one.
We disagree with Cunningham and, as explained below, hold that the Board satisfied the DuPont test by considering each of the DuPont factors for which evidence was presented in the record. We address each of these factors in turn.
a. Comparing the Marks — Factor One
The Board analyzed the two marks, LASER and LASERSWING, by first discussing “the shared presence of the term LASER,” and then discussing the impact of “[t]he addition of ‘SWING’ in respondent’s mark.” Laser Golf, slip op. at 6. The Board concluded that the addition of SWING was “insufficient to distinguish the two marks.” Id. Although Cunningham acknowledges that the Board analyzed the marks, thus complying with the first DuPont factor, he argues that the Board- did not provide any justification for dissecting the mark LASERSWING and that the Board erred as a matter of law by not analyzing the marks in their entireties.
We disagree with Cunningham. First, the Board was justified in examining each component of the mark LASERSW-ING and the effect of that component on the issue of likelihood of confusion as between the respective marks in their entire-ties. See In re National Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed.Cir.1985) (“[Tjhere is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.”); Sweats Fashions, Inc. v. Pannill Knitting Co., 833 F.2d 1560, 1566, 4 USPQ2d 1793, 1798 (Fed.Cir.1987) (“[I]t is not error in articulating reasons en route to a conclusion to indicate that some features of a mark are more distinctive than others.”). Second, in considering “[t]he addition of ‘SWING,’ ” Laser Golf, slip op. at 6, to LASER, the Board analyzed Cunningham’s mark LAS-ERSWING as a whole, as it properly should have. See National Data, 753 F.2d at 1058, 224 USPQ at 751.
Cunningham also argues that the two marks have significant differences. However, Cunningham’s argument concerns a factual finding, and there is substantial evidence supporting the Board’s finding that the marks are similar. First, as the Board found, because both marks begin with “laser,” they have “consequent similarities in appearance and pronunciation.” Laser Golf slip op. at 6. Second, the term “swing” is both common and descriptive. Cunningham admits that the term “swing” “is a common term used when referring to golf clubs,” and the Board quotes Cunningham as saying that the product is “a swinging club, so Laserswing just seemed logical,”’ Laser Golf slip op. at 4. These statements, which Cunningham does not deny making, recognize the descriptive nature of the component “swing.” Regarding descriptive terms, this court has noted that the “descriptive component of a mark may be given little weight in reaching a conclusion on likelihood of confusion.” National Data, 753 F.2d at 1060, 224 USPQ at 752.
b. Trade Channels — Factor Three
Cunningham argues that the Board ignored certain evidence regarding “differ-
After noting that Cunningham’s product and the goods of Laser Golf were “identical in part (golf clubs) and otherwise closely related,” Laser Golf, slip op. at 5, the Board held that “because neither petitioner nor registrant has limited the products identified in the respective registrations to any particular channels of trade or classes of purchasers, we must deem the goods to travel in all appropriate trade channels to all potential purchasers of such goods . . . [which includes] beginning as well as experienced golfers.” Laser Golf, slip op. at 5-6. The Board, thus, determined that such evidence of the difference between Cunningham’s product and an ordinary golf club was not probative given that Cunningham’s registration identifies simply “golf clubs” as the goods covered.
Our precedent requires the Board to look to the registration to determine the scope of the goods/services covered by the contested mark. See Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1493, 1 USPQ2d 1813, 1815 (Fed.Cir.1987); Dixie, 105 F.3d at 1407-08, 41 USPQ2d at 1534; Commerce Drug Co. v. Kirkman Labs., Inc., 59 C.C.P.A. 1085, 461 F.2d 833, 835, 174 USPQ 265, 267 (CCPA 1972); see also United States Dep’t of Commerce, Patent and Trademark Office, Trademark Manual of Examining Procedure, § 1207.01 (2nd ed., Rev. 1, Apr. 1997) (stating that the likelihood of confusion inquiry concerns the applicant‘s mark “when used on or in connection with the goods or services identified in the application”) (“TMEP ”). Proceedings before the Board are concerned with registrability and not use of a mark. Accordingly, the identification of goods/services statement in the registration, not the goods/services actually used by the registrant, frames the issue.
c. Conditions of Sales — Factor Four
Cunningham argues that the Board ignored certain evidence regarding “the importance of the conditions under which sales are made.” Specifically, Cunningham’s argument is that the Board failed to consider the sophistication of golfers as “brand conscious” consumers.
We agree that the Board did not address Cunningham’s statement that golfers are meticulous purchasers who distinguish between brands. As a result, the Board did not specifically consider the sophistication, that is, “[t]he discrimination and degree of care,” In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed.Cir.1993), of golfers. See Electronic Design & Soles, Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 718, 21 USPQ2d 1388, 1392 (Fed.Cir.1992) (stating that “[w]here the purchasers are the same, their sophistication is important and often dispositive”).
However, any error by the Board in not specifically considering the sophistication of golfers was harmless.
See
d. Factors 5, 7-8, and 10-13
Cunningham argues that the Board ignored certain “arguments as to absence of fame of the Appellee’s marks.” Cunningham does not identify the arguments that were allegedly ignored, but it is clear that the Board sufficiently addressed this factor. The Board expressly discounted any fame, stating that “a mark need not be ‘famous’ in order to be entitled to protection.” See Laser Golf, slip op. at 7. Thus, it can be inferred that the Board assumed that the prior mark was not famous, making a finding of likelihood of confusion harder to achieve. See Kenner Parker Toys Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 352-53, 22 USPQ2d 1453, 1456 (Fed.Cir.1992) (stating that famous marks enjoy more protection). Therefore, even if the Board had ignored arguments regarding the absence of fame, it would not have resulted in any harm.
