Aldila, Inc.v.Lott

Trademark Trial and Appeal Board

May 31, 2001

No. 92025703 (T.T.A.B. May. 31, 2001)

5/31/01 Paper No. 13
GDH/gdh
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Aldila, Inc.
v.
Lott
_____
Cancellation No. 25,703
_____
Kenneth L. Wilton of Small Larkin LLP for Aldila, Inc.
Kathryn Jennison Shultz of Jennison & Shultz, P.C. for Kelly
Lott.
_____
Before Hohein, Wendel and Rogers, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Aldila, Inc. has petitioned to cancel the registration
owned by Kelly Lott for the mark "ALDILA" and design, as
reproduced below,
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Cancellation No. 25,703
2
for "hand creams, lotions and gels; facial creams, lotions and
gels; day creams; night creams; bath lotions, gels and creams;
mineral baths; shower and bath creams, lotions and gels; body
masques; vegetable mud; moisturizing lotions, cremes, oils and
masques; cleansing gels; facial and body scrubs; collagen; fade
creams and lotions; eye and throat creme; eye gels; blemish gels,
creams and lotions; facial masques; [and] perfumes".1 As grounds
for cancellation, petitioner alleges that it "is in the business
of manufacturing and selling sports equipment, principally golf
shafts"; that it is the owner of a subsisting registration for
the mark "ALDILA" for "sporting goods--namely, golf clubs, golf
club heads and golf club shafts";2 that since at least as early
as its claimed March 1, 1974 dates of first use, petitioner "and
its predecessors in interest have continuously and extensively
advertised, promoted and sold a variety of products in connection
with the ALDILA mark and trade name throughout the United
States"; that "[t]hrough extensive use and promotion, the ALDILA
mark and trade name have become so well and favorably known to
the public throughout the United States as to be a famous mark
and name"; and that respondent's "ALDILA" and design mark so
resembles petitioner's previously used and registered mark
"ALDILA" and its previously used trade name "ALDILA" as to be
1 Reg. No. 1,996,927, issued on August 27, 1996 from an application
filed on August 29, 1995, which sets forth a date of first use
anywhere of July 1995 and a date of first use in commerce of August
24, 1995.
2 Reg. No. 1,029,465, issued on January 6, 1976 from an application
filed on August 7, 1974, which sets forth dates of first use of March
1, 1974; renewed.
Cancellation No. 25,703
3
likely, when applied to respondent's goods, to cause confusion,
mistake or deception.
Respondent, in her answer, has denied the salient
allegations of the petition to cancel.
The record consists of the pleadings; the file of the
involved registration; and, as petitioner's case-in-chief: the
testimony, with exhibits, of Carla Bahl, petitioner's advertising
manager; respondent's answer, including the exhibit which is part
of such response, to petitioner's Interrogatory No. 9; and copies
of 17 third-party registrations.3 Respondent did not take
testimony or otherwise introduce any evidence. Only petitioner
filed a brief and neither party requested an oral hearing.
3 Although each of such registrations, as stated in petitioner's notice
of reliance thereon, is "offered to show the relatedness of the goods
at issue in this proceeding," it is noted that only three of the
registrations issued on the basis of use in commerce, with the
remaining 14 having issued pursuant to the provisions of Section 44 of
the Trademark Act, based upon the registrants' ownership of foreign
registrations. As stated in In re Mucky Duck Mustard Co. Inc., 6
USPQ2d 1467, 1470 (TTAB 1988) at n. 6:
Third-party registrations which cover a number of differing
goods and/or services, and which are based on use in
commerce, although not evidence that the marks shown therein
are in use on a commercial scale or that the public is
familiar with them, may nevertheless have some probative
value to the extent that they may serve to suggest that such
goods or services are of a type which may emanate from a
single source. See: In re Great Lakes Canning, Inc., 227
USPQ 483, 484 (TTAB 1985), and In re Phillips-Van Heusen
Corp., 228 USPQ 949 (TTAB 1986). ....
However, as to third-party registrations which are based upon foreign
registrations, it is pointed out that such registrations "are not even
necessarily evidence of a serious intent to use the marks shown
therein in the United States on all of the listed goods ..., and they
have very little, if any, persuasive value on the point for which they
were offered." Id. Consequently, just three of the 17 third-party
registrations offered by petitioner in support of its contention that
the parties' goods are related may be said to have any probative
value.
