Callaway Golf Co.

Trademark Trial and Appeal Board

Aug 9, 2001

No. 75389003 (T.T.A.B. Aug. 9, 2001)

8/9/01

Paper No. 15
TJQ

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Callaway Golf Company
________

Serial No. 75/389,003
_______

Michael A. Catania for applicant.

Jeffery C. Coward, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
_______

Before Hanak, Quinn and Wendel, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

An application was filed by Callaway Golf Company to
register the term STEELHEAD for “golf clubs.”1 Applicant
claims, pursuant to Section 2(f) of the Trademark Act, that
its mark has acquired distinctiveness.
The Trademark Examining Attorney has refused

1 Application Serial No. 75/389,003, filed November 12, 1997,
based on an allegation of a bona fide intention to use the mark
in commerce. Applicant subsequently filed an amendment to allege
use setting forth first use dates of August 12, 1998.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/389,003
2
registration under Section 2(e)(1) of the Trademark Act on
the ground that STEELHEAD, when used on golf clubs, is
generic and, thus, incapable of functioning as a source
identifying mark. The Examining Attorney further contends
that even if the term STEELHEAD is found not to be generic,
it is merely descriptive and the evidence of acquired
distinctiveness is insufficient to support registration on
the Principal Register.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney submitted briefs. An
oral hearing was not requested.
The Examining Attorney maintains that the term sought
to be registered is generic. More specifically, the
Examining Attorney asserts that the term is the name of a
type or category of golf club, namely a golf club with a
head made of steel (that is, according to the Examining
Attorney, a “steel head”). In support of the refusal, the
Examining Attorney submitted excerpts from printed
publications in the golf equipment field; and excerpts of
articles retrieved from the NEXIS database showing uses of
“steel head” (and variations thereof), “titanium head” and
“metal head” in connection with golf clubs.
Applicant argues that the term STEELHEAD is not
generic, but rather is no more than just merely
Ser No. 75/389,003
3
descriptive, and that the term has acquired distinctiveness
when used in connection with its golf clubs. Applicant
asserts that consumers associate the term with applicant,
and that competitors do not need to use the term to
describe their golf clubs. To show that STEELHEAD is
recognized as a trademark rather than a generic name,
applicant commissioned a survey, the results of which are
of record. In connection with its claim of acquired
distinctiveness, applicant submitted sales and advertising
figures covering use of the mark since August 11, 1998;
examples of promotional efforts, including trade show
appearances, catalogs, and brochures; two dealer
declarations;2 and examples of unsolicited publicity
regarding golf clubs marketed under the term STEELHEAD.
The record reveals that new technology and new ideas
continue to change the equipment with which golf is played.
The Examining Attorney submitted an excerpt from the book
David Graham’s Guide to Golf Equipment (1993), wherein this
professional golfer summed up golf clubhead materials as
follows:
Golf equipment comes in a
bewildering array of shapes and
materials providing golfers of all
abilities with the club that is right

2 Although applicant refers to “several executed Dealer
declarations,” only two are in the record.
Ser No. 75/389,003
4
for them, while making selection more
difficult. The quest for more distance
off the tee in particular has led
manufacturers to experiment with new
materials for clubheads, although
classic woods are still used today.

Among the most popular woods are
those now made of steel. Graphite is
increasingly being used, titanium has
emerged and there are even some
ceramic- and plastic-headed woods
about.

With these new materials comes a
variety of clubhead designs because, as
opposed to wood, weight distribution
can be varied enormously.

Also of record is an “Equipment Glossary” found in Golf
Illustrated (February 1993) which defines the term
“clubhead” as “the component of a club that is attached to
the shaft and contacts the ball” and “steel” as “a popular
material for making iron and metal wood heads, and also
shafts.”
The Examining Attorney also introduced 30 excerpts of
articles retrieved from the NEXIS database which, according
to the Examining Attorney, are representative of the 420
stories identified by his search for uses of “steel head”
in the golf field. Examples of the stories highlighted by
the Examining Attorney include the following:
According to Liquidmetal research, only
40 percent of the impact is transferred
by steel-head clubs. Titanium
Ser No. 75/389,003
5
transfers 60 percent of the impact
energy.
The Tampa Tribune, April 1, 1999

Suggested retail price for the steel-
head clubs (with steel shafts) is $679
per set.
The Palm Beach Post, February 3, 1999

“We’re seeing a lot of our customers
going to the smaller sizes and the
steel heads.”
Asheville Citizen-Times (Asheville,
NC), December 18, 1998

John Daly junks titanium woods, opts
for steel head.
The Denver Post, August 17, 1998

