Softspikes, Inc.

Trademark Trial and Appeal Board

Mar 3, 2009

No. 75424804 (T.T.A.B. Mar. 3, 2009)

Mailed: March 3, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Softspikes, Inc.
________

Serial No. 75424804
_______

Ira C. Edell of Epstein, Edell, Shapiro & Finnan, LLC for
Softspikes, Inc.

Kimberly Krehely, Senior Attorney, Law Office 111 (Craig D.
Taylor, Managing Attorney).
_______

Before Seeherman, Holtzman and Rogers, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

Softspikes, Inc., (applicant) has filed an application to
register the mark SOFTSPIKES (one word; in typed form) on the
Principal Register for "golf ball mark repair tools and golf
cleat wrenches" in Class 28.1

1 Serial No. 75424804 filed January 28, 1998, asserting dates of first
use and first use in commerce in March 1995. The Board consolidated
this case with application Serial Nos. 75480420 and 75574825 on April
17, 2001 because the applications involve the same marks and related
issues. In that same order, the Board remanded the '825 application to
the senior attorney for consideration of a Section 2(f) claim in the
application, and suspended proceedings in the consolidated appeals.
The senior attorney issued the final refusal but when no supplemental
brief on the issue was received from applicant, the Board on July 10,
THIS OPINION IS
NOT A PRECEDENT OF
THE TTAB
Serial No. 75424804
2
The application includes a claim of ownership of
Registration No. 1773925 on the Supplemental Register for the
mark SOFT SPIKES (two words; "SPIKES" disclaimed) for "cleats for
footwear for sports" in Class 25.2
The senior attorney has refused registration as to the goods
in Class 5 comprising "golf cleat wrenches"3 under Section
2(e)(1) of the Trademark Act on the ground that SOFTSPIKES is
merely descriptive of the identified goods.4
When the refusal was made final, applicant appealed. Both
applicant and the senior attorney have filed briefs.
Issues
The only issue on appeal is whether SOFTSPIKES is merely
descriptive of golf cleat wrenches. However, the senior attorney

2004 allowed the senior attorney time to file a supplemental brief in
order to respond to applicant's 2(f) arguments in its original brief.
The application file was subsequently lost by the Office and it has not
yet been reconstructed. Due to the long delay and the voluminous
record in the application, applicant's attorney has requested a
decision in the two applications we possess, before reconstructing the
lost file, and we are accommodating that request. We are therefore
issuing separate decisions for each application in the previously
consolidated appeals. We sincerely regret the inordinate delays in
these cases and the inconvenience to applicant.

2 Issued May 25, 1993; renewed.

3 Registration was initially refused as to the entire class of goods,
but the refusal was subsequently withdrawn as to "golf ball mark repair
tools."

4 The senior attorney stated in her first Office action that SOFTSPIKES
"appears to be a generic adjective in relation to the [wrenches] and,
therefore, is incapable of registration." She later clarified that the
refusal as to the wrenches is made solely on the basis of
descriptiveness.
Serial No. 75424804
3
contends that the question of whether the mark is generic for
plastic golf cleats is central to the issue of whether the mark
is merely descriptive of golf cleat wrenches. She argues that
SOFTSPIKES is a generic term for plastic golf cleats and thus,
"merely descriptive of a significant feature of the applicant's
golf cleat wrenches, namely the type of golf spikes with which
the wrenches are intended to be used." (Brief, p. 5.)
Applicant argued during prosecution that the mark is neither
generic nor merely descriptive of golf cleats and, therefore, not
descriptive of golf cleat wrenches; but that even if the mark is
merely descriptive of golf cleats, it is not merely descriptive
of golf cleat wrenches.5 Req. for Recon, pp. 5, 8. Applicant,
in its brief, submits that it is not necessary to consider
genericness of the mark for plastic cleats because this case
concerns golf wrenches, not plastic cleats. We conclude that it
is necessary to determine the character of the term SOFTSPIKES
for plastic golf cleats before we can decide whether the term is
descriptive of golf cleat wrenches. The evidence of mixed use of
SOFTSPIKES in the file makes it unclear on this record whether
SOFTSPIKES is generic for plastic cleats. However, the evidence

