Toro Co.v.Buck Knives, Inc.

Trademark Trial and Appeal Board

Jun 24, 1998

No. 91096756 (T.T.A.B. Jun. 24, 1998)

Paper No. 17
JER
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
The Toro Company
v.
Buck Knives, Inc.
_____
Opposition No. 96,756
to application Serial No. 74/415,642
filed on July 22, 1993
_____
Linda M. Byrne of Merchant, Gould, Smith, Edell, Welter &
Schmidt, P.A. for opposer.
Lisa A. Sanderson, Esq. for applicant.
______
Before Sams, Rice, and Quinn, Administrative Trademark
Judges.
Opinion by Rice, Administrative Trademark Judge:
An application has been filed by Buck Knives, Inc. to
register the mark GREENSMASTER for multi-function utility
pocket knives.1
Registration has been opposed by The Toro Company,
which asserts that applicant’s GREENSMASTER knives include
golf-related tools, e.g., a divot replacer and a cleat
removing tool; that since prior to applicant’s claimed date
of first use of its mark, opposer has marketed a variety of
golf-related tools and machines, including mowers for golf
course greens, under the mark GREENSMASTER; ownership of a
registration of the mark GREENS MASTER for turf care
equipment, including lawn mowers;2 and a likelihood of
confusion. Opposer also alleges, as an additional ground
for opposition, that applicant’s mark is not in “use” as
defined by §45 of the Trademark Act of 1946, 15 U.S.C.
§1127, i.e., that the mark is not “placed in any manner on
the goods or their containers or the displays associated
therewith or on the tags or labels affixed thereto.”
Applicant, in its answer to the notice of opposition,
admits that its GREENSMASTER knives include golf-related
tools, e.g., a divot replacer and a cleat removing tool;
denies that these are the only tools contained in the knife;
and denies opposer’s remaining salient allegations.3

1 Application Serial No. 74/415,642 filed on July 22, 1993,
claiming first use and first use in commerce in March 1993.
2 Registration No. 844,506 issued February 20, 1968 and renewed;
Sec. 8 affidavit accepted; Sec. 15 affidavit received.
Opposer pleaded ownership of a second registration, namely,
Registration No. 1,040,435 issued June 1, 1976 for the mark
GREENSMASTER 3 for turf care equipment, namely, lawn mowers,
spikers, thatchers, groomers, and debris removers. During its
testimony period, opposer made of record a status and title copy
of the registration showing that it was then subsisting and owned
by opposer. However, the records of the Patent and Trademark
Office reveal that the registration expired shortly thereafter.
Accordingly, we have given it no consideration herein.
3 Applicant pleaded the affirmative defense of laches. Aside
from the fact that applicant offered no evidence in support of
this defense, the pleading thereof is legally insufficient as a
The record consists of the pleadings; the file of the
opposed application; a status and title copy of opposer’s
pleaded registration of the mark GREENS MASTER, applicant’s
responses to opposer’s requests for admissions numbers 1, 5,
7, 8, 10, 13, 18, 19, 20, 23, 25, 27, and 28, opposer’s
requests for admissions numbers 31-51 (all of which stand
admitted because applicant failed to respond to them), and
applicant’s responses to opposer’s interrogatories numbers
3-7, 9-10, 12, and 21-23, all made of record by opposer by
notice of reliance;4 and the testimony depositions, with
exhibits, of opposer’s witnesses R. Lawrence Buckley and