Lockenvitz said he sold only a half-
dozen titanium drivers so far compared
with “hundreds” of steel-headed clubs.
The Houston Chronicle, March 3, 1996

Four of the other articles include references to golf clubs
made by applicant, although the references are to “steel
head” in small letters.
Also of record are other representative NEXIS excerpts
which show, according to the Examining Attorney, that “golf
clubs are routinely classified and referred to by the
material composition of their club heads.” (Office action,
April 21, 2000, p. 2) The articles show uses of “titanium
head club,” “titanium-headed club,” “metal head club,” and
“metal-headed club.”
Ser No. 75/389,003
6
On the other side of the ledger is applicant’s
evidence submitted in support of its claim that the term
STEELHEAD is a source indicator functioning to identify
golf clubs originating from applicant. The evidence is in
the form of numerous exhibits, but no declaration or
affidavit accompanied them.3
As indicated above, applicant’s first use of the term
was on August 12, 1998. As of December 22, 1999, applicant
shipped throughout the United States almost $134.5 million
(at wholesale) of golf clubs bearing the term STEELHEAD.
This dollar amount equates to about 924,000 units.
During the first year of use of the term STEELHEAD,
applicant spent over $2.5 million in advertising in the
United States. Applicant placed advertising on national
television (e.g., ESPN, ABC, CBS, NBC, CNN and TBS).
Applicant also ran advertisements in printed publications
with nationwide circulation (e.g., Golf Digest, Sports
Illustrated, Golf Magazine and Golf Week), and the record
includes numerous examples of these advertisements.
Applicant further displayed its clubs at two annual major
trade shows for the golf industry.

3 The Examining Attorney did not view this as a problem, treating
all of applicant’s evidence to be credible and properly of
record.
Ser No. 75/389,003
7
Applicant has provided retailers with various point-
of-sale displays, catalogs and brochures for promotional
use. In addition, some of these retailers distribute their
own mail-order catalogs wherein applicant’s golf clubs are
sold under the term STEELHEAD. Annual circulation of these
catalogs numbers in the tens of millions, and sample pages
showing promotion of applicant’s golf clubs were submitted.
Two golf club dealers (who sell, among others,
applicant’s particular golf clubs) have submitted
declarations wherein each states that “[a]s a retailer of
golf clubs and golf accessories and having been in contact
with many purchasers of golf clubs, [I] state that a
substantial number of these purchasers would recognize the
subject mark [STEELHEAD] for a metal wood golf club head as
originating with [applicant].”
Applicant’s golf clubs also have been the subject of
widespread, unsolicited publicity. Applicant claims that
it is the largest manufacturer of golf equipment in the
world, and that any new product launch by it creates an
impact in the industry. Its golf clubs sold under the term
STEELHEAD were no exception, and the clubs have received a
good deal of coverage in magazines and newspapers
(including USA TODAY and The New York Times). Numerous
articles attesting to this publicity were submitted.
Ser No. 75/389,003
8
Last, but by no means least, applicant commissioned a
telephone survey, and the survey report was submitted. The
survey is patterned after a popular genericness survey,
also conducted by telephone, that has come to be known as a
“Teflon Survey.” E.I. du Pont de Nemours & Co. v. Yoshida
International, Inc., 393 F.Supp. 502, 185 USPQ 597
(E.D.N.Y. 1975). This type of survey has been accepted by
various courts, and we see no major problem (nor has the
Examining Attorney identified any problem) with the version
submitted in this case.4 See generally: J. T. McCarthy, 2
McCarthy on Trademarks and Unfair Competition, §12:16 (4th
ed. 2001).
The telephone survey was run in October 1999 by Dr.
Gerald L. Ford of Ford, Bubala & Associates of Huntington
Beach, California. The survey was conducted among a random
sample of individuals who subscribe to the publication Golf
Digest and who had played one or more rounds of golf during
the year prior to the survey. According to the survey
synopsis, the survey “focused on the understanding of the
principal significance, with respect to golf, of the word
“Steelhead.” (p. 1) The sampling frame for the

4 Having said this, we would add the often repeated observation
that “no survey is perfect.” Indeed, one might view the survey
universe here to be inappropriately limited to individuals more
likely to have been heavily exposed to applicant’s advertising.
Ser No. 75/389,003
9
survey was the total list of subscribers to the magazine
(1.5 million), and the survey sample was based on a random
selection of approximately 5,000 subscribers from this
list. The survey consisted of 326 telephone interviews.
The report indicates that the survey “provides results at a
95% level of confidence with a precision variance of +/-
5.43%.”
Assuming that the individual contacted by telephone
met the survey’s qualifications, the respondent was then
told5:
The research we are conducting
today is on common names and brand
names.