5 Applicant argued throughout the prosecution of this application that
even if the mark is descriptive of golf cleats, the mark has acquired
distinctiveness as to those goods. Applicant did not pursue that
argument in its appeal brief for the golf cleat wrench application and,
regardless, has not alleged acquired distinctiveness of the mark as to
golf cleat wrenches, the goods involved in this case.
Serial No. 75424804
4
is clear that the mark is merely descriptive of plastic cleats,6
and we accordingly find, as discussed below, that the mark is
likewise merely descriptive for the golf cleat wrenches.
Evidentiary Matters
The senior attorney objects to the "new arguments and
authorities" in applicant's brief "that were never raised" during
prosecution. This objection is not well taken. The applicant,
like the examining attorney, is entitled to make any arguments in
its brief that pertain to the subject of the appeal and any
evidence of record. See TBMP §1217 (2d ed. rev. 2004). Thus, we
will consider applicant's categorized breakdown of the Nexis
evidence, for whatever probative value it may have, as applicant
is entitled to discuss the evidence and present its views on how
it should be evaluated. Applicant is also entitled to cite to
additional case law and other legal authorities in its brief.
Id. Moreover, as applicant points out, the citations which the
senior attorney considers untimely, including a Trademark
Reporter article, were in fact referenced by applicant prior to
appeal.
The senior attorney's objection to applicant's reference in
its brief to evidence submitted only in connection with its

6 Applicant's registration on the Supplemental Register is not binding
on this determination. See In re Hester Industries, Inc., 230 USPQ
797, 798 (TTAB 1986).
Serial No. 75424804
5
related '825 application is sustained.7 To consider this
evidence would be contrary to Trademark Rule 2.142(d) which
requires that an application be complete prior to appeal.
Contrary to applicant's apparent contention, this evidence would
indeed be "new" at least to this case.8 Thus, we will not
consider the evidence identified as "Exhibit A" submitted for the
first time with applicant's reply brief. We add, however, that
even if we had considered that evidence, it would not affect our
decision in this case.
To the extent that applicant in its reply brief is
requesting a remand to consider that evidence, the request is
denied. Applicant explains that the evidence "had not yet been
assembled" prior to the filing of its request for reconsideration
a month prior to the time for appeal, and acknowledges that the
evidence could have been submitted prior to the due date for the
appeal.9 Reply Brief, p. 16. Because this evidence was

7 In particular, applicant in its main brief (p. 10, fn "*", refers to
examples of third-party packaging which is of record in the '825
application and which shows, according to applicant, the consistent use
by applicant's competitors of wording other than "softspikes" or "soft
spikes" for cleats. Brief, p. 15; Reply Brief, pp. 14-15. Applicant
then attached these examples as "Exhibit A" to its reply brief.

8 Even though the appeals had been consolidated, the evidence may only
be considered with respect to the application with which it was
submitted.

9 The request for reconsideration would have been timely if filed
together with the notice of appeal on the last day for appeal. In that
case, the Board would have suspended the appeal, including applicant's
time for filing its appeal brief, and remanded the application to the
Serial No. 75424804
6
available to applicant prior to appeal, a remand would not be
warranted. See TBMP ¶1207.02 (2d ed. rev. 2004).
The Record
The record in this application is voluminous and relates
primarily to the question of whether the mark is generic for
plastic cleats. However, whether a term is merely descriptive or
generic is a matter of degree, and thus, the evidence may be
relevant to either issue.
The senior attorney's evidence includes the entire results
of a Nexis database search in the ALLSPO Library for "SOFT SPIKE
OR SOFTSPIKE," i.e., as one or two words, excluding the terms "BY
SOFTSPIKES" and "SOFTSPIKES, INC." which produced 267 articles;10
Internet articles with various references to "Softspikes" or
"soft spikes"; pages from the websites of golf course facilities
stating course regulations, including footwear requirements; a
dictionary definition of "spikes" from the Dictionary for Golfers
(1st ed. 1996) which includes a reference to "Soft spikes," that
does not define the term as a trademark or particular brand;
pages from a retail golf products catalog The Goldsmith Store

senior attorney for consideration of the request. See TBMP 1204 (2d
ed. rev. 2004); and TMEP 715.04.

