Softspikes, Inc.

Trademark Trial and Appeal Board

Mar 3, 2009

No. 75480420 (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. 75480420
_______

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 "footwear" in Class 25.1

1 Serial No. 75480420 filed May 6, 1998 alleging a bona fide intention
to use the mark in commerce. The Board consolidated this case with
application Serial Nos. 75424804 and 75574825 on April 17, 2001 because
the applications involved 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, 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
THIS OPINION IS
NOT A PRECEDENT OF
THE TTAB
Serial No. 75480420
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 under Section
2(e)(1) of the Trademark Act on the ground that SOFTSPIKES is
merely descriptive of the identified goods.
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 footwear, which applicant acknowledges is intended
to be used while playing golf. (Response, August 17, 1999, p.
1.) However, the senior attorney 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
shoes. She argues that SOFTSPIKES is a generic term for plastic
golf cleats and thus, merely descriptive of "a significant

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.
Serial No. 75480420
3
feature of the [footwear], namely the type of golf spikes with
which the golf footwear is intended to be used." (Brief, p. 5.)
Applicant argues that if the Board finds that the term is
not generic for golf cleats, the mark must be allowed to register
for footwear on the Principal Register. (Brief, p. 2.) We
disagree with this contention. Genericness is simply the
ultimate degree of descriptiveness. See H. Marvin Ginn Corp. v.
International Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ
528, 530 (Fed. Cir. 1986). Thus, a finding that SOFTSPIKES is
not generic for golf cleats does not preclude a finding that the
term is nonetheless descriptive for those goods. Moreover, the
ultimate question in this case is whether SOFTSPIKES is merely
descriptive for footwear, i.e., golf shoes. We conclude that it
is necessary to determine the character of this term in relation
to golf cleats before we can decide whether the term is
descriptive of golf shoes. 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
is clear that the mark is merely descriptive of plastic cleats,3
and we accordingly find, as discussed below, that the mark is
likewise merely descriptive for golf shoes.

3 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. 75480420
4
The Record
The record in this application is voluminous and relates
primarily to the question of genericness. However, as we said,
whether a term is 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;4
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; a
definition of "spikes" from Webster's Third New International
Dictionary; pages from a retail golf products catalog The
Goldsmith Store featuring third-party advertisements for golf
shoes and golf cleats; and two third-party applications which
include "soft spikes" in the identification of goods.

4 This evidence was submitted with the first Office action dated
February 18, 1999. Six articles resulting from a subsequent search
were also submitted with that Office action. (The search retrieved 566
articles 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 final action on November 29,
1999.
Serial No. 75480420
5
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 referring to applicant and/or its
SOFTSPIKES brand; 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, the extent of recognition of the mark in the trade, and
the extent of use of applicant's cleats by professional golfers.
The exhibits include examples of applicant's packaging and
promotional materials; third-party packaging for "alternative"
golf cleats; letters from golf course facilities; evidence of
recognition of SOFTSPIKES as a mark by competitors and/or
customers; printouts of applications and registrations of
competitors for golf cleats using terms other than "soft spikes"
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.
Applicant also submitted the declaration of its then
counsel, Vincent N. Palladino, along with third-party
advertisements for golf shoes; and printouts of several pages of
an Internet search summary for "softspikes." In addition,
applicant submitted the declaration of Jon Hyman, applicant's
Serial No. 75480420
6
president, who provided a breakdown of applicant's marketing
channels for its SOFTSPIKES cleats; and the results of a survey
which purports to show that SOFTSPIKES "is recognized by golf
equipment purchasers as: the name of a type of golf product, the
brand name of a specific product, or both."
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).
Serial No. 75480420
7
Applicant intends to use SOFTSPIKES for golf shoes. As
applicant explains, golf shoes typically have indentations into
which can be fitted either metal spikes or plastic cleats.
We turn first to a determination of the significance of
SOFTSPIKES in relation to plastic cleats. As brief background,
applicant is the originator of the plastic golf cleat. Applicant
first introduced the plastic cleats in 1992. (McMullin Decl.
¶13.) 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., ¶6,
referring to Exh. 7-A47.)
Applicant argues, pointing to the use of SOFTSPIKES in golf
magazines, that its cleats are not characterized as "soft" or
referred to as "spikes." (McMullin Decl., ¶11-12.) Applicant
also points to a letter from the vice president of FootJoy
Worldwide, a manufacturer of golf shoes, stating that "SOFTSPIKES
cleats and other brands of plastic cleats with which they compete
are not spikes at all." (McMullin Decl., Exh. 2.)
Serial No. 75480420
8
Many of the Nexis articles, and at least one of the golf
magazines of record, 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)