matter of law for a proceeding such as this, because it asserts
delay by opposer in objecting to applicant’s use of its mark, not
delay in objecting to applicant’s registration thereof. See, in
this regard, National Cable Television Association Inc. v.
American Cinema Editors Inc., 937 F.2d 1572, 19 USPQ2d 1424 (Fed.
Cir. 1991), and Coach House Restaurant Inc. v. Coach and Six
Restaurants Inc., 934 F.2d 1551, 19 USPQ2d 1401 (11th Cir. 1991).
Accordingly, we will make no further mention of applicant’s
asserted defense.
4 Opposer also included in its notice of reliance the affidavit
of Ms. Julie K. Holthus, a legal assistant for opposer,
concerning her purchase of one of applicant’s golfer knives.
Attached as exhibits to the affidavit were a photograph of the
knife and its box, and photocopies of the package insert and of
the flattened out box. The affidavit and exhibits were offered
in an attempt to prove that applicant does not use the mark
GREENSMASTER on the knife or the box or package insert therefor.
Trademark Rule 2.123(b), 37 CFR §2.123(b), provides, in relevant
part, that by agreement of the parties, the testimony of any
witness of any party may be submitted in the form of an affidavit
by such witness. Here, there is nothing in the record to show
that applicant agreed to the submission of the testimony of Ms.
Holthus in affidavit form. Moreover, the fact that Ms. Holthus
may have purchased one golfer knife made by applicant that does
not bear the mark does not necessarily mean that applicant did
not sell other such knives which did bear the mark in some
manner.
Helmut J. Ullrich. Only opposer has filed a brief on the
case. Neither party requested an oral hearing.
Opposer’s evidence shows that since at least as early
as 1974 (the year when opposer’s witness Helmut J. Ullrich
began working for opposer), opposer has continuously and
prominently used the mark GREENSMASTER in connection with
greens mowers, i.e., mowers for golf course greens, and
parts and accessories therefor. All of opposer’s greens
mowers, which include both riding greens mowers and walking
greens mowers, are sold under this mark. The mark is used
on the mowers themselves, as well as on invoices, owner’s
manuals, catalogs, product brochures, etc. therefor.
GREENSMASTER greens mowers are sold, by opposer’s commercial
division, primarily to golf courses (where they are
purchased by golf course superintendents and used by
maintenance personnel), but also to municipalities (that own
golf courses), to landscape contractors who maintain golf
courses, and occasionally, in the case of the walking greens
mowers, to homeowners. Opposer sells its greens mowers to
exclusive distributors who in turn sell them to the end
users throughout the United States.
Opposer promotes its GREENSMASTER greens mowers in
various ways, including direct mailers; product brochures
and flyers; promotional videos; exhibits at trade shows,
namely, the International Golf Course Superintendents Show
of America and state regional shows; and advertisements in
trade magazines such as Golf Course Management, Golf News,
Southern Golf, Grounds Maintenance, and Landscape
Management. Opposer’s annual advertising expenditures and
sales figures for its GREENSMASTER mowers are quite
substantial.5 Indeed, opposer, with its GREENSMASTER riding
greens mowers, is the market share leader in the riding
greens mower industry, having more than half the market
share for such mowers. The GREENSMASTER mark is one of
opposer’s most important marks, and there is no doubt that
the mark is very well known in the field.
The record also shows, inter alia, that opposer has
policed its GREENSMASTER mark rigorously and successfully
with respect to golf-related products and services; that
opposer’s consumer division sells lawn mowers (albeit not
under the GREENSMASTER mark) to homeowners; that these lawn
mowers are sold through hardware stores and mass
merchandisers of consumer products; that these sorts of
stores also sell pocket knives; that opposer has sold and
given away (including to golf course superintendents) multi-
function pocket knives bearing its house mark TORO as
promotional items; that golfers typically carry tools for
repairing ball marks on golf greens; that a divot repair

5 Opposer’s sales and advertising figures for its GREENSMASTER
mowers were made of record as confidential material, filed under
seal.
tool would be used for repair of damage to the green
typically caused by golf balls striking the green and
creating dents or scars that would impair the ability of the
ball to roll evenly over the green; that a cleat wrench is
used to tighten loosened cleats on golf shoes; that greens
mowers are mowers which are designed to cut very precisely,
at a consistent height of cut, because the trueness of ball
roll is influenced by how uniformly the green is cut; and
that golfers see opposer’s GREENSMASTER mowers in use on the
golf course.
Opposer’s discovery efforts reveal that applicant has
used the mark GREENSMASTER only in connection with a multi-
function utility pocket knife which contains a variety of
implements. The implements on the knife include a cleat
wrench and a divot repair tool, both of which are tools
useful to golfers. According to applicant’s answer to
opposer’s interrogatory No. 6, the GREENSMASTER knife was
first sold by applicant in intrastate and interstate
commerce in January 1993.6 The mark does not appear on the
goods themselves or on package inserts therefor. However,
applicant states in its answer to opposer’s interrogatory
No. 6 that it uses the mark on UPC labels appearing on boxes

6 Applicant’s application specifies March 1993 as the date of
first use, and first use in commerce, of applicant’s mark. It is
of no moment whether applicant first used its mark in January or
in March of 1993, however, because there is no question as to
opposer’s priority.
and clam packs containing the knives,7 as well as in its
dealer catalog, consumer direct catalog, price list,
promotional brochures, and print advertising.
Applicant sells its GREENSMASTER knife directly to mass
merchants, dealers, distributors, warehouse clubs, and
catalogs. The knife is also sold through the use of
independent sales representatives to a variety of sporting
goods stores, cutlery stores, gift stores, and drug stores,
and by direct mail catalog. Opposer’s testimony indicates
that pocket knives may also be sold in golf pro shops. The
primary customers for the knife are golfers or people buying
the knife for golfers.
Applicant has promoted its GREENSMASTER knife through
exhibits at “a variety” of trade shows (applicant’s answer
to opposer’s interrogatory No. 12(d), and through
advertisements in magazines such as Audubon, Summit, Canoe,
National Parks, Outside, Sierra, and Backpacker. In
addition, a news photo and product description featuring the
GREENSMASTER knife was sent by applicant on February 10,
1993 to more than 20 consumer and trade golf magazines,
including some of the golf magazines in which opposer
advertises its GREENSMASTER mowers. Applicant’s total
advertising expenditures for its GREENSMASTER knife for the
period 1993-1995 amounted to a little more than $135,000.

7 As discussed more fully hereafter, the record does not include
Sales of the knife for the same period amounted to more than
$120,000.
Opposer’s discovery efforts also reveal, via its
requests for admissions, that a divot repair tool can be
used to repair turf on a golf green; that it helps to smooth
out the surface of a golf course green; and that applicant
promotes the GREENSMASTER knife as being for golfers. For
example, the knife is described in applicant’s 1995 direct
mail catalog as “a golfer’s dream knife-tool.” Another of
applicant’s 1995 catalogs includes, under the mark
“GreensMaster”, the wording, “Every golfer will want this
versatile SwissBuck in his bag. It has a divot replacer and
a cleat removing tool, …”8 One of applicant’s brochures
describes the knife as “For golfers; includes cleat wrench
and divot repair tool”, while another brochure describes it
as “Golfer’s friend! Divot repair tool, cleat wrench …” In
the news photo and product description forwarded by
applicant to a number of golf magazines on February 10,
1993, the headline reads, “NEW SWISSBUCK GREENSMASTER, HANDY
GOLFER’S KNIFE”, and the product description text begins as
follows:
“GreensMaster,” newest addition to the growing
line of SwissBuck knife-tools, has been designed
to provide golfers with a versatile companion on
the course. One of its 10 elements is a special

any examples of use in this manner.
8 SWISSBUCK is a mark used by applicant to identify a line of
knives, one of which is the GREENSMASTER knife.
tool for repairing divots and ball marks on the
green; another is a cleat wrench. …
Finally, an advertisement which was published in several
magazines included a picture of the knife along with the
wording “New GreensMaster Golfer’s Knife” in large letters
and then, in smaller letters, the wording “Includes a cleat
wrench and a tool to repair ball marks”.
We turn first to opposer’s asserted ground that
applicant’s mark is not in use in commerce in a trademark
sense as defined in §45 of the Act, i.e., that it is not
placed in any manner on the goods or their containers or the
displays associated therewith or on the tags or labels
affixed thereto. We find that opposer has failed to prove,
by a preponderance of the evidence, that such is the case.
In this regard, applicant admitted, in its responses to
opposer’s requests for admissions Nos. 8 and 10, that
applicant’s GREENSMASTER mark does not appear on the
GREENSMASTER product or on the package insert sheet
therefor. Applicant’s answers to opposer’s interrogatories
6 and 7 indicate that the mark is used instead on UPC labels
on boxes and clam packs containing the goods, and that such
use has been made since January of 1993, a date prior to the
filing of the application.9

9 Applicant’s 1995 direct mail catalog for consumers was made of
record through opposer’s request for admission No. 33. The
catalog includes a picture of applicant’s golfer pocket knife,
the mark “GREENSMASTER” in large capital letters immediately
Applicant failed to respond to, and thus admitted,
opposer’s request for admission No. 51, which asked
applicant to admit that Exhibit 0 (attached to the request
for admission) is a true and correct copy of a box and UPC
label of the type used for packaging applicant’s
GREENSMASTER product. Exhibit O is a photocopy of two sides
of a four-sided box, with the UPC label appearing on one of
the two visible sides. The mark GREENSMASTER does not
appear on either the UPC label or on what can be seen of the
box. However, the other two sides of the box, including
their end flaps, are not visible in the photograph. This is
significant, because the specimens of record in applicant’s
opposed application are boxes for the goods. The mark
GREENSMASTER appears, along with the product model number
and catalog number, on a small label (which does not,
however, appear to be a UPC label)10 on one of the end flaps

thereunder, the model number and then a description of the
product in much smaller printing thereunder, followed by a
catalog number, the price, and ordering information. This is
clearly trademark use of a type which can serve as a basis for
registration. See Lands’ End Inc. v. Manbeck, 24 USPQ2d 1314
(E.D. Va. 1992). However, applicant’s answer to opposer’s
interrogatory 7 indicates that this type of use did not commence
until after the filing of applicant’s application, and that the
only use of the mark made by applicant prior to the application
filing date was the use on UPC labels and some use in
advertisements, the latter of which was discontinued in 1995.
10 In The Random House Dictionary of the English Language (Second
Edition Unabridged, 1987), the listing for the designation “UPC”
reads, “[S]ee Universal Product Code.” The definition for
“Universal Product Code” reads, “a bar code that indicates price,
product classification, etc., and can be read electronically, as
at checkout counters in supermarkets. Abbr.: UPC”. The boxes
submitted by applicant as specimens have on their sides a fairly
of the box.11 For all we know, and for all applicant might
have known when it failed to respond to opposer’s request
for admission No. 51, and thus admitted the same, the small
label bearing the mark may be affixed to one of the end
flaps which is not visible in the photograph; and applicant
may have mistakenly referred to the label which bears the
mark as a UPC label.12 Even if the box pictured in Exhibit
O does not bear the mark GREENSMASTER anywhere, including on
any label affixed thereto, that does not necessarily mean
that applicant has not also sold its multi-function utility
pocket knives in boxes which do bear the mark on an end flap
label.13 In short, opposer had the burden of proving, by a
preponderance of the evidence, that applicant made no

large label with a bar code as well as certain print matter (not
including the mark GREENSMASTER). This is clearly a UPC label.
The small label appearing on the end flap and bearing the mark
GREENSMASTER has no bar code. Therefore, it does not fit the
definition of a UPC label.
11 Of course, the specimens of record are not evidence in
applicant’s behalf herein because they have not been identified
and introduced in evidence as exhibits during the time for taking
testimony. See Trademark Rule 2.122(b)(2), 37 CFR §2.122(b)(2).
12 Opposer itself, in its brief on the case, refers to the small
label on the specimen box as “a small UPC label.”
13 We cannot agree with opposer’s argument that the use of
applicant’s mark on the “small UPC label” is too small to
constitute prominent, acceptable trademark use. Applicant’s mark
GREENSMASTER is used in small letters on a small label.
Nevertheless, when it is noticed, it clearly creates the
impression of a trademark. As stated by the Court of Customs and
Patent Appeals, in In re Singer Manufacturing Co., 255 F.2d 939,
118 USPQ 310, 312 (1958):
No authority is cited, and none has been found,
to the effect that trademark use requires a display
of a design of any particular size or degree of prominence.
The important question is not how readily
the mark will be noticed, but whether, when it is
noticed, it will be understood as indicating origin of
trademark use of its mark, within the meaning of §45 of the
Act, prior to the filing date of its application. Opposer’s
evidence does no more than raise a question as to whether
such use was made prior to the filing date. This is
manifestly insufficient to meet opposer’s burden of proof.
This brings us to the Section 2(d) ground. It is clear
from the record that opposer not only owns a registration of
the mark GREENS MASTER for turf care equipment, including
lawn mowers, but also has used the mark GREENSMASTER to
identify its greens mowers since long prior to applicant’s
date of first use. Moreover, applicant’s mark GREENSMASTER
is identical to opposer’s previously used mark GREENSMASTER
and is substantially identical to opposer’s registered mark
GREENS MASTER.
Thus, the only issue remaining to be resolved is
whether the contemporaneous use of the mark GREENSMASTER in
connection with applicant’s multi-function utility pocket
knives and opposer’s greens mowers is likely to cause
confusion, or to cause mistake, or to deceive. The evidence
of record, as detailed above, shows, inter alia, that
applicant’s GREENSMASTER multi-function utility pocket knife
contains tools useful to golfers; can be used to repair turf
on a golf green; is promoted as being for golfers; and is
purchased primarily by golfers or by people buying the knife

the goods.”
for golfers. Moreover, the record indicates that golfers
see opposer’s GREENSMASTER mowers in use on the golf course;
that applicant has sent a press release concerning its
product to magazines which carry advertisements for
opposer’s mowers; that pocket knives may be sold in golf pro
shops; and that opposer itself has sold and given away
(including to golf course superintendents) multi-function
pocket knives bearing its house mark TORO as promotional
items. Considering these factors, together with the lack of
evidence of third-party use of similar marks in the golf
field, and the fact that opposer’s mark is very well known
in that field, we are persuaded that there is, in this case,
a likelihood of confusion. Indeed, applicant has offered no
evidence or argument to the contrary. If we had any doubt
on the issue of likelihood of confusion, which we do not,
that doubt would have to be resolved in favor of opposer,
the registrant and long-prior user. See, for example, J & J
Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18
USPQ2d 1889 (Fed. Cir. 1991), and In re Hyper Shoppes (Ohio)
Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988).
Decision: The opposition is sustained, and
registration to applicant is refused.
J. D. Sams
J. E. Rice
T. J. Quinn
Administrative Trademark
Judges, Trademark Trial
and Appeal Board