Most products or services have
both common names and brand names.
Common names tell what type of product
it is; for example, beer, automobile,
or instant coffee. Brand names tell
what brand it is; for example,
Budweiser, Chevrolet, or Maxwell House.

Now, if I were to ask you “Do you
understand the name washing machine to
be a common name or a brand name?,”
what would you say?
1. common name CONTINUE
2. brand name TERMINATE. THANK
RESPONDENT.
3. other TERMINATE. THANK
RESPONDENT.

Now, I am going to read you some
names and ask you to tell me whether

5 Any bold and underlining herein appears as in the original
survey report.
Ser No. 75/389,003
10
you understand each name to be a common
name, that is, the name that tells what
type of product it is, or a brand name,
that is, the name that tells what brand
it is.
For any of the names, if you don’t
have an opinion or don’t know, that is
an acceptable answer.

The respondent was then asked the following: “Now,
for each of the following ten names, would you please tell
me whether you understand the name to be a common name or a
brand name?” The list was read randomly. The response
distribution results are shown below in percent:

STP
Windsurfer
Margarine
Teflon
Jell-O
Refrigerator
Aspirin
Coke
American
Airlines

Gas Station
Common
Name

2.76
64.72
97.24
52.15
26.69
98.77
89.57
8.90
2.15

98.77
Brand Name

92.64
19.94
2.15
44.48
70.86
0.92
8.90
89.57
97.55

--
Both

--
1.23
--
1.23
1.84
--
1.53
1.23
--

--
Don’t Know

4.60
14.11
0.61
2.15
0.61
0.31
--
0.31
0.31

1.23
Ser No. 75/389,003
11

After, the respondent was asked: “With respect to golf,
for each of the following names, would you please tell me
whether you understand the name to be a common name or a
brand name?”6

Steelhead

Footjoy

Graphite
Common
Name

43.25

1.53

96.63
Brand Name

48.16

96.93

3.07
Both

0.61

--

--
Don’t Know

7.98

1.53

0.31

The issues on appeal are whether the term STEELHEAD is
merely descriptive or generic for applicant’s golf clubs
and, alternatively, if such term is not generic but rather
merely descriptive, whether it has acquired
distinctiveness. As indicated earlier, applicant has
conceded the mere descriptiveness of the term sought to be