Cancellation No. 25,703
4
Turning first to the issue of priority, petitioner
contends among other things that such is not an issue because it
"relies upon its incontestible [sic] registration for 'ALDILA',
the validity of which has not been challenged by Respondent." It
is settled, in this regard, that insofar the parties' marks are
concerned, priority of use is not in issue where the certified
copy of the registration relied upon by a petitioner was prepared
reasonably contemporaneously to the commencement of the petition
to cancel;4 the certified copy either shows both the current
status of such registration as being subsisting and the current
title thereto as being in the name of the petitioner, or a
witness having personal knowledge of the current status of and
current title to the pleaded registration testifies that it is
subsisting and owned by the petitioner; and the filing date of
the application which matured into such registration is shown to
be earlier than the filing date of the application which resulted
in the involved registration for the respondent's mark. See,
e.g., Hilson Research Inc. v. Society for Human Resource
Management, 27 USPQ2d 1423, 1428-29 (TTAB 1993) at n. 13;
American Standard Inc. v. AQM Corp., 208 USPQ 840, 841-42 (TTAB
1980); and TBMP §703.02.
4 Under Trademark Rule 2.122(d)(2), "[a] registration owned by any
party to a proceeding may be made of record in the proceeding by that
party by appropriate identification and introduction during the taking
of testimony or by filing a notice of reliance, which shall be
accompanied by a copy (original or photocopy) of the registration
prepared and issued by the [United States] Patent and Trademark Office
showing both the current status of and current title to the
registration."
Cancellation No. 25,703
5
Here, petitioner offered as an exhibit, through the
September 2, 1998 testimony of its witness, a plain copy of the
October 15, 1996 certificate of renewal of its pleaded
registration for its mark. Such copy clearly is not certified to
be a true copy of the renewal of the pleaded registration and
thus fails to demonstrate the current status of and title to the
registration. Moreover, while petitioner's witness testified to
her knowledge that such registration was currently owned by
petitioner, she did not indicate that the registration was
currently subsisting. Furthermore, petitioner has otherwise
failed to make its pleaded registration properly of record since
the plain copy of a certified copy thereof which accompanies the
November 21, 1996 filing of the petition to cancel5 was prepared
on December 27, 1995, and thus is not reasonably contemporaneous
thereto, and the accompanying plain copy of the same October 15,
1996 certificate of renewal, as noted above, fails to show the
current status of and current title to such registration.
Nevertheless, at least as to petitioner's use of its
"ALDILA" mark and trade name in connection with golf shafts, the
record is clear that priority of use lies with petitioner. The
uncontroverted testimony of Ms. Bahl establishes that petitioner
has continuously used such mark and trade name in connection with
its golf shafts since either its inception in 1972 or at least no
5 Under Trademark Rule 2.122(d)(1), "[a] registration of the ...
petitioner pleaded in [a] ... petition to cancel will be received in
evidence and made part of the record if the ... petition is
accompanied by two copies (originals or photocopies) of the
registration prepared and issued by the [United States] Patent and
Trademark Office showing both the current status of and current title
to the registration."
Cancellation No. 25,703
6
later March 1, 1974, which is stated to be the dates of first use
claimed in its pleaded registration. Specifically, she testified
that petitioner has sold its "ALDILA" golf shafts throughout the
United States "[s]ince the first day we opened our door, 1972,"
and affirmed that, since 1972, petitioner has always been called
Aldila. (Bahl dep. at 68.) Although, on cross-examination, she
admitted that she did not personally know the date petitioner
first used its "ALDILA" mark on golf shafts, she further stated
that as far as she knows the March 1, 1974 dates of first use set
forth in petitioner's pleaded registration are accurate. Thus,
in either case, the earliest dates upon which petitioner can rely
herein are long prior to the August 27, 1996 filing date of the
application underlying respondent's registration for her "ALDILA"
and design mark, which in the absence of testimony or other
evidence by respondent is the earliest date upon which she can
rely in this proceeding. See, e.g., Lone Star Manufacturing Co.,
Inc. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368, 369 (CCPA
1974); Columbia Steel Tank Co. v. Union Tank & Supply Co., 277
F.2d 192, 125 USPQ 406, 407 (CCPA 1960); Hilson Research Inc. v.
Society for Human Resource Management, supra; and American
Standard Inc. v. AQM Corp., supra.
The remaining issue to be determined, therefore, is
whether respondent's "ALDILA" and design mark, when used in
connection with any of the goods identified in her involved
registration, so resembles petitioner's previously used "ALDILA"
mark and trade name for golf shafts as to be likely to cause
Cancellation No. 25,703
7
confusion, mistake or deception as to the source or sponsorship
of the respective goods.
