Worldwide Golf Enterprises, Inc.v.Pintracker Golf, Inc.

Trademark Trial and Appeal Board

Mar 31, 2005

No. 91110983 (T.T.A.B. Mar. 31, 2005)

Mailed: March 31, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Worldwide Golf Enterprises, Inc.
v.
Pintracker Golf, Inc.
_____

Opposition No. 91110983
_____

Marsha G. Gentner of Jacobson Holman, PLLC for Worldwide Golf
Enterprises, Inc.

Gregory B. Beggs of Law Offices of Gregory B. Beggs for
Pintracker Golf, Inc.
______

Before Chapman, Holtzman and Rogers, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:
Applicant, Pintracker Golf, Inc.,1 has filed an application
to register the mark PINTRACKER on the Principal Register for

1 The Board has been notified that applicant is involved in a
bankruptcy proceeding under Chapter 7 of the Bankruptcy Act. Because
the automatic stay provisions of 11 U.S.C. §362 apply, proceedings in
the opposition would normally be suspended pending termination of the
bankruptcy action. However, in correspondence dated March 11, 2005,
the representative for applicant's trustee in bankruptcy requested that
the Board proceed with the issuance of a final decision in this case,
advising that the trustee is authorized under Federal Rule of
Bankruptcy Procedure 6009 to defend the opposition and that the trustee
formally elects to do so. Accordingly, in reliance on the trustee's
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Opp. No. 91110983
2
"golf clubs."2
On June 10, 1998, Worldwide Golf Enterprises, Inc. (opposer)
filed an opposition to registration of the above application. As
grounds for opposition, opposer alleges that applicant's mark so
resembles opposer's previously used and registered "PINSEEKER"
and "PIN" marks, identified below, for golf equipment and
clothing as to be likely, when applied to applicant's goods, to
cause confusion or mistake or to deceive. Opposer further
alleges that applicant was aware of opposer's PINSEEKER mark and
registration thereof prior to adopting the PINTRACKER mark.
Opposer identified its registrations as follows: Registration
No. 970098 for PINSEEKER and flag design, issued October 9, 1972;
Registration No. 1163910 for PIN-LITE issued August 4, 1981;
Registration No. 1175348 for PINSEEKER GOLF CORPORATION and flag
design, issued October 27, 1981; Registration No. 1497862 for
PINSEEKER and flag design, issued July 26, 1988; Registration No.
1561049 for PINSEEKER and flag design, issued October 17, 1989;
and Registration No. 1596622 for PINPOINTER, issued May 15, 1990.
Applicant, in its answer, admitted that the registrations
listed by opposer in the opposition issued on the dates alleged
and that applicant was aware that PINSEEKER and design had been

authority under Federal Rule of Bankruptcy Procedure 6009, proceedings
in this case will go forward.