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."
We also note that six of applicant's eight examples of
third-party packaging for "alternative" cleats refer to the goods
Serial No. 75480420
9
at least somewhere on the packaging as "spikes": the package for
TRED-LITE Plastic Golf Cleats states, "Patented spikes provide up
to 60% better traction"; the GREEN KEEPERS Spikeless Golf Cleats
package quotes a golfer as saying, "Green Keepers are the spike
of choice for me"; the package for TRED-LITE The Golf Spike
Alternative includes "24 Quality Spikes"; the NIKE GOLF package
refers to "Replacement Spikes"; DURA-SPIKE cleats are identified
as "Alternative Golf Spikes for the Next Millennium" and the
package instructs, "assure spikes are flush with shoe surface";
and SUN SPIKES are described as "Polymer Golf Spikes" with the
instruction to "tighten until spike fits against the sole."
(McMullin Decl., Exh. 4.)
Furthermore, non-metal cleats or "spikes" are often referred
to 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
Serial No. 75480420
10
March/April 1995 (McMullin Dec., Ex. 7-A22); "...the familiar
clicking of metal spikes is fading under the muffled footsteps of
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 applicant'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 as "lacking relatively or
comparatively in hardness."5 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)

5 Ninth New Collegiate Dictionary (p. 1120). The Board may take
judicial notice of dictionary definitions. See University of Notre
Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB
1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Serial No. 75480420
11
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)

...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. 75480420
12
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.6
Applicant contends that golf shoe manufacturers and pro shop
operators are the primary purchasers of golf cleats, stating that
only 9% are sold to retail outlets. (Reply Brief, p. 4.)
Applicant argues, however, that the majority of the Nexis
articles are by authors who are not identified as buyers of
cleats or, according to applicant, even as golfers. Noting that
virtually all of the articles appear in publications of general
circulation, applicant argues that the articles do not indicate
whether or not the author plays golf or buys golf cleats and,
thus, in applicant's view, the articles do not show what buyers

6 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 the 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. 75480420
13
of golf cleats understand the word SOFTSPIKES to represent.
(Brief, p. 15.) Applicant contends, on the other hand, that the
articles in magazines directed to golfers (such as Golf Magazine
and Golf Digest) refer properly to applicant's SOFTSPIKES mark
and that those authors are more likely to be purchasers of golf
cleats. (Brief, p. 16.)
The purchasers of golf cleats clearly include casual or
amateur golfers as well as professional golfers and commercial
buyers. By applicant's own figures, a large percentage of its
cleats are sold to ultimate consumers, i.e., golfers.7 It is not
significant that applicant sells its cleats through distributors
to retail stores rather than directly selling them to the public.
Furthermore, the Nexis articles, all of which appeared in
the "sports section" of the publications, are reporting on
subject matter of interest to 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 or
potential purchasers and reflects their understanding of the
term's significance. The fact that golf magazines may not often

7 According to Mr. Hyman, applicant sells about 44% of its SOFTSPIKES
cleats to original equipment manufacturers, who install them in golf
shoes; about 17% are sold to those who operate pro shops at private and
public golf courses, who frequently install the cleats in the shoes
worn by golfers at their clubs; about 9% are sold to golfers through
retail outlets; and the remaining 30% of sales of the cleats are made
through distributors, who in turn sell to pro shops or retailers.
Request for Reconsideration, August 17, 2000.
Serial No. 75480420
14
refer to plastic cleats as "soft" or "spikes" does not detract
from the descriptive usage of the term in other publications.
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:
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.) 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.8

8 The senior attorney's additional evidence of asserted third-party use
is not persuasive. The advertisement by one of applicant's competitors
Serial No. 75480420
15
Further, the fact that a variety of other terms such as
"plastic golf cleats," "spikeless golf cleats," "polymer cleats"
and "alternative cleats" are available, or even more frequently
used, by applicant's competitors to describe their 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 the plastic
golf cleats because it immediately conveys information about a
significant feature or characteristic of them.
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
distinctive. The issue of whether SOFTSPIKES has acquired
distinctiveness for plastic golf cleats or golf shoes is not
before us. Further, regardless of whether applicant can show, or

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. 75480420
16
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, footwear, under
Section 2(f) of the Act. Thus, the issue of acquired
distinctiveness as to plastic cleats or footwear utilizing
plastic cleats will not be addressed.
We now turn back to the question of whether SOFTSPIKES is
merely descriptive of footwear. As we noted, applicant
acknowledges that its SOFTSPIKES "footwear" is intended to be
used while playing golf. Applicant notes that golf shoes
typically have indentation sockets into which can be fitted
either metal spikes or plastic cleats. (Resp. to Office Action,
August 17, 1999, p. 4; Brief, p. 19.) Applicant argues, however,
that its footwear "is not to be manufactured with plastic golf
cleats (non-metal golf spikes) attached," noting that plastic
golf cleats, like metal spikes, wear out and need to be replaced.
(Resp. to Office Action, August 17, 1999.) Applicant further
argues that the footwear "may or may not be intended for use with
plastic golf cleats," explaining that "some SOFTSPIKES golf shoes
may have molded soles that do not contain indentations of the
kind into which plastic cleats (or metal spikes) can be
inserted." (Id.; Brief, pp. 18-19.)
We have found that SOFTSPIKES is merely descriptive of golf
cleats that are soft. We also find that SOFTSPIKES is merely
Serial No. 75480420
17
descriptive of a significant feature of golf shoes that are sold
with those cleats installed. The evidence shows that golf shoes
are frequently sold with cleats already in place. We note, for
example, the advertisement in The Golfsmith Store catalog for
Ashworth Traditional golf shoes offering shoes sold with
"Removable breathable footbed with soft spikes"; applicant's
advertisement for "Etonics Difference 2000" offers shoes with
"Comfort Cleat™ Alternative Spikes"; applicant's advertisement
for FootJoy's GreenJoys shoes states that SOFTSPIKES®XP PLUS™
CLEATS...are automatically installed in all FootJoy golf shoes";
the advertisement for FootJoy Sierra shoes states that the pair
of shoes "Comes with installed Softspikes®"; the Nexis article
from Sporting Goods Business October, 1996 (#175) states that
"Reebok...will continue its Convertible collection of footwear
sold with Softspikes in place."
It is not significant that the shoes may not be manufactured
with the cleats installed. The shoes may be manufactured
separately from the cleats but the shoes and the cleats are, or
may be, sold as a single product, albeit with a removable
component (the cleats). Moreover, the fact that all models of
applicant's golf shoes may not be sold with installed spikes, or
that some may not even use spikes, is not relevant. The relevant
point is that SOFTSPIKES is descriptive of those of applicant's
golf shoes that come with installed plastic spikes. See, e.g.,
Serial No. 75480420
18
Roselux Chemical Co., Inc. v. Parsons Ammonia Company, Inc., 132
USPQ at 634 (CCPA 1962) (immaterial that "some of the so-called
'sudsy' [ammonia] products marketed by opposers were not in fact
sudsy because they contained no detergent"). Absent any
restriction in applicant's identification of goods, it must be
presumed that applicant's broadly worded "footwear" encompasses
all types of golf shoes, including those that use non-metal
spikes.
The fact that the golf shoes can be fitted with spikes that
are soft, whether or not they are sold with the spikes in place,
is another significant feature of the shoes, and a significant
function of the shoes as well, i.e., to accommodate spikes that
are soft.
Applicant argues that "a term is not merely descriptive of a
product unless it describes the 'primary function or purpose' of
the product," citing In re MBAssociates, 180 USPQ 338 (TTAB 1973)
and In re the Realistic Company, 440 F.2d 1393, 169 USPQ 610
(CCPA 1971). However, those cases do not stand for the
proposition that a mark is not descriptive unless it describes a
function or purpose of the goods. Nor do those cases require
that the mark describe a "primary" function or purpose of the
goods in order to be found merely descriptive, although in
MBAssociates it happened to be the primary function of the goods.
The law is settled that to be descriptive, the mark need describe
Serial No. 75480420
19
only a single significant feature, function, characteristic,
ingredient, quality, purpose or use of the goods. See In re
Gyulay, 3 USPQ2d at 1009; and In re MBAssociates, 180 USPQ at
339.
In addition to finding SOFTSPIKES descriptive of certain
features, functions and characteristics of applicant's golf
shoes, we also find that the term describes the type of golf shoe
itself. The term "spikes" is defined in Webster's Third New
International Dictionary as "a pair of shoes having spikes
attached." Further, the Nexis evidence demonstrates usage of
"soft spikes" to describe the shoes themselves, as shown in the
following examples: "Wish all courses would require soft-spike
shoes as mandatory footwear." The Virginian-Pilot (Norfolk, VA)
June 3, 1998 (#11); "The editors of Golf Digest have put together
an extraordinary reference work here that might be as important a
companion for the traveling golfer as a favorite pair of soft
spikes." Los Angeles Times April 8, 1998 (#38); "Orange Park
will be the latest club to mandate soft-spike shoes." The
Florida Times-Union (Jacksonville, FL) September 28, 1997 (#72);
"Jeff Randall, sports editor, considers the burgeoning market for
soft-spike golf shoes as many clubs decided to ban the metal
variety." Sunday Times September 28, 1997 (#73); "Fox Hollow
opened in 1989, and recommends the use of soft-spike shoes."
Star Tribune (Minneapolis, MN) August 21, 1997 (#80); "Quail
Serial No. 75480420
20
Heights will allow soft-spike shoes only after Sept. 2." The
Florida Times-Union (Jacksonville, FL) August 17, 1997 (#83);
"'The first time we had a tournament with soft spike shoes was at
Gaston Country Club at the Carolinas Senior Open last September,'
said Jack Nance, executive director for the Carolinas Golf
Association.... 'Our legal counsel has advised us we would be
mandating an inferior product if we made soft spike shoes
mandatory,' said Chris Mezenski, tournament director for the
Carolinas PGA." Morning Star (Wilmington, NC) July 23, 1997
(#97); "Sullivan was disqualified...for failing to [wear] soft-
spike shoes." Roanoke Times & World News May 20, 1997 (#130);
"Golfers also will be encouraged, he said, to wear soft-spike
shoes." Omaha World Herald April 14, 1996 (#222); "Steve Tasho
of Thorny Lea, winner of two State Amateurs, has a pair of
softspikes but doesn't wear them. ... 'I'll stay with the regular
spikes as long as they let me,' said Tasho." The Boston Globe
May 16, 1996 (#125 of applicant's 156).
While applicant argues that its competitors do not need to
use "SOFTSPIKES" in marketing their golf shoes, 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).
Serial No. 75480420
21
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).
Finally, to the extent that applicant is arguing that
registration of the term would not preclude others from using the
term in a descriptive sense (Response, August 16, 1999, p. 5),
this 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
Serial No. 75480420
22
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 under Section 2(e)(1) is
affirmed.