According to the record, petitioner is a small company
with under 50 employees. Its current business consists of
manufacturing and selling graphite golf shafts, although it also
makes for its own use graphite prepreg, which is the material
from which its golf shafts are made. Petitioner commenced
business, under the name Aldila, Inc., in 1972 as a private
company. Petitioner "was sold in the late eighties to an
investment group and then resold in 1991 to Forstmann & Little
Investment Bankers" before becoming a public company, with its
shares being traded on the NASDAQ exchange, in 1993. (Id. at
11.)
Petitioner principally sells its golf shafts to
original equipment manufacturers, such as Callaway, Taylor Made,
Ping and other brand name golf club producers, and to its
distributors, who in turn sell its goods to the golfing public
primarily through golf or pro shops and retail sporting goods
outlets. However, as to petitioner's sales to original equipment
manufacturers, Ms. Bahl indicated that "a lot of the product that
we manufacture for that side of the business is private label" in
that "they give us the product name, and we ... silk screen it on
the shafts." (Id. at 23.) She further noted, with respect to
such product, that while "[a] lot of times, it has their logo,
their artwork, their design" on it, when asked whether "those
private labeled shafts also have the Aldila name on them," she
replied that "[s]ome do, some don't." (Id.) For example, even
Cancellation No. 25,703
8
though petitioner supplies golf shafts to Callaway, which "is the
leading golf club manufacturer today," and has jointly developed
golf shafts with Callaway, whether petitioner's "ALDILA" mark
appears on golf clubs sold by Callaway (and currently it does
not) is a year-by-year decision which, according to Ms. Bahl, "is
strictly Callaway's call on that." (Id. at 32 and 65.) On the
other hand, she testified that "[t]he distribution side is
strictly the Aldila-branded product, the product that has Aldila,
our name, A-l-d-i-l-a, silk screened or applied to the shaft in
some way." (Id.) Such goods are marketed by petitioner's
distributors not only to the general public but also to the those
in the golf trade.
Petitioner advertises its golf shafts in magazines such
as Golf Week and Golf World, which are nationally distributed
publications directed to golfers as well as to original equipment
manufacturers and others in the golf trade. Its golf shafts are
also advertised, on a co-op basis, by several of its original
equipment manufacturer customers in Golf and Golf Digest
magazines, which are the two top nationally circulated consumer
magazines for golfers, according to Ms. Bahl, and which are also
read by persons in the golf industry. Petitioner additionally
promotes its golf shafts in trade journals, such as Professional
Clubmakers Society Journal, and occasionally has advertised its
products in general interest sports magazines, such as Sports
Illustrated.
Cancellation No. 25,703
9
Petitioner's net sales and its promotional expenditures
for the ten-year period ending in 1997, as well as estimates
thereof for 1998, were indicated to be as follows:
Year Net Sales Promotional Amounts
1998 $58,000,000 $1,200,000
1997 $55,636,000 $2,500,000
1996 $58,394,000 $2,500,000
1995 $56,545,000 $4,200,000
1994 $79,779,000 $6,120,000
1993 $62,646,000 $4,400,000
1992 $47,665,000 $3,200,000
1991 $41,177,000 $2,300,000
1990 $32,274,000 $2,600,000
1989 $47,834,000 $1,500,000
1988 $24,908,000 $1,000,000
The projected net sales for 1998 represent an estimated volume of
between five and a half to six million golf shafts sold, while
net sales for the years 1997, 1996 and 1995 (the only other years
for which unit sales were given) respectively represent at least
five million, four million and four million golf shafts sold.
According to Ms. Bahl, currently over 25 million people
in the United States play golf, with between five and six million
of those being "avid golfers who play over 25 times per year."
She also testified that at present there are more than 50 golf
club manufacturers in the United States. These statistics, she
notes, were obtained from petitioner's subscription to reports
from the National Golf Foundation and the Darnell Survey Company,
which are companies which among other things respectively track
the number of golfers and golf facilities in the United States
and the number of golf shafts and other items of golf equipment
sold in this country.
Cancellation No. 25,703
10
Ms. Bahl further testified that golf course golf or pro
shops, in addition to selling golf equipment, sell other products
such as clothing and gloves. Those shops which she characterized
as "a little trendier" also sell jewelry, belts, "logoed items,"
such as hats with a golf equipment manufacturer's mark and towels
with "the country club or the golf shop's logo on them," and
"[s]unscreens ... for golfers" because "[g]olfers use a lot of
sunscreen." (Id. at 57-58.) Off-course golf shops and sporting
goods stores, she observed, "carry basically the same things that
the on-course shops carry," including such "non-golf" items as
"the sunscreens," which she noted are "not exclusively for golf."
(Id. at 59-60.)