2 Application Serial No. 74600374 filed on November 18, 1994, based on
dates of first use on September 20, 1994 and first use in commerce on
October 1, 1994.
Opp. No. 91110983
3
registered prior to adoption of its PINTRACKER mark. Applicant
denied the remaining salient allegations. In addition, applicant
affirmatively asserted that opposer is "estopped" from
challenging its mark "at this late date."
The record includes the pleadings, the file of the
involved application, and opposer's notice of reliance on status
and title copies of five of the six registrations pleaded in the
opposition.
Both opposer and applicant filed briefs. An oral hearing
was not requested.
Before proceeding to the merits, an evidentiary matter needs
to be addressed. On February 1, 2002, applicant filed, along
with its brief on the case, a motion to accept its notice of
reliance on eleven third-party registrations. Opposer has
objected to the motion.
As background for this matter, the initial trial order
issued by the Board set discovery to close on May 21, 1999 and
opposer's testimony period to open on July 18, 1999. On July 8,
1999 opposer filed a motion to compel and a motion to reset its
testimony period to open sixty days from receipt of applicant's
responses to the subject discovery requests.
The Board, on August 23, 2000, granted the motion to compel,
allowing applicant until September 12, 2000 to respond to
opposer's interrogatories. In addition, the Board granted the
Opp. No. 91110983
4
motion to reset trial dates to the extent that opposer's
testimony period was reset to open on September 1, 2000.
On August 31, 2000 opposer filed a motion for
reconsideration of that portion of the order resetting opposer's
testimony period to open almost two weeks before the discovery
responses were due, requesting that its testimony period be reset
to open on October 26, 2000. This motion was followed, on
September 22, 2000, by opposer's motion for sanctions in the
nature of default judgment in view of applicant's complete
failure to comply with the Board's August 23, 2000 order.
Applicant responded to the motion stating that it served the
discovery responses on September 27, 2000, and further stating
that it did not object to opposer's motion for an extension of
trial dates. Opposer, in reply, maintained its motion for
sanctions and requested that the Board reset its testimony period
to close on November 10, 2000.
Before these motions were decided, opposer, on October 26,
2000, filed its notice of reliance.
Then on March 16, 2001, opposer filed a "motion for
clarification, or in the alternative, extension of time." By
this motion, opposer, noting that proceedings had not yet been
suspended pending disposition of its motion for sanctions,
requested a sixty-day extension of time from the Board's ruling
on the motion to file its brief on the case "or, if the Board
Opp. No. 91110983
5
resets Opposer's testimony period, whenever appropriate under
such reset schedule."
Applicant noted opposer's request for an extension of time
to file its trial brief, but in response thereto, stated only
that "[t]o whatever extent the present motion is calculated to
revive Opposer's opportunities to pursue its case despite its
inactivity, applicant respectfully asks the Board to reject those
suggestions."
The Board subsequently suspended proceedings on August 7,
2001, and on October 29, 2001, issued an order on the pending
motions.
By this order, the Board denied opposer's motion for
sanctions; and noting opposer's notice of reliance filed on
October 26, 2000, stated, "It appears from a review of this file
that the parties have proceeded to trial and have submitted some
evidence." The Board accordingly granted opposer's August 31,
2000 motion for reconsideration to the extent that the notice of
reliance was accepted as timely, and granted opposer's March 16,
2001 motion for a sixty-day extension of time to file its trial
brief.
Opposer timely filed its trial brief on December 28, 2001.
Applicant, in turn, timely filed its trial brief by a certificate
of mailing dated January 28, 2002. On that same date, applicant
Opp. No. 91110983
6
filed its motion that the Board accept the proffer of its notice
of reliance on the third-party registrations.
In support of its motion, applicant argues that it had
pleaded the existence of the third-party registrations in its
answer to the notice of opposition; that applicant never had any
testimony period following the "final closure" of opposer's
testimony period in which to submit its own notice of reliance;
and that while the Board in its October 29, 2001 order "expressly
refused" to reset opposer's testimony period, the Board also did
not reset any testimony period for applicant, and instead only
reset dates for trial briefs. Applicant maintains that opposer's
testimony period "was kept alive" by requests for extensions, by
motions and by suspension orders until October 29, 2001; and that
in view of the acceptance of opposer's notice of reliance just
before the trial briefs, the Board should accept the applicant's
proffer of its own notice of reliance at this time. Replying to
opposer's objection to the motion, applicant states that it is
specifically not seeking to reopen testimony, but only leave to
file its notice of reliance "instanter."
Applicant's attempt to introduce this evidence during the
briefing stage of the case is untimely and improper. See
Trademark Rule 2.122(e). See also Sports Authority Michigan Inc.
v. PC Authority Inc., 63 USPQ2d 1782 (TTAB 2001) and Plantronics
Inc. v. Starcom Inc., 213 USPQ 699 (TTAB 1982). If applicant
Opp. No. 91110983
7
believed that the Board by its October 29, 2001 order incorrectly
reset dates, it was incumbent upon applicant to file a proper and
timely request for reconsideration of that order within the one
month time period specified by Trademark Rule 2.127(b).
Moreover, we note that there was nothing in applicant's response
to opposer's March 16, 2001 motion to indicate to the Board that
applicant objected to opposer's request to reset only briefing
dates and not trial dates, or to even suggest that a resetting
only of briefing dates was not fully acceptable to applicant.
Thus, based on opposer's request to reset only briefing dates, to
which no objection was made, and given that evidence had in fact
already been filed in this case, the Board reasonably concluded
that the parties did not require additional time for trial.
Applicant waited for three months after the decision, without any
explanation for the delay, to, in effect, make its objection
known.
Because applicant did not file a timely request for
reconsideration and has not shown excusable neglect to reopen its
testimony period,3 applicant's motion to accept its notice of