6 This follow-up question presents a twist on a typical “Teflon
Survey.” In this connection, we take judicial notice of the
dictionary definition of the term “steelhead”: “a large-sized
silvery anadromous rainbow trout.” Webster’s New International
Dictionary (unabridged ed. 1993) Given the fact that “steelhead”
is a name of a fish, some respondents may well have classified
the term as a common name if the term appeared in the first list
of terms. By way of example, the same likely would be true of
the term “Arrow.” Although the term is a common name (as in “bow
and arrow”), it is also a brand name as applied to shirts. Thus,
inasmuch as “steelhead” is a dictionary term, we see no problem
with the follow-up question that directs the respondents’
attention to the significance of “Steelhead” as it pertains to
golf.
Ser No. 75/389,003
12
registered, both in its brief (p. 3) and by its resort to
Section 2(f). In re Leatherman Tool Group, Inc., 32 USPQ2d
1443 (TTAB 1994).
We turn first to the issues of whether the term
STEELHEAD is generic, or whether it is just merely
descriptive, when used on golf clubs. A mark is merely
descriptive if, as used in connection with the goods, it
describes, i.e., immediately conveys information about, an
ingredient, quality, characteristic, feature, etc. thereof,
or if it directly conveys information regarding the nature,
function, purpose, or use of the goods. See: In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978);
In re Eden Foods Inc., 24 USPQ2d 1757 (TTAB 1992); and In
re American Screen Process Equipment Co., 175 USPQ 561
(TTAB 1972). The issue is not determined in a vacuum, but
rather the mere descriptiveness of the mark is analyzed as
the mark is used in connection with the goods. A mark is a
generic name if it refers to the class or category of goods
on or in connection with which it is used. In re Dial-A-
Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807
(Fed. Cir. 2001), citing H. Marvin Ginn Corp. v.
International Association of Fire Chiefs, Inc., 782 F.2d
987, 228 USPQ 528 (Fed. Cir. 1986). The test for
determining whether a mark is generic is its primary
Ser No. 75/389,003
13
significance to the relevant public. Section 14(3) of the
Act; In re American Fertility Society, 188 F.3d 1341, 51
USPQ2d 1832 (Fed. Cir. 1999); Magic Wand Inc. v. RDB Inc.,
940 F.2d 638, 19 USPQ2d 1551 (Fed. Cir. 1991); and H.
Marvin Ginn Corp. v. International Association of Fire
Chiefs, Inc., supra. The United States Patent and
Trademark Office has the burden of establishing by clear
evidence that a mark is generic and thus unregistrable. In
re Merrill Lynch, Pierce, Fenner and Smith, Inc., 828 F.2d
1567, 4 USPQ2d 1141 (Fed. Cir. 1987). Evidence of the
relevant public’s understanding of a term may be obtained
from any competent source, including testimony, surveys,
dictionaries, trade journals, newspapers, and other
publications. In re Northland Aluminum Products, Inc., 777
F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985).
With respect to genericness, the type or category of
goods at issue is golf clubs or, more specifically, golf
clubs with club heads composed of cast stainless steel.
The record also shows that applicant uses the term
STEELHEAD in connection with its woods, rather than irons,
and such woods have been referred to as “stainless steel
metal woods.”
We next turn to the second step of the Ginn inquiry,
that is, whether the relevant public understands the term
Ser No. 75/389,003
14
STEELHEAD to refer primarily to the type or category of
goods. The relevant public here comprises golfers. Upon
review of the entire record, we conclude that golfers do
not understand the term STEELHEAD to refer primarily to a
type of golf club.
At first glance, the present case might be viewed by
some as a case falling within the parameters of In re Gould
Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987).
That decision provides that where a term is a “compound
word” (such as SCREENWIPE in that case, or STEELHEAD in the
present case), the Office may satisfy its burden of proving
a term to be generic by providing evidence that each of the
constituent words is generic, and that “the separate words
joined to form a compound have a meaning identical to the
meaning common usage would ascribe to those words as a
compound.” Id. at 1110. The Gould test “is applicable
only to ‘compound terms formed by the union of words’ where
the public understands the individual terms to be generic
for a genus of goods or services, and the joining of the
individual terms into one compound word lends ‘no
additional meaning to the term.’” In re Dial-A-Mattress
Operating Corp., supra at 1810.
The Examining Attorney provided dictionary definitions
of the words “steel” and “clubhead,” as well as examples of
Ser No. 75/389,003
15
generic uses by the media. As pointed out by the Federal
Circuit, such evidence may satisfy the burden of proving a
term to be generic. In re Dial-A-Mattress Operating Corp.,
supra at 1810. In the present case, however, this evidence
is contravened by the other evidence of record that, at the
very least, presents a mixed record and that, moreover,
raises doubt about the genericness of the term STEELHEAD
when used in connection with golf clubs. We find this
especially to be the case in light of the survey results.
That is to say, the survey, which shows results that are
pretty evenly divided, establishes that it is not clear cut
as to whether the relevant public views STEELHEAD as a
brand name or a generic term.
The record includes the Examining Attorney’s evidence
of thirty uses of “steel head” in a generic manner by the
media. These uses include four references to applicant’s
golf clubs. The Examining Attorney’s evidence is countered
by applicant’s evidence, including many uses by the print
media of “Steelhead” (the first letter being capitalized)
in making reference to applicant’s golf clubs.
There are no instances of a competitor in the trade
using “steel head” or “steelhead” in a generic manner. In
point of fact, the record includes a comparative
advertisement wherein a competitor, in comparing its golf
Ser No. 75/389,003
16
clubs to applicant’s, specifically referred to applicant’s
model as “Steelhead®”; the bottom of the advertisement
reads that “Steelhead is a registered trademark of the
Callaway Golf Company.”7
In addition, there is not a single instance where
applicant has clearly used the term STEELHEAD in a generic
fashion. Rather, the record is replete with applicant’s
advertisements and other materials showing prominent use of
STEELHEAD in the manner of a trademark.8
Of considerable significance in the present case is
the survey. As in the original “Teflon Survey,” the
respondents in applicant’s survey were quite good at
sorting out brand names from common names. Although the
Examining Attorney is technically correct in viewing the
survey results relating to STEELHEAD as a statistical tie
(taking into account the precision variance), the simple
fact is that a substantial part (over 48%) of the relevant
purchasing public view the term STEELHEAD as a trademark,
and not as a generic name. The survey by itself raises a

