Gift of Learning Foundation, Inc. v. Tgc, Inc.

• Citation: 329 F.3d 792
• Decision Date: 24 April 2003
• Docket Number: No. 01-16717.,01-16717.
• Parties: GIFT OF LEARNING FOUNDATION, INC., d.b.a. Kids Golf, Plaintiff-Appellant, v. TGC, INC., Defendant-Appellee, Adelphia Cable Communications, AT&T Cable, et al., Defendants.
• Court: United States Courts of Appeals. United States Court of Appeals (11th Circuit)

329 F.3d 792

GIFT OF LEARNING FOUNDATION, INC., d.b.a. Kids Golf, Plaintiff-Appellant, v. TGC, INC., Defendant-Appellee Adelphia Cable Communications, AT&T Cable, et al., Defendants.

No. 01-16717.

United States Court of Appeals, Eleventh Circuit.

April 24, 2003.

Roy R. Watson, West Palm Beach, FL, Frank A. Cona, Schrafer, Harrison, Segal & Lewis, LLP, Philadelphia, PA, for Plaintiff-Appellant.

Donald J. Hayden, Jonas Craig Packer, Baker & McKenzie, Miami, FL, John C. Filosa, Baker & McKenzie, Chicago, IL, for Defendant-Appellee.

Appeal from the United States District Court for the Southern District of Florida (No. 01-08069-CV-DTKH); Daniel T.K. Hurley, Judge.

Before TJOFLAT and BARKETT, Circuit Judges, and WEINER^*, District Judge.

PER CURIAM:

The judgment in this case is affirmed for the reasons stated in the district court's well-reasoned order issued on October 29, 2001, and attached hereto as an appendix.

AFFIRMED.

APPENDIX

ORDER GRANTING DEFENDANT'S MOTION FOR SUMMARY JUDGMENT

THIS CAUSE comes before the court upon defendant The Golf Channel's motion for summary judgment. This case involves a suit brought by Gift of Learning Foundation, Inc. (GOLF) d/b/a Kids Golf, which operates DRIVE PITCH & PUTT, an international golf skills competition for children, against The Golf Channel, Inc. (TGC) for trademark infringement because of the latter's use of the term "Drive Chip & Putt" in connection with its own skills challenge. Kids Golf brought suit under 15 U.S.C. § 1125(a) (Lanham Act), Fla. Stat. § 501.201 et seq. (Florida Deceptive and Unfair Trade Practices Act), and Florida common law, and seeks declaratory relief. Defendant has moved for summary judgment on all counts on the grounds that the term DRIVE PITCH & PUTT is a descriptive term that has not acquired a secondary meaning, and therefore Kids Golf lacks a protectible interest in the term. After consideration of the motion, argument of counsel, relevant case law, and the record evidence viewed in the light most favorable to the plaintiff, defendant's motion for summary judgment will be granted.

* * *

BACKGROUND

Plaintiff Kids Golf is a Florida corporation. Kids Golf operates Kids Golf's DRIVE PITCH & PUTT, an international golf skills challenge that is open free to all children. The program features a driving, pitching, and putting competition and a rules and etiquette test. Kids Golf states that the skills challenge has been conducted by it as a continuous annual event since 1993 until the present. Competitions began locally in West Palm Beach, Florida, and have expanded throughout the United States and worldwide. Plaintiff's competition is partnered with, associated with, or supported by many leading golf industry and children's organizations, including the Professional Golfer's Association of America (PGA), the National Association of Junior Golfers, Junior Golf World (U.K.), the Boys and Girls Clubs of America, the Police Athletic League, and various city and county departments of parks and recreation.

Plaintiff claims that it has been using DRIVE PITCH & PUTT in connection with its internet web site to provide information about its junior golf skills challenge continuously since at least as early as March 1996. The Kids Golf web site currently averages about 200,000 hits per month, and had nearly 2 million hits in 2000. About 500 different web sites are known to link to the Kids Golf web site.

Kids Golf claims that it is the owner of its DRIVE PITCH & PUTT trademark and has five U.S. Trademark applications pending before the United States Patent and Trademark Office for federal registration of its purported trademark. Kids Golf claims that its trademark is inherently distinctive, and that its extensive and continuous use of the trademark throughout the United States and jurisdictions covered by the Lanham Act has created "significant secondary meaning for the mark." Plaintiff further contends that it has expended a significant amount of time and money to establish the tremendous goodwill and value it has achieved in the DRIVE PITCH & PUTT trademark.

Defendant TGC is a Delaware corporation with its principal place of business in Orlando, Florida. TGC operates a cable television network of golf-related programming, which is available throughout the United States, Canada, and Asia through cable, satellite, and wireless television providers. Plaintiff claims that in 1998, defendant, with full knowledge of plaintiff's prior adoption and extensive use of the DRIVE PITCH & PUTT trademark, created a competing junior skills challenge under the name Drive Chip & Putt. TGC has held its Drive Chip & Putt competitions in 1999 and 2000. Plaintiff originally also filed suit against numerous cable television providers based in various locations around the country that announced their intention to promote TGC's competing skills challenge, but has since voluntarily dismissed its claims against them.

Plaintiff states that in 1993 it created the DRIVE PITCH & PUTT golf skills competition. James Mallamo, president and C.E.O. of Kids Golf, modeled the competition after the successful branding campaign of the NFL's federally-registered Punt Pass & Kick competition. Kids Golf's goal was to create a highly-recognized branded competition that would benefit the game of golf by allowing children to compete nationally and internationally, thereby creating significant value to corporations and other sponsors. In 1993, 1994, and 1995, Kids Golf promoted, organized, and conducted its DRIVE PITCH & PUTT competition in West Palm Beach, in association with WPTV, Channel 5, West Palm Beach, an NBC affiliate.

Plaintiff claims that while the competition was held locally in the West Palm Beach area for the years 1993, 1994, and 1995, it made considerable efforts to develop and promote the competition. Revenues for the local competition from sponsors were between $40,000 and $50,000 annually, with expenses nearly equal to revenue. Jack Nicklaus agreed to be the honorary chairman, and television spots were aired on WPTV. Kids Golf says it intended ultimately to launch its program nationally and internationally.

On September 9, 1994, Mr. Mallamo filed a trademark application with the U.S. Patent and Trademark Office for Kids Golf DRIVE PITCH & PUTT and design. Kids Golf abandoned its application on September 19, 1995. In November 1995, Kids Golf learned that the application for the trademark and design was rejected by the trademark office because there was a prior application and registration to Ryder Systems for the mark "Pitch Putt & Drive." Ryder Systems conducted a competition for children under the mark Pitch Putt & Drive in conjunction with their sponsorship of the Ryder Doral Open, a PGA Tour event in Miami, Florida. On October 5, 1998, the trademark office cancelled the Ryder Systems mark. Ryder no longer sponsors the tour event and no longer conducts a kids' competition.

In 1996, Kids Golf and the Jack Nicklaus company known as Golden Bear International, Inc., its partner since 1993, promoted and organized the DRIVE PITCH & PUTT competition on a national basis. In January 1996, the idea of a national DRIVE PITCH & PUTT competition was presented to the executives of the National Association of Television Program Executives at a conference in Las Vegas. Around that time, Kids Golf and Golden Bear had reached a tentative agreement with Compuserve to be the exclusive title sponsor of the Kids Golf competition. In May 1996, Compuserve stated that it would be unable to honor its commitment as sponsor. By then it became too late to obtain other sponsors or negotiate contracts with the 11 television stations that had expressed interest following the presentation to the NATPE executives. Kids Golf was thereby unable to conduct a national competition in 1996. TGC states that by October 1996, it had already started to develop its own junior golf skills competition.

Kids Golf states that since 1996, it has continued to promote and advertise its competition on a national level. Kids Golf states that in 1997, its competition returned on a national level and that there have been competitions on a national level each year since then. In 1997, the competition was held in seven locations in five states; in 1998 in at least eight locations in seven states; in 1999 in 24 locations in 16 states, and Sweden and Germany; in 2000 in at least 36 locations in 21 states, and two foreign countries. Competitions are continuing in the year 2001. By 2000, the number of competition participants increased to approximately 1,200.

Kids Golf states that it has continuously advertised and promoted the DRIVE PITCH & PUTT competition through various media, including magazines and journals with national distribution to the golfing industry and general public, such as the PGA Journal, Golf Illustrated Magazine, Junior Golf Magazine, U.S. Kids Magazine, and the National Recreation and Parks Association Magazine. The competition has been promoted on radio and television, including a promotion on TGC's program "Golf Academy Live" on April 9, 1997. Kids Golf "DRIVE PITCH & PUTT" has been exhibited and promoted annually at the PGA Merchandise Show in Orlando, Florida, since 1999.

Kids Golf states that it has corresponded and consulted with individuals and organizations that are leaders in the golf industry. It claims a close relationship with PGA of America, the National Association of Junior Golfers, and other organizations. It states that since 1999 it has had an exclusive alliance agreement with the NAJG that includes approximately 4,5000 junior golf directors. In the last two years, there has been a direct mailing to the directors of the NAJG promoting the Kids Golf competition.

On January 9, 1998, TGC filed a trademark application for the mark Drive, Chip & Putt & design. The trademark office issued an office action and required TGC to disclaim the descriptive wording Drive, Chip & Putt. TGC...