10 This evidence was submitted with the first Office action dated June
18, 1998. Six articles resulting from a subsequent search were
submitted with the final action dated February 18, 1999. (The search
retrieved 566 stories and the senior attorney printed the first six.
The search strategy was not included.) Selected results from
additional searches were attached to the senior attorney's denial of
applicant's request for reconsideration on November 29, 1999.
Serial No. 75424804
7
featuring third-party advertisements for golf shoes and golf
cleats; and two third-party applications which include "soft
spikes" in the identification of goods.
Applicant submitted the entire results of its own Nexis
search for the one word "Softspikes (or softspikes)" which
returned 156 articles, 58 of which would not have been covered by
the initial search conducted by the senior attorney; articles
from various golf magazines and general circulation publications
referring to applicant and/or its SOFTSPIKES brand; dictionary
definitions of "soft" and "spike";11 the declaration, with
exhibits, of Faris W. McMullin, applicant's senior vice
president, attesting to sales and advertising figures, the market
share for its plastic golf cleats, and the extent of recognition
of the term as a mark. The exhibits include examples of
applicant's packaging and promotional materials; letters from
golf course facilities; and evidence of recognition of the mark
by competitors and/or customers. Applicant also filed the
supplemental declaration of Mr. McMullin attesting to the extent
of use of applicant's cleats by professional golfers, with
exhibits including printouts of applications and registrations of
competitors for golf cleats using terms other than "soft spikes"

11 Applicant provided the definition in its response to the first Office
action on October 23, 1998, but did not supply a copy of the relevant
page from the dictionary. Nevertheless, this resource is available to
the Board and we take judicial notice of its contents.
Serial No. 75424804
8
in the identifications of goods; a letter from the publisher of
the Dictionary for Golfers; and letters to and/or from the owners
of the two applications referenced by the senior attorney.
All references to the Nexis evidence in this opinion are to
the group of 267 articles submitted by the senior attorney unless
otherwise noted as being from the first six articles of the 566
also retrieved by the senior attorney, or as being from the group
of 156 articles retrieved by applicant.
Analysis
A term is merely descriptive within the meaning of
Section 2(e)(1) if it immediately conveys knowledge of a
quality, characteristic, function, feature, purpose or use of the
goods or services with which it is used or intended to be used.
In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
Moreover, the question of whether a particular term is merely
descriptive must be determined not in the abstract, but in
relation to the goods or services for which registration is
sought, the context in which the term is used, and the possible
significance that the term is likely to have to average
purchasers as they encounter the goods or services in the
marketplace. See In re Engineering Systems Corp., 2 USPQ2d 1075
(TTAB 1986).
As applicant explains, its golf cleat wrench is part of a
set consisting of a plastic wrench handle and bits. The bits can
Serial No. 75424804
9
be used with the wrench handle or with a drill and, as stated by
Mr. McMullin, it can "remove or install all metal golf spikes and
alternative golf cleats." McMullin Dec., ¶5, Ex. 2. Applicant
explains in its brief that alternative golf cleats "are also
referred to as plastic cleats and plastic golf cleats." Brief,
p. 1.
We turn first to the significance of SOFTSPIKES in relation
to plastic golf cleats. As brief background, applicant is the
originator of the plastic golf cleat. Applicant first introduced
the plastic cleats in 1992. McMullin Decl. ¶¶4, 10. The product
was apparently created in response to concerns regarding the
damage to golf course greens caused by traditional metal spikes.
As Mr. McMullin states, the plastic cleats "provide traction
without penetrating the surface of golf course greens." Id., ¶5.
Subsequent to applicant's introduction of the product, other
companies began marketing plastic golf cleats as alternatives to
metal spikes, "and now there are a vast array of alternative
cleats on the market." (McMullin Decl., ¶¶4, 6, referring to
Exh. 7-A47.)
Applicant argues that its plastic cleats are neither "soft"
nor "spikes," as those terms are commonly understood; and that,
moreover, the plastic cleats are "hard" not "soft". (Resp. dated
October 23, 1998, pp. 5-6). Applicant argues that none of the
dictionary definitions of "soft" or "spike" applies to plastic
Serial No. 75424804
10
cleats, stating that Webster's Ninth New Collegiate Dictionary
(p. 1120) defines these terms as follows:
Soft (p. 1120) a: yielding to physical pressure,
...c(1): of a consistency that may be shaped or
molded, (2): capable of being spread..., e: lacking
relatively or comparatively in hardness.