3 Although applicant states in its reply brief on the motion that it is
specifically not seeking to reopen its testimony period, the simple
fact is that if we were to "accept" applicant's notice of reliance,
opposer would be entitled to a rebuttal testimony period in which to
introduce evidence to refute or explain applicant's evidence followed
by briefing dates to present arguments relating to the evidence. In
any event, applicant has offered no reason, let alone an excusable
reason, for its three-month delay in seeking, in effect, to reopen its
testimony period.
Opp. No. 91110983
8
reliance at this late date is denied. Accordingly, neither the
third-party registrations nor any arguments relating to those
registrations will be considered.4
We turn then to the merits of this case.5 Opposer has made
of record status and title copies of five of its six pleaded
registrations, prepared by the Office on September 8, 2000, all
showing on their face their current status and ownership in
opposer. However, USPTO records currently show that two of those
registrations, Registration Nos. 970098 and 1175348, were not
renewed and have been cancelled by the USPTO.6 Expired or
cancelled registrations are not evidence of anything except that
they issued and we accordingly have given them no other
evidentiary effect. See TBMP 704.03(b)(1)(A) (2d ed. rev. 2004)
and cases cited therein.

4 Even if we were to consider this evidence on the merits, as discussed
infra, it would not affect the outcome of this case or any aspect of
our decision.

5 Although applicant affirmatively asserted an "estoppel" defense in
its answer, inasmuch as applicant submitted no evidence on the defense
or argument beyond a mere passing reference, the defense will be given
no further consideration.

6 Office records show that Registration No. 970098 was cancelled on
July 10, 2004 and Registration No. 1175348 was cancelled on August 3,
2002. When a Federal registration owned by a party has been properly
made of record, and the status of the registration changes between the
time it was made of record and the time the case is decided, the Board,
in deciding the case, will take judicial notice of, and rely on, the
current status of the registration, as shown by the records of the
Office. See TBMP §704.03(b)(1(A) (2d ed. rev. 2004).

Opp. No. 91110983
9
Nevertheless, on the basis of the three registrations which
are valid and of record, opposer's standing has been established,
and its priority with respect to the registered marks for the
goods identified therein is not in issue. King Candy Co., Inc.
v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA
1974). Those three registrations are as follows:
Registration No. 1561049 for the following mark for
"clothing for men – namely, sweaters, vests, shirts, slacks,
shorts, and gloves; clothing for women – namely, skirts,
shorts, slacks, blouses, and gloves; caps, visors, hats,
socks, and rainwear:7

Registration No. 1497862 for the following mark for "golf
clubs, golf balls, golf bags, golf bag covers and golf club
wood head covers":8