7 The reference to STEELHEAD as a registered trademark is, of
course, incorrect at this juncture.
8 The Examining Attorney makes the point that applicant
consistently uses the mark BIG BERTHA STEELHEAD, and that such
use “would likely lead consumers to believe that STEELHEAD simply
refers to the class or type of club (i.e., that the golf club has
a steel head as opposed to a titanium head, etc.).” (brief, pp.
16-17) This point is unpersuasive given the fact that more than
one mark may be used in connection with a single product.
Ser No. 75/389,003
17
doubt regarding genericness, and any doubt in determining
registrability is resolved in favor of applicant. In re
Volvo White Truck Corp., 16 USPQ2d 1417, 1421 (TTAB 1990).
As noted above, the Office bears the burden of proof
and genericness must be shown by clear evidence.
Genericness is a fact-intensive determination and the
Board’s conclusion must be governed by the record which is
presented to it. We have serious concerns here about the
genericness of applicant’s term STEELHEAD. It is the
record evidence about purchasers’ perceptions, however,
that controls the determination, not general legal rules or
our own subjective opinions. The mixed record before us
does not clearly place applicant’s term STEELHEAD in the
category of a generic name. In re Merill Lynch, supra at
1143.
Inasmuch as the term STEELHEAD is merely descriptive
when applied to golf clubs, a conclusion conceded by
applicant, we turn to consider the sufficiency of the
evidence in support of applicant’s claim of acquired
distinctiveness under Section 2(f). Whether a term has
become distinctive is a question of fact that must be
determined based on the evidence of record. G. H. Mumm &
Cie Desnoes & Geddes, Ltd., 917 F.2d 1292, 16 USPQ 2d 1635
(Fed. Cir. 1990). Whether the quality and character of
Ser No. 75/389,003
18
evidence is sufficient to prove distinctiveness is
necessarily a subjective determination that depends to a
large extent on the nature of the term and the
circumstances surrounding the use of the term. Roux
Laboratories, Inc. v. Clairol, Inc., 427 F.2d 823, 166 USPQ
34 (CCPA 1970). While some terms may never acquire
distinctiveness no matter how long they have been used,
others may acquire such significance in a relatively short
period of time, sometimes even less than five years.
Hunter Publishing Co. v. Caulfield Publishing Ltd., 1
USPQ2d 1996, 1999 (TTAB 1986). See: McCarthy, McCarthy on
Trademarks and Unfair Competition, supra at §15:56 [“With
the advent of massive advertising campaigns on television
and in the national news magazines, a new trademark may
achieve wide usage and ‘secondary meaning’ within a matter
of days or weeks, compared to the many years required in
the days of more leisurely advertising.”].
Although applicant has used the term STEELHEAD since
only 1998, applicant has enjoyed considerable success with
its golf clubs sold thereunder. Sales in the United States
have exceeded $134 million at wholesale, and advertising
expenditures are in excess of $2.5 million. The term has
been used consistently by applicant as a trademark,
prominently appearing on golf clubs and in nationwide
Ser No. 75/389,003
19
advertisements. The term has appeared annually in tens of
millions of catalogs through which applicant’s golf clubs
are sold. Applicant’s golf clubs bearing the term sought
to be registered have been featured in numerous unsolicited
articles in national publications. The record includes
many of these articles and, except in a relatively few
instances, the term STEELHEAD is used or referred to as a
trademark of applicant. At least one competitor and two
golf equipment dealers have recognized the term as a
trademark of applicant.
Finally, although applicant’s survey was submitted in
connection with the issue of genericness, the acquired
distinctiveness of the term STEELHEAD among the relevant
purchasing public can be inferred from the results. The
survey respondents were given the meanings of “brand name”
and “common name.” By categorizing the term STEELHEAD as a
brand name, 48% of the respondents were saying, in effect,
that they associated the term with the product of only one
company. The fact that they were not asked to identify the
company is of no moment given that consumers need only
identify the term with one source, albeit anonymous. The
substantial exposure to the relevant public of the term
STEELHEAD as a trademark for applicant’s golf clubs has
Ser No. 75/389,003
20
resulted in a significant number of these golfers viewing
STEELHEAD as a brand name.
In view of applicant’s continuous use (albeit less
than five years), significant sales and advertising
expenditures, substantial publicity in the national media,
and brand name recognition among consumers, we find that
applicant has established acquired distinctiveness of
STEELHEAD as its mark for golf clubs.
Given the current record which is, at the very least,
mixed, we find that this application is appropriate for
publication. Any entity in the industry that believes it
would be damaged by the registration will have an
opportunity to oppose the registration of the term. On a
different record, such as might be adduced by a competitor
in an opposition proceeding, we might arrive at a different
result.
Decision: The refusal to register is reversed.