222 F.3d 943 (Fed. Cir. 2000), 99-1585, Cunningham v. Laser Golf Corp.

Docket Nº:99-1585
Citation:222 F.3d 943
Party Name:TOM CUNNINGHAM, Appellant, v. LASER GOLF CORPORATION (now known as BelAir Golf), Appellee.
Case Date:August 15, 2000
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit

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222 F.3d 943 (Fed. Cir. 2000)



LASER GOLF CORPORATION (now known as BelAir Golf), Appellee.


United States Court of Appeals, Federal Circuit

August 15, 2000

Appealed from: Patent and Trademark Office, Trademark Trial and Appeal Board

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Robert D. Fish, Fish & Associates, LLP, of Fullerton, California, for appellant.

Michael Fitzgerald, Barnes, Crosby, Fitzgerald & Zeman, L.L.P., for defendant-appellee.

Before MAYER, Chief Judge, ARCHER, Senior Circuit Judge, and LINN, Circuit Judge.

LINN, Circuit Judge.

Appellant Tom Cunningham seeks review of a final decision of the Trademark Trial and Appeal Board ("Board" or "TTAB") canceling his registration for the mark LASERSWING, for golf clubs, in light of the appellee's prior use and registration of the mark LASER for golf clubs and golf balls. See Laser Golf Corp. v. Tom Cunningham, Cancellation No. 26,054, slip op. at 7 (TTAB June 21, 1999). Because the Board's findings are supported by substantial evidence, we hold that the Board did not commit reversible error and affirm.


Cunningham produces a device that looks like a wood, a type of golf club. However, the device has a hollow plastic head that is not designed to impact golf balls. Rather, the device is used by golfers to practice and improve their golf swing with the aid of two light-emitting diodes of different colors contained in the

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head. Cunningham markets the device under the name LASERSWING. He received Reg. No. 2,025,118 for the mark LASERSWING on December 24, 1996. LASERSWING is registered on the Principal Register and Cunningham alleges a first use in 1993. Cunningham's registration contains a typed drawing and states that the mark is for golf clubs.

It is undisputed that Laser Golf Corp. ("Laser Golf"), the appellee, uses the mark LASER to market golf clubs and golf balls, and that in 1983 it received separate registrations for the mark LASER when used with either of these goods. These registrations are Reg. No. 1,243,793 for the mark LASER for golf clubs and Reg. No. 1,247,799, also for the mark LASER but for golf balls. The parties do not contest Laser Golf's priority. Laser Golf filed a petition to cancel Cunningham's registration and the Board granted the petition, pursuant to 15 U.S.C. § 1052(d) (section 2(d) of the Lanham Act), concluding that there was a likelihood of confusion. Cunningham appeals the Board's decision to this court. We have exclusive appellate jurisdiction. See 28 U.S.C. § 1295(a)(4)(B) (1994); 15 U.S.C. § 1071(a) (1994).


A. Standard of Review

A determination of likelihood of confusion is a legal conclusion based on underlying facts. See In re Dixie Restaurants, Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997). This court reviews the legal conclusion without deference and the underlying factual findings for substantial evidence. See Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 1327, 54 USPQ2d 1894,1897(Fed. Cir. 2000) (applying In re Gartside, 203 F.3d 1305, 53 USPQ2d 1769 (Fed. Cir. 2000) to decisions of the TTAB).

B. Analysis

1. Cancellation Proceedings

The Lanham Act allows for cancellation of a Principal Register registration by anyone "who believes that he is or will be damaged . . . by the registration." 15 U.S.C.A. § 1064 (West 1996 & Supp. 2000); see also Golden Gate Salami Co. v. Gulf States Paper Corp., 332 F.2d 184, 188, 141 USPQ 661, 664 (CCPA 1964) (quoting and explaining the statute). The party seeking cancellation must prove two elements: (1) that it has standing; and (2) that there are valid grounds for canceling the registration. See International Order of Job's Daughters v. Lindeburg & Co., 727 F.2d 1087, 1091, 220 USPQ 1017, 1019 (Fed. Cir. 1984); 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 20:41 (4th ed. 1996 & Supp. 1999) ("McCarthy").

Standing is the more liberal of the two elements and requires only that the party seeking cancellation believe that it is likely to be damaged by the registration. See Golden Gate, 332 F.2d at 188, 141 USPQ at 664 (finding standing, which requires only a belief in damage, but finding no likelihood of confusion); McCarthy, §§ 20:7, 20:41, 20:46. A belief in likely damage can be shown by establishing a direct commercial interest. See International Order, 727 F.2d at 1092, 220 USPQ at 1020 (finding sufficient the petitioner's production and sale of merchandise bearing the registered mark); McCarthy, §§ 20:7, 20:46. In this case, as stated earlier, Laser Golf owns two prior registrations. These registrations and the products sold under the mark they register suffice to establish Laser Golf's direct commercial interest and its standing to petition for cancellation of Cunningham's LASERSWING mark.

Establishing the second element, a valid ground for cancellation, is simplified if the registered mark has been on the Principal Register for less than five years. See International Order, 727 F.2d at 1091, 220 USPQ at 1020; McCarthy, § 20:42.

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In the present case, Cunningham's mark LASERSWING has a Principal Register registration date of December 24, 1996 and, therefore, has been on the Principal Register for less than five years. In such a case, any ground that would have prevented registration in the first place qualifies as a valid ground for cancellation. See id. One such ground is § 2(d) of the Lanham Act, relating to a likelihood of confusion between the mark sought to be canceled and a mark for which the party seeking cancellation can establish either prior use or prior registration. See Golden Gate, 332 F.2d at 188, 141 USPQ at 664 (finding no likelihood of confusion); McCarthy, § 20:53 (calling § 2(d) the most common ground). Laser Golf thus properly relied on a likelihood of confusion between LASERSWING and LASER, under § 2(d), as the basis for the appealed cancellation proceeding.

2. The DuPont Requirements

In Application of E. I. DuPont DeNemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), a case also involving an appeal from the Board, one of our predecessor courts listed thirteen factors that are relevant in a likelihood of confusion analysis. See id. at 1361, 177 USPQ at 567. The thirteen factors are: (1) the similarity or dissimilarity of the marks in...

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