Spike (p. 1135) 1: a very large nail, 2a: one of a
row of pointed irons placed (as on top of a wall) to
prevent passage, b(1): one of several metal
projections set in the sole and heel of a shoe to
improve traction.

Applicant also points to a letter from the vice president of
FootJoy Worldwide, a manufacturer of golf shoes, stating, among
other things, that "SOFTSPIKES cleats and other brands of plastic
cleats with which they compete are not spikes at all." (McMullin
Decl., Exh. 4.)
Many of the Nexis articles and at least one golf magazine
refer to plastic or non-metal cleats as "spikes," for example:
Softspikes Co. was also on hand to install their
plastic spikes. Newsday June 11, 1998 (#3)

Softspikes,...produced the first plastic spikes in
1993....
Sports Illustrated September 29, 1997 (#71)

...scraping from metal spikes is deeper and therefore
longer lasting than the cuts made by plastic or rubber
spikes. Sunday Times September 28, 1997 (#73)

The non-metal spikes are required there.
Pittsburgh Post-Gazette July 20, 1997 (#99)

The plastic spikes were not invented until April, 1994.
The Providence Journal Company-Bulletin May 28, 1997
(#126)
Serial No. 75424804
11

Golfers will be required to wear shoes with non-metal
spikes, such as Softspikes.
Milwaukee Journal Sentinel February 15, 1996 (#227)

Softspikes offered a $20,000 bonus for any PGA Tour pro
who wore its non-metal spikes.
The Orange County Register December 17, 1998 (#19 of
Applicant’s 156)

Even at national junior golf tournaments, more than 85
percent are wearing a version of alternative spikes.
PGA Tour Partners March/April 1998 (McMullin Dec., Ex.
7-A51).

The last article excerpted above also refers to a
competitor's "Green Keepers" cleats as "alternative spikes."
Furthermore, non-metal cleats or "spikes" are often
described as "soft," as shown in the following examples: "Soft
cleats have their virtue, but players should have a choice." The
Atlanta Journal and Constitution June 14, 1998 (#1); "Terrace
Hills in Altoona and Briarwood in Ankeny allow soft or metal
spikes." The Des Moines Register May 4, 1998 (#26); "Traditional
metal spikes...are being edged out by softer soles...." The Palm
Beach Post February 18, 1998 (#50); "Course superintendent Jim
Johnson said The Rail will require soft, non-metal spikes, for
all players..." The State Journal-Register (Springfield, IL)
August 30, 1997 (#78); "A soft tread results in a truer roll,
according to Ohio State researchers." Wisconsin Golf
March/April 1995 (McMullin Dec., Ex. 7-A22); "...the familiar
clicking of metal spikes is fading under the muffled footsteps of
Serial No. 75424804
12
soft soles. ... Of course, the soft shoes provide better
traction on concrete paths or tile floors where golfers in metal
spikes have to tiptoe gingerly to avoid slipping." News & Record
(Greensboro, NC) August 3, 1997 (#72 of aapplicant’s 156);
"Already some shoe companies are manufacturing models with soft
spike-like soles." The Indianapolis News August 25, 1995 (#238);
"Softer spikes...don't solve everything." Pittsburgh Post-
Gazette February 3, 1999 (#3 of the senior attorney’s second set
of articles).
As applied to plastic cleats, the term "soft" falls within
the dictionary definition of the term provided by applicant as
"lacking relatively or comparatively in hardness." It can be
seen from the following Nexis excerpts that the term "soft
spikes," as a whole, is used in this comparative sense to
contrast the plastic or non-metal spikes with the conventional
"hard" or metal spikes:
What's more, the soft spikes don't puncture anything.
Pittsburgh Post-Gazette February 3, 1999 (#3 of the
senior attorney’s second set of articles)