Registration No. 1163910 for the following mark for "golf
clubs":9

7 Issued October 17, 1989; affidavits under Sections 8 and 15 accepted
and acknowledged, respectively.

8 Issued July 26, 1988; affidavits under Sections 8 and 15 accepted and
acknowledged, respectively.

9 Issued August 4, 1981; renewed.
Opp. No. 91110983
10
Contrary to applicant's contention, these registrations
constitute prima facie evidence of opposer's ownership of the
marks shown, the validity of each registration, opposer's
exclusive right to use the marks in connection with the
identified goods, and moreover opposer's use of the marks for the
goods specified in therein at least as early as the filing dates
of the applications that issued into those registrations. See
Section 7(b) of the Trademark Act; J.C. Hall Co. v. Hallmark
Cards, Inc., 340 F.2d 960, 144 USPQ 435 (CCPA 1965); American
Throwing Company, Inc. v. Famous Bathrobe Company, Inc., 250 F.2d
377, 116 USPQ 156 (CCPA 1957); and Liberty & Co., Ltd. v. Liberty
Trouser Co., Inc., 216 USPQ 65 (TTAB 1982). Because applicant
did not file a counterclaim to cancel of any of these
registrations, applicant's challenge to the ownership and
validity of the registrations will not be considered.10 See
Trademark Rule 2.106(b)(2)(ii). See also The Gillette Company v.
"42" Products Ltd., Inc., 158 USPQ 101 (CCPA 1968); and Contour
Chair-Lounge Co., Inc. v. The Englander Company, 139 USPQ 285
(CCPA 1963).
We turn next to the question of likelihood of confusion.
Our determination under Section 2(d) is based on an analysis of

10 To the extent that applicant seeks dismissal of the opposition under
Trademark Rule 2.132(b), the motion is denied as untimely. See
Trademark Rule 2.132(c). In any event, a finding of likelihood of
confusion may well be based solely on a consideration of the marks and
goods as shown in the respective application and registrations.

Opp. No. 91110983
11
all of the probative facts in evidence that are relevant to the
factors bearing on the likelihood of confusion issue, including
the similarity of the marks and the similarity of the goods.11 In
re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973).
In our analysis we will focus on the closest of opposer's
registrations to the involved application, Registration No.
1497862 of the mark PINSEEKER and design for "golf clubs, golf
balls, golf bags, golf bag covers and golf club wood head
covers."
The goods identified in Registration No. 1497862 include
golf clubs. These goods are identical to the goods covered by
the application. Because these goods are identical and there are
no restrictions as to their channels of trade or classes of
purchasers, they must be deemed to be sold in the same channels
of trade and directed to the same purchasers. Interstate Brands
Corp. v. McKee Foods Corp., 53 USPQ2d 1910 (TTAB 2000). It is
clear that if these identical goods are offered under similar
marks there would be a likelihood of confusion.

11 Contrary to applicant's contention, any determination by the
examining attorney regarding the likelihood of confusion between these
marks is irrelevant to our determination herein. The Board is
not bound by determinations made at the examination level. See Hilson
Research Inc. v. Society For Human Resource Management, 27 USPQ2d 1423
(TTAB 1993).

Opp. No. 91110983
12
Thus, we turn to the marks, keeping in mind that when marks
would appear on identical goods, the degree of similarity between
the marks necessary to support a finding of likely confusion
declines. Century 21 Real Estate v. Century Life, 970 F.2d 874,
23 USPQ2d 1698 (Fed. Cir. 1992).
Applicant argues that PINTRACKER and PINSEEKER do not look
alike or sound alike, and that the design in opposer's
registration separates the term PIN from the term SEEKER thereby
emphasizing the separation of the words and the golf pin flag.
Applicant points out that opposer has admitted that "PIN" is a
common term in golf referring to the stick carrying a flag at a
golf hole, and disputes opposer's claim that "seeker" and
"tracker" are synonymous, instead maintaining that the two terms
are not even "overlapping in meaning."
There are specific differences between opposer's mark
"PINSEEKER and design and applicant's mark PINTRACKER in typed
form. Although both marks begin with "PIN" followed by a two-
syllable word ending in "KER," the marks are essentially
different in overall sound and appearance. However, there are
similarities in these marks and we find that the similarities
strongly outweigh those differences. When the marks are
considered as a whole, and in relation to the golf clubs offered
thereunder, PINSEEKER and design and PINTRACKER are substantially
similar in overall meaning and commercial impression.
Opp. No. 91110983
13
There is no dispute that the word "pin" has a recognized
meaning in golf. We take judicial notice of the online
dictionary reference provided by opposer in its brief which
defines the word "pin" as a "staff of the flag marking a hole on
a golf course."12
We also take judicial notice of the dictionary definitions
of "tracker" and "seeker" that both parties have attached or
referred to in their briefs. The entries submitted by applicant
refer to "tracker" as the noun form of the verb "track," which
means, inter alia, "to search for until found," and that same
dictionary refers to "seeker" as the noun form of the verb "seek"
having, among other meanings, "to go in search of: look for." 13
The evidence shows that SEEKER and TRACKER convey the same
general meaning. Thus, when the words SEEKER and TRACKER are
each preceded by the word PIN, both marks project a substantially
similar overall image in relation to golf clubs. The addition of
the golf flag design to opposer's mark in this context is not a
distinguishing feature as it does not change the meaning or
commercial impression of PINSEEKER, it instead reinforces it.

12 Merriam-Webster Collegiate Dictionary, located at www.m-w.com. The
Board may properly take judicial notice of dictionary definitions,
including online dictionaries which exist in printed format. See In re
CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB 2002). See
also 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).

13 Webster's Ninth New Collegiate Dictionary (1988).

Opp. No. 91110983
14
In view of the substantially similar meanings and commercial
impressions conveyed by these marks, and because the respective
marks are used in part on the identical goods, golf clubs, we
believe that the differences in sound and appearance are not
sufficient to avoid confusion. See, e.g., Gastown Inc. of
Delaware v. Gas City, Ltd., 187 USPQ 760 (TTAB 1975) (finding
likelihood of confusion between GAS CITY and GASTOWN for gasoline
based on similarity in meaning alone).
Contrary to opposer's contention, the incontestable status
of its registrations does not constitute evidence of the strength
of opposer's PINSEEKER mark. See, e.g., Oreck Corporation v.
U.S. Floor Systems, Inc., 803 F.2d 166, 231 USPQ 634, 638 (5th
Cir. 1986). At the same time, however, there is no evidence that
opposer's mark is weak and entitled to only a narrow scope of
protection.14
Applicant's apparent contention that PINSEEKER is entitled
to a limited scope of protection because "pin" has a recognized
meaning in relation to golf is not well taken. The question of

14 As we noted earlier, the third-party registrations submitted by
applicant are not properly of record. However, even if these
registrations were of record, they would not be persuasive on the
question of likelihood of confusion between the marks herein. Third-
party registrations are not evidence of the use of the registered
marks, that the purchasing public is aware of them or familiar with
them, or that the marks co-exist without confusion in the marketplace.
See Conde Nast Publications Inc. v. Miss Quality Inc., 507 F.2d 1404,
184 USPQ 422 (CCPA 1975); and AMF Inc. v. American Leisure Products
Inc., 474 F.2d 1403, 177 USPQ 268 (CCPA 1973).

Opp. No. 91110983
15
whether the marks are confusingly similar must be determined on
the basis of the commercial impression of the marks as a whole,
not the asserted suggestive or descriptive meaning of "pin" or
any other single component of the marks. See H. Sichel Sohne,
GmbH V. John Gross & Co., 204 USPQ 257 (TTAB 1979). Moreover,
the meaning of a mark must be determined not in a vacuum, but in
relation to the goods on or in connection with which it is used.
See Presto Products Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895
(TTAB 1988). When the mark PINSEEKER and design is considered as
a whole, the mark has, at most, only an indirect or somewhat
suggestive meaning in relation to golf clubs. As such, there is
no reason to accord opposer's mark anything less than the normal
scope of protection.
In view of the similarity of the marks, and because the
goods, as well as the trade channels and purchasers for the goods
are identical, we find that confusion is likely.15
Decision: The opposition is sustained and registration to
applicant is refused.
A copy of this decision is being sent to all persons listed
below.

15 We will not, as opposer urges, presume wrongful intent merely on the
basis of applicant's admission that it had prior knowledge of opposer's
marks. Mere knowledge of another's mark does not, in itself, establish
bad faith or wrongful intent. See Sweats Fashions Inc. v. Pannill
Knitting Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987).

Opp. No. 91110983
16
Marsha G. Gentner
Jacobson, Price, Holman & Stern
400 Seventh Street, N.W.
Washington, DC 20004

Mr. Gregory Beggs
Offices of Gregory B. Beggs
5100 Fairview Avenue
Downers Grove, IL 60515

Charles S. Riecke
Seyfarth Shaw LLP
55 E. Monroe Street, Suite 4200
Chicago, IL 60603-5803