With regard to actual confusion vel non, Cunningham argues that the Board ignored the “absence of actual confusion.” However, the Board addressed this factor and stated that it could not conclude that there had even been an opportunity for actual confusion. See Laser Golf, slip op. at 7. Furthermore, substantial evidence of record supports this finding; Cunningham admitted that sales of his product were only in the tens.
Concerning the market interface between Cunningham and Laser Golf, Cunningham argues that there “was no analysis at all as to the market interface.” DuPont fists several possible market interfaces, such as: (1) consent to register or use; (2) contractual provisions designed to preclude confusion; (3) assignment; and (4) laches and estoppel attributable to the challenger that would indicate lack of confusion. See DuPont, 476 F.2d at 1361, 177 USPQ at 567. There is no indication that any evidence or argument was submitted regarding any one of these market interfaces or any other market interface. Therefore, DuPont requires no consideration of this factor.
With regard to Cunningham’s right to exclude, Cunningham argues that the Board ignored the “relevance of descriptive use of the term ‘laser’ in golfing with respect to [sic, the] right to exclude.” However, this argument is unavailing because, as the Board noted, both marks begin with the term “laser” and Cunningham’s mark merely adds the term “swing.” See Laser Golf slip op. at 6. Therefore, any characterization of “laser” applies equally to both marks and Cunningham can only distinguish his mark based on the addition of the term “swing.”
Cunningham next argues that there was no analysis of the “extent of potential confusion.” As described above, however, the Board explained that the relevant goods of both parties were identical, based on the identification of goods in the respective registrations, and, as such, traveled in the same channels of trade to the same purchasers. See Laser Golf slip op. at 5-6. These findings are supported by substantial evidence.
Cunningham also argues that there was no analysis of the “evidence of use of the mark on the goods as another relevant factor.” Cunningham is apparently referring to the appearance of the mark as he uses it in commerce. He claims to distinguish his mark with such techniques as using particular colors and a particular font, using specific arrangements of lower and upper case, using colored whoosh stripes, and by the juxtaposition of the main brand name.
However, Cunningham’s argument is inapposite to our review of this cancellation proceeding. The record
3. Goods Sold in the Marketplace
The Board found the relevant goods of the two parties to be identical: “because neither petitioner nor registrant has limited the products identified in the respective registrations to any particular channels of trade or classes of purchasers, we must deem the goods to travel in all appropriate trade channels to all potential purchasers of such goods.” Laser Golf, slip op. at 5-6. Cunningham argues, however, that the Board erred in this conclusion because the law requires the Board to focus on the goods sold in the marketplace. For support, Cunningham cites section 2(d) of the Lanham Act, as well as Bongrain, Stock Pot Restaurant, Inc. v. Stockpot, Inc., 737 F.2d 1576, 222 USPQ 665 (Fed.Cir.1984), and Olde Tyme. Cunningham then points out that the goods that the parties sell in the marketplace are not identical.
First, Cunningham misstates the law regarding Board proceedings under section 2(d) of the Lanham Act. As explained earlier, the Board must look to the registrations themselves to determine the scope of the goods covered by the contested mark. See Canadian, 811 F.2d at 1493, 1 USPQ2d at 1815; Dixie, 105 F.3d at 1407-08, 41 USPQ2d at 1534; Commerce Drug, 461 F.2d at 835,174 USPQ at 267.
Second, Cunningham’s citations to
Bon-grain, Stock Pot,
and
Olde Tyme
are unavailing. Cunningham argues that in
Bon-grain
this court looked to the marketplace to determine likelihood of confusion. However,
Bongrain
is distinguishable because it dealt with the concurrent use of similar marks by two parties under an agreement between the parties whereby one used its mark on baked goods and the other used its mark on dairy products.
See Bongrain,
811 F.2d at 1481-82, 1 USPQ2d at 1776. Cunningham argues that in
Stock Pot
this court focused on the marks as they were used in commerce. However,
Stock Pot
is inapposite because the parties agreed that the marks were confusingly similar and the primary issue was whether there was a prior continuing use by the challenger.
See Stock Pot,
737 F.2d at 1578, 222 USPQ at 666. Cunningham argues that in
Olde Tyme
this court
4. Laser Golfs Evidentiary Burden
Cunningham correctly notes that Laser Golf had the burden of proving by a preponderance of the evidence that there was a likelihood of confusion between the two marks. Cunningham claims that Laser Golf did not meet that burden and, therefore, that the Board erred in finding for Laser Golf. Cunningham’s argument is that the Board’s opinion was too short to provide an adequate analysis reflecting satisfaction of the evidentiary burden by Laser Golf. This argument lacks merit. The Board’s opinion contains sufficient findings and reasoning to permit our review. Furthermore, “[w]e sit to review judgments, not opinions,” Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1540, 218 USPQ 871, 880 (Fed.Cir.1983), and all of Cunningham’s substantive arguments have failed to convince us that the Board’s judgment should be disturbed.
CONCLUSION
Because the Board committed no reversible error we affirm the Board’s cancellation of Cunningham’s LASERSWING mark.
AFFIRMED