In her testimony, Ms. Bahl also referred to an exhibit,
consisting of two pages from the September/October 1998 issue of
Golf for Women magazine, which among such various new product
introductions as certain golf shoes, golf balls, belts and a
urethane material putter face, lists a review of "the Origins'
therapy bath soap." (Id. at 61.) Specifically, the product
called "ORIGINS SENSORY THERAPY" is referred to as "Origins'
Muscle Easing Bath Soak" and is stated to be available "at
Origins retail stores or call 800-ORIGINS." (Exhibit No. 15.)
Similarly, in reference to another exhibit, consisting of several
pages from the July/August 1998 issue of Golf for Women (which
according to Ms. Bahl is "a leading golf magazine for women"),6
she points to "a new product introduction of various products
6 While petitioner formerly advertised therein, it does not presently
do so.
Cancellation No. 25,703
11
from shoes to cases to games," including a sunscreen product by
Callaway, and also notes the presence of a separate advertisement
for the latter. (Bahl dep. at 64.) The advertisement, in
particular, is a full-page ad for "Callaway GOLF SUN BLOCK BY
NORDSTROM" which is indicated to be available "EXCLUSIVELY AT
NORDSTROM." (Exhibit No. 16.)
With respect to promoting its name and mark through
sponsoring events in the golf industry, Ms. Bahl stated that
petitioner "do[es] some tournament sponsorships with some of our
customers." (Bahl dep. at 65.) Besides noting that there are
many other companies which sponsor events in the golf industry,
she further testified, in particular, as follows:
Q Are you aware of any companies that
offer personal care products that sponsor
events in the golf industry?
A Yes.
Q Could you name those companies.
A The one I know for sure is
Callaway. I am not aware of any others at
this point.
Q Are you aware of any sunscreen
manufacturers that sponsor any events in the
golf industry?
A Yeah. It would be Callaway.
(Id. at 66.) Ms. Bahl added, on cross-examination, that while
she did not know exactly when Callaway began offering sunscreen,
she believes it was "recently, this year," i.e., in 1998, and
admitted that it "was only a couple months ago," when she was
Cancellation No. 25,703
12
presented with a sample of such product, that she first learned
of Callaway's entry into the sunscreen market. (Id. at 69-70.)
On cross-examination, Ms. Bahl additionally admitted
that she has neither seen any of respondent's products in a golf
or pro shop nor had anyone report to her of having seen such in
any store which carries golf products. She also conceded that
she has never seen any advertisements for respondent's products
in any golf publications. Ms. Bahl admitted, furthermore, that
petitioner has never received any correspondence addressed to
respondent nor had occasion to return any of respondent's
products.
Lastly, the record reveals three use-based third-party
registrations which list such items as skin lotion, skin cream,
hand lotion, bath lotion, bath gel, body oil, body lotion and/or
perfume, on the one hand, and such products as golf clubs, golf
club heads, golf irons, golf bags, golf balls and/or putters, on
the other. These registrations, however, also recite a panoply
of other equally unrelated goods in a multiplicity of classes,
including, for example, tableware, sunglasses, magnifying
glasses, tap water filtering units, watches, pens, jewelry,
staplers, letter openers, leather goods, towels, tablecloths,
apparel, playing cards, photograph albums, plaques, coasters,
olives, marmalade, nuts, candies, pretzels, wines, distilled
liquors, pipes, cigarette lighters and/or ash trays.
There is no information in the record concerning
respondent and her activities under her mark, other than the fact
that, prior to adopting the "ALDILA" and design mark, her counsel
Cancellation No. 25,703
13
performed a comprehensive trademark search. Such search
revealed, among other things, the existence of petitioner's
pleaded registration for its "ALDILA" mark.
Upon consideration of the pertinent factors set forth
in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1973), for determining whether a likelihood of
confusion exists,7 we find that, on this record, petitioner has
failed to satisfy its burden of demonstrating that confusion as
to source or sponsorship is likely to occur. In particular,
while we agree with petitioner that, in view of the shared
presence of the arbitrary term "ALDILA," respondent's "ALDILA"
and design mark is identical in sound and virtually the same in
appearance and overall commercial impression to petitioner's
"ALDILA" mark, there is simply nothing in the record which shows
that any of respondent's goods are so closely related to any of
petitioner's goods that the purchasing public would be likely to
attribute a common source thereto when marketed under the
respective marks. See, e.g., In re Mars, Inc., 741 F.2d 395, 222
USPQ 938, 938-39 (Fed. Cir. 1984). Here, the respective goods of
the parties are on their face distinctly different in nature,
function and use, and the mere fact that some of the trendier
7
As our principal reviewing court has cautioned in this regard:
"We are not concerned with mere theoretical possibilities of
confusion, deception, or mistