Laser Golf Corp.v.Tom Cunningham

Trademark Trial and Appeal Board

Jun 21, 1999

No. 92026054 (T.T.A.B. Jun. 21, 1999)

Paper No. 27
PTH
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JUNE 21,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Laser Golf Corporation, by mesne changes of
name from Ram Golf Corporation
v.
Tom Cunningham
_____
Cancellation No. 26,054
_____
James P. Ryther of Rudnick & Wolfe for Laser Golf
Corporation.
Robert D. Fish of Crockett & Fish for Tom Cunningham.
_____
Before Seeherman, Hairston and Chapman, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
Laser Golf Corporation has petitioned to cancel the
registration owned by Tom Cunningham for the mark LASERSWING
for golf clubs.1
As grounds for cancellation, petitioner alleges that
since at least as early as 1982, petitioner and its licensee

1 Registration No. 2,025,118 issued December 24, 1996; alleging a
date of first use of January 29, 1993 and a date of first use in
commerce of June 18, 1993.
Cancellation No. 26,054
2
have used the registered mark LASER for golf clubs2 and golf
balls3; that respondent’s mark, when used in connection with
his goods, so resembles petitioner’s previously used and
registered mark as to be likely to cause confusion; and that
respondent has not used the mark LASERSWING in connection
with the goods recited in the registration, namely, golf
clubs.4
Respondent, in his answer, has denied the salient
allegations of the petition for cancellation.
The record consists of the pleadings; the file of the
registration sought to be canceled, trial testimony (with
exhibits) taken by both parties; petitioner’s notice of
reliance on status and title copies of its pleaded
registrations and the discovery deposition of respondent,
Tom Cunningham; and several excerpts taken from the NEXIS
data base and the Internet which were submitted by
stipulation of the parties.5

2 Registration No. 1,243,793 issued June 28, 1983; Sections 8 &
15 affidavit filed.
3 Registration No. 1,247,799 issued August 9, 1983; Sections 8 &
15 affidavit filed.
4 The ground of non-use on the goods recited in the registration
was added by an amended petition for cancellation.
5 This evidence consists of excerpts of articles taken from the
NEXIS data base which refer to “laser golf club[s];” an article
which appeared at the CNN website with the headline “Laser-
straight drive at No. 16 saved day for Love;” an advertisement
which appeared on the Internet for an electronic flying disc
known as the “Ultimate Laser Disc;” information about
respondent’s product from respondent’s web site; and a listing of
products, one of which is respondent’s, that may be ordered from
the web site of “GolfAidMall.” There is nothing in the
stipulation as to the relevance of any of these materials, and
Cancellation No. 26,054
3
According to the record, petitioner markets a full
range of golf products including golf clubs, putters,
wedges, woods, golf training aids, golf balls, golf
clothing, caps, rain wear, and umbrellas. Petitioner’s
president, James Hansberger, testified that petitioner and
its licensee have continuously used the LASER mark on golf
clubs and golf balls since the dates set forth in its
registrations. Petitioner’s products are sold in golf shops
and sporting goods stores throughout the United States.
Petitioner has a sales force of approximately 500 sales
representatives who call on the trade. Petitioner
advertises its products in golfing publications and through
regular television commercials and infomercials. Also,
petitioner’s LASER golf clubs and golf balls have appeared
in catalogues and sales brochures. According to Mr.
Hansberger, the promotion of golf products is cyclical in
nature, i.e., different lines of products are promoted
during different time periods. Mr. Hansberger testified
that petitioner heavily promoted its LASER golf clubs and
golf balls from 1988 to 1991. Petitioner’s sales of LASER
golf clubs totaled approximately $9 million in 1990; $8
million in 1991, and $5 million in 1992.6

although it appears that it was respondent who submitted the
stipulation, he did not make reference to any of these materials
in his brief on the case.
6 Petitioner offered sales figures for these years only.
Cancellation No. 26,054
4
Respondent’s product, which is designed to improve a
golfer’s swing, is a device which has the appearance of a
Cancellation No. 26,054
5
golf club since it has a head and a shaft. However, it is
not intended to be used to hit golf balls. The head of
respondent’s product is hollow and a battery and light
emitting diodes are mounted therein. A user, when swinging
this device, can track the form of his or her swing by
observing the path of movement of light during the swing and
comparing that path with a preferred path. When asked how
he came up with the mark LASERSWING, Mr. Cunningham
testified that he thought of probably a dozen different
names and decided on LASERSWING because “[i]t just seemed to
describe the product . . . [and] the product itself gives
the appearance of a laser to the user, and it’s a swinging
club, so Laserswing just seemed logical.” (Discovery dep.,
p. 18). According to Mr. Cunningham, a “couple [of] people”
have bought the LASERSWING product. (Testimony dep., p.
15). He testified that the product sells for between $100
and $200.
We turn first to the issue of priority. Petitioner’s
priority of use of its mark LASER for both golf clubs and
golf balls is established by the testimony of its president,
Mr. Hansberger.
Turning next to the issue of likelihood of confusion,
it is essentially petitioner’s position that confusion is
likely because the goods of the parties as set forth in the
Cancellation No. 26,054
6
respective registrations are identical or otherwise closely
related and the marks are substantially similar.
Respondent, however, argues that there has already been
a determination by the Examining Attorney that there is no
likelihood of confusion between respondent’s mark and
petitioner’s mark and that petitioner has offered no facts
in this proceeding which were not before the Examining
Attorney. Further, respondent argues that the marks are not
similar; that petitioner has failed to establish the fame of
its mark; and that there have been no instances of actual
confusion.
At the outset, we should point out that the Board is
not bound by the decision of the Examining Attorney
regarding the registrability of respondent’s mark. This is
particularly true in an inter partes proceeding such as
this, where generally there is more evidence than was before
the Examining Attorney on the issue of likelihood of
confusion. See McDonald’s Corp. v. McClain, 37 USPQ2d 1274
(TTAB 1995).
With respect to the goods, we note that they are
identical in part (golf clubs) and otherwise closely
related. Also, 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
Cancellation No. 26,054
7
appropriate trade channels to all potential purchasers of
such goods. Thus, in our likelihood of confusion analysis,
we must assume that petitioner’s golf clubs and golf balls
and registrant’s golf clubs are sold in golf shops and
sporting goods stores to beginning as well as experienced
golfers.
Turning then to the marks, as our principal reviewing
court, the Court of Appeals for the Federal Circuit has
pointed out, “[w]hen marks would appear on virtually
identical goods or services, the degree of similarity
necessary to support a conclusion of likely confusion
declines.” Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992). In this case, due to the shared presence of the term
LASER in both marks, there are consequent similarities in
appearance and pronunciation. The addition of “SWING” in
respondent’s mark is insufficient to distinguish the two
marks when applied to identical and closely related goods.
In finding that the marks are similar, we have kept in mind
the normal fallibility of human memory over time and the
fact that the average consumer retains a general rather than
a specific impression of trademarks encountered in the
marketplace. Further, we note that the trial record is
devoid of any evidence of third-party uses of LASER marks
Cancellation No. 26,054
8
for goods similar to the types of goods involved in this
case.
With respect to respondent’s argument that there is no
evidence of actual confusion, aside from the fact that
actual confusion is difficult to prove, we cannot conclude
from the limited evidence of use of respondent’s mark that
there has been an opportunity for confusion to have
occurred.
Also, a mark need not be “famous” in order to be
entitled to protection under Section 2(d) of the Trademark
Act.
We conclude that individuals familiar with petitioner’s
golf clubs and golf balls sold under the LASER mark, would
be likely to believe, upon encountering respondent’s mark
LASERSWING for golf clubs, that the goods originate with or
are associated with the same source.
We turn then to the issue of whether respondent has
used the mark LASERSWING on the goods recited in the
registration. It is petitioner’s position that respondent’s
product is a golf training aid, not a golf club. In support
of its position, petitioner relies on Mr. Cunningham’s
responses to questions posed to him by petitioner’s counsel
during his discovery deposition. While it is true that Mr.
Cunningham stated that his mark is not used on golf clubs,
this statement was predicated on petitioner’s attorney
Cancellation No. 26,054
9
having defined the term “golf club” as “a product that is
used to strike a golf ball.” (Discovery dep., p. 37). As
indicated previously, respondent’s product is not intended
to be used to hit a golf ball. However, Mr. Cunningham also
testified that his product “looks like a golf club, feels
like one and swings like one. It has [the] general
characteristics of a golf club.” (Testimony dep., p. 13).
Inasmuch as it appears that respondent’s product is a
variation of a golf club and respondent only indicated that
it was not a golf club in response to a question wherein
petitioner’s attorney narrowly defined a golf club, we
cannot say that petitioner has not used his mark on goods
which fall under the general category of golf clubs. Thus,
the record herein does not establish that respondent has not
used the mark on the goods recited in the registration.
Cancellation No. 26,054
10
Decision: The petition to cancel is granted under
Section 2(d) of the Trademark Act.
E. J. Seeherman
P. T. Hairston
B. A. Chapman
Administrative Trademark
Judges, Trademark Trial and
Appeal Board