Golf course operators saw less wear and tear in the
clubhouse flooring...with the switch from metal to soft
spikes.
The Patriot Ledger (Quincy, MA) (#51)

Another warning: While the green fees are
reasonable..., be ready to pay $5 to have your spikes
changed from metal to soft spikes.
The Boston Globe August 28, 1997 (#79)

Serial No. 75424804
13
...superintendents are amazed at the minimal impact
soft spikes have on their greens. ... "Basically a
metal spike catches the grass and pulls it up. We
don't get any of that with the soft spikes." ... Hard
spikes can be exchanged for soft spikes for $5 at most
golf retail stores.
Morning Star (Wilmington, NC) July 23, 1997 (#97)

"I bet we sell 75 packages of soft spikes for every one
package of hard spikes," Bunch said.
Charleston Daily Mail July 9, 1997 (#103)

The movement toward replacing metal spikes for golfers
with the plastic, or soft spikes, is sweeping the
sport....
The Providence Journal-Bulletin May 28, 1997 (#126)

At Golf Club of Tennessee, the policy is to suggest the
use of soft spikes, but issue no mandate. ... "And if
you have a definitive policy on the hard spikes, the
industry might come up with something else new," he
said.
The Tennessean February 9, 1997 (#164)

There are several kinds of soft spikes, which screw
into a golf shoe in the same fashion as the hard
spikes. Instead of the single point, the traction is
provided by groups of plastic knobs or triangles.
The Virginian-Pilot (Norfolk, VA) December 15, 1996
(#170)

Their new golf shoes, involving five patents, have
spikes that slide in on a bar, making it easier to
switch from soft spikes to hard spikes.
Chicago Tribune May 12, 1996 (#215)

The Match-Play was conducted last week at Oak Ridge
Country Club, the first club to require the use of soft
spikes instead of the traditional metal spikes. ...
Avoiding spike marks on the greens was just one of the
reasons Oak Ridge decided to go to the soft spikes.
Star Tribune (Minneapolis, MN) July 16, 1995 (#247)

Serial No. 75424804
14
It is clear that the comparative softness of plastic spikes
as opposed to the hard, metal spikes is a significant and
desirable characteristic of applicant's cleats.12
Applicant argues that because its customers include
professional buyers (including golf shoe manufacturers and golf
pro shops) "it is inappropriate to give undue weight to show how
a term is used in publications of general circulation which,
according to applicant, do not necessarily reflect consumer
perception." (Brief, p. 11.) However, the purchasers of golf
cleats clearly include casual or amateur golfers as well as
professional golfers and commercial buyers. The Nexis articles,
all of which appeared in the "sports section" of the
publications, are reporting on subject matter of interest to

12 We do not find the dictionary evidence or third-party applications
submitted by the senior attorney to be evidence of clear descriptive
use of "soft spikes" for plastic cleats. The Dictionary for Golfers
(1st ed. 1996) includes the following reference to "Soft spikes" under
the entry for "spikes": "[T]he pointed, usually metal, objects built
into the soles of golf shoes that enable the golfer to get a firm
stance. Soft spikes are being used at many courses today, and serve
the same purpose as metal spikes." However, applicant has submitted a
letter from the publisher of this resource stating that the reference
to "soft spikes" will be deleted from the next edition of the
dictionary and/or that the dictionary "will use an appropriate term" to
refer to the subject matter of the definition. Suppl. McMullin Decl.,
Exh. E. As to the two applicants who used "soft spikes" in their
identification of goods, in one case the owner acknowledged that the
reference was inadvertent (Serial No. 75550992), and in the other case
the owner assured applicant that he would stop using "soft spikes" to
describe his products (Ser. No. 75283629). Suppl. McMullin Decl.,
Exhs. C and D. While an agreement to stop using a term is not an
acknowledgment of any rights in the mark, at the same time, this
evidence raises a question as to the perception of the term by these
entities and whether they may have been mistaken about their
understanding of the term's meaning.
Serial No. 75424804
15
golfers, and they would be read by golfers or those who are
interested in golf. The usage of the term in these general
circulation publications is evidence of exposure of the term to
this group of relevant purchasers and potential purchasers and
reflects their understanding of the term's significance.
Applicant also argues that the articles in magazines
directed to golfers such as Golf Magazine and Golf Digest
"discuss SOFTSPIKES cleats without characterizing them as 'soft'"
or as spikes, and are "better evidence" of purchaser perception.
(Reply Brief, p. 10.) However, the fact that a variety of other
terms such as "alternative cleats," "non-metal spikes," and
"plastic cleats" are available, or even more frequently used, to
describe the goods, is immaterial. See Roselux Chemical Co.,
Inc. v. Parsons Ammonia Co., Inc., 299 F.2d 855, 132 USPQ 627,
632 (CCPA 1962). The term SOFTSPIKES is, at a minimum, merely
descriptive of plastic golf cleats because it immediately conveys
information about a significant feature or characteristic of the
cleats.
The senior attorney has also submitted evidence of
descriptive use of “soft golf spikes” by one of applicant's
competitors, MacNeill Engineering Worldwide, a golf shoe
manufacturer, specifically, an interview with Harris MacNeill,
the company’s president:
Serial No. 75424804
16
We've already shipped in the first three months of
this year more soft golf spikes than we shipped all of
last year,.... ... Several years ago the popularity
of soft golf spikes was because the greens putted
better and were more resistant to disease,.... Now
greens are becoming less and less the issue,.... The
real issue now is people feel better. Their feet and
their backs don't hurt as much because of the nonmetal
spikes.

Services.golfweb.com ("Soft spikes footed for success" by Ron
Sirak, Associated Press Golf Writer).
Applicant states that MacNeill "will manufacture...
Softspikes brands...of non-metal alternative golf cleats."
(McMullin Decl., ¶6, referring to Exh. 7-A-45.) However, the
fact that the company may become a manufacturer of applicant's
brand of shoes does not mean that the company’s past use of
descriptive terms is irrelevant. Use of the term "soft golf
spikes" in this clearly descriptive manner indicates that
SOFTSPIKES is perceived by at least one of applicant's
competitors as descriptive.13

13 The senior attorney's additional evidence of asserted third-party use
is not persuasive. The advertisement by one of applicant's competitors
in the catalog The Golfsmith Store states: "Men's Ashworth Traditional
leather upper lightweight, MTI convertible outsole with multi-traction
insert. Removable, breathable footbed with soft spikes." That same
advertisement, however, also includes the statement "Extra Softspikes®
Free" in a clear reference to SOFTSPIKES as a mark. Thus, the use in a
descriptive manner could be viewed as misuse of applicant's mark. The
senior attorney notes that an article by the Director of Golf at
Augusta National Golf Club includes a reference to "soft spike tread
pattern" as a generic term in describing the product of one of
applicant's competitors. While this may be an example of generic use,
it is not use by applicant's competitor.
Serial No. 75424804
17
To the extent that applicant is arguing that the
presentation of its mark as a single term rather than separate
words overcomes a finding that the combined term is not
descriptive, the argument is not persuasive. This type of minor
variation in the display of a descriptive term has frequently
been held to be legally insignificant. See, e.g., Weiss Noodle
Co. v. Golden Cracknel and Specialty Co., 290 F.2d 845, 129 USPQ
411 (CCPA 1961) (HA-LUSH-KA generic equivalent of the Hungarian
word "haluska"); In re Omaha National, supra (FIRSTIER, the
equivalent of "first tier," is merely descriptive of banking
services); In re A La Vieille Russie Inc., 60 USPQ2d 1895, 1897,
n. 2 (TTAB 2001) ("the compound term RUSSIANART is as merely
descriptive as its constituent words, 'Russian art.'"); and In re
U.S. Steel Corp., 225 USPQ 750 (TTAB 1985) (SUPEROPE merely
descriptive of wire rope).
Further, the cases cited by applicant to support its
contention are not on point. The decision in In re The
Chesapeake Corporation of Virginia, 420 F.2d 754, 164 USPQ 395
(CCPA 1970), was not based on the presentation of
SUPERWATERFINISH as a single term, but rather on the finding that
the combination of the terms SUPER and WATER FINISH resulted in a
unitary term. While the mark in that case happened to be
presented as a single term, the absence of a space between the
Serial No. 75424804
18
words was not a stated factor in the finding that it was not
merely descriptive.
In Brookfield Communications, Inc. v. W. Coast Entertainment
Corp., 174 F.3d 1036, 50 USPQ2d 1545 (9th Cir. 1999), the Court
said that the defendant could use "movie buff" (with the space)
because such use is the "proper term for the 'motion picture
enthusiast,'" whereas "MovieBuff" without the space was only
suggestive of the plaintiff's film industry information services
and software rather than a "motion picture enthusiast."
"SOFTSPIKES" has the same descriptive meaning as "soft spikes" as
applied to plastic cleats.
Nor is FunnelcaP, Inc. v. Orion Industries, Inc., 421
F.Supp. 700, 192 USPQ 517, 526 (D. Del. 1976), relevant to this
case. The Delaware District Court's determination that
"FunnelcaP," merited some protection was not based solely on the
absence of a space between the two words but also on the
"fanciful...letter style" in the mark. Applicant’s mark, on the
other hand, does not use a distinctive lettering style.
To be sure, there is substantial evidence in this record
that SOFTSPIKES is recognized as a mark for plastic golf cleats
by the media and by applicant's competitors and customers, and
that the product has enjoyed significant commercial success.
However, such recognition goes to whether the term has acquired
distinctiveness as a mark, not whether it is inherently
Serial No. 75424804
19
distinctive. The issue of whether SOFTSPIKES has acquired
distinctiveness for plastic golf cleats or golf cleat wrenches is
not before us. Regardless of whether applicant can show, or has
established, acquired distinctiveness of the mark for plastic
cleats, applicant is not seeking registration of the mark for the
goods identified in its involved application, golf cleat
wrenches, under Section 2(f) of the Act. Thus, the issue of
acquired distinctiveness as to plastic cleats or golf cleat
wrenches will not be addressed.
We now turn back to the question of whether SOFTSPIKES is
merely descriptive of golf cleat wrenches. As noted earlier,
applicant's wrenches are used to remove or install both all metal
golf spikes and alternative golf cleats, the latter being also
referred to as plastic cleats. Because SOFTSPIKES is merely
descriptive of plastic cleats, which, as the evidence shows, are
spikes that are soft, we find that the term is merely descriptive
of a significant purpose or function of golf cleat wrenches that
are used on those cleats, i.e., spikes that are soft.
It is well settled that terms that describe a significant
purpose or function of the goods may be merely descriptive of the
goods under Section 2(e)(1). See, e.g., In re W. A. Sheaffer Pen
Co., 158 F.2d 390, 72 USPQ 129 (CCPA 1946) (FINE LINE descriptive
of mechanical pencils that can produce a "fine line"); In re
Wallyball, Inc., 222 USPQ 87 (TTAB 1984) (WALLYBALL descriptive
Serial No. 75424804
20
of sports clothing used for playing game of wallyball); In re
National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977)
(BURGER descriptive of a function of applicant's cooking
utensils); and In re Orleans Wines, Ltd., 196 USPQ 516 (TTAB
1977) (BREADSPRED merely descriptive of function or use of jams
and jellies to be spread on bread or are as a spread for bread).
Applicant argues, citing In re Reynolds Metal Co., 480 F.2d
902, 178 USPQ 296 (CCPA 1973), that the mark does not describe
"the primary purpose" of its cleat wrenches; and moreover that
the mark does not describe "a primary purpose or function" of the
wrenches. (Brief, pp. 6-7, emphasis in original.) Applicant
argues that because its wrenches are "equally useful in removing
and inserting both metal spikes and plastic cleats," it is not
"primary" as that word is defined in Webster's Ninth New
Collegiate Dictionary (1991) as "first in...importance." (Id.)
Applicant adds that its golf wrenches "are not touted as superior
to other golf wrenches when used with plastic cleats." (Id.)
These arguments are not persuasive. First, the Reynolds
Metals case is distinguishable. In that case, the mark BROWN-IN-
BAG was found suggestive of transparent plastic film bags because
browning was not the sole purpose or function of the bags as the
bags also performed a function that did not involve browning,
i.e., cooking items of food such as pears and vegetables that are
not ordinarily browned. Here, however, the sole purpose or
Serial No. 75424804
21
function of applicant's wrench is for use on golf cleats. The
wrenches are not used for something more than or other than that
purpose.
Moreover, even if the wrench is viewed as having a dual
purpose or function in that it is equally useful for metal spikes
and non-metal spikes, that distinction is not legally relevant.
It is not necessary that the mark describe all the purposes or
functions of the goods in order for the mark to be merely
descriptive. See In re Oppedahl & Larson LLP, 373 F.3d 1171, 71
USPQ2d 1370, 1371 (Fed. Cir. 2004) ("A mark may be merely
descriptive even if it does not describe the 'full scope and
extent' of the applicant's goods or services," citing In re Dial-
A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1812
(Fed. Cir. 2001)). The law is settled that, to be descriptive,
the mark need describe only a single significant function or
attribute of the goods. See In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009 (Fed. Cir. 1987); and In re MBAssociates, 180 USPQ
338, 339 (TTAB 1973). A function of the goods may be significant
even though the goods may also have other equally, or even more,
significant functions that the mark does not describe. We also
note that some of the Nexis evidence above suggests that spikes
that are soft, at least in some locations, are required footwear
and in other locations may be more widespread than metal spiked
shoes. Thus, certainly there are a significant number of golf
Serial No. 75424804
22
shoes, if not the majority, that would utilize spikes that are
soft and be serviced by applicant's wrench.
While applicant argues that its competitors do not need to
use "SOFTSPIKES" in marketing their golf cleat wrenches, or their
plastic golf cleats, the critical question is whether competitors
are entitled to use that term to describe their goods. The law
is clear that descriptive terms "must be left free for public
use." In re Colonial Stores, Inc., 394 F.2d 549, 157 USPQ 382,
383 (CCPA 1968).
Thus, while the use of "SOFTSPIKES" by competitors to
describe their goods would be evidence that the mark is merely
descriptive, the converse is not true. That is, the absence of
use by competitors in a descriptive manner does not compel a
finding that the term is not descriptive. See In re Polo
International Inc., 51 USPQ2d 1061, 1063 (TTAB 1999) ("absence of
third-party uses" of the term "does not...serve to raise a
presumption of registrability."). It is settled that the fact
that an applicant is the only user of a term in connection with
its goods is not dispositive where, as here, the term
unquestionably conveys a merely descriptive meaning. See, e.g.,
In re Quik-Print Copy Shop, Inc., 616 F.2d 523, 205 USPQ 505, 507
n. 8 (CCPA 1980); and In re National Shooting Sports Foundation,
Inc., 219 USPQ 1018, 1020 (TTAB 1983).
Serial No. 75424804
23
Finally, we note applicant's argument that "registration of
a word as a trademark does not preclude others from using the
word in a non-trademark or descriptive sense" and that the "fair
descriptive use doctrine supports registration" of its mark for
golf wrenches. Brief, p. 9. However, applicant’s argument
ignores the prohibition of the statute that merely descriptive
marks may not be registered. Registration would give applicant
the right to claim that "soft spikes" used descriptively by
others on similar goods constituted an infringement of
applicant's mark (see In re Gray Inc., 3 USPQ2d 1558, 1558 (TTAB
1987)), and applicant's competitors have "the right to be free
from claims of exclusive right by others and from harassment
based on such claims." Armour & Co. v. Organon, Inc., 245 F.2d
495, 114 USPQ 334, 338 (Rich, J., concurring) (CCPA 1957). See
also Dena Corp. v. Belvedere International Inc., 21 USPQ2d 1047,
1051 (Fed. Cir. 1991) ("The applicant's competitors in the same
trade must remain free to use descriptive terms without legal
harassment") citing DeWalt, Inc. v. Magna Power Tool, 289 F.2d
656, 129 USPQ 275, 281 (CCPA 1961).
Decision: The refusal to register is affirmed as to golf
cleat wrenches. The application will proceed to publication in
Class 5 for "golf ball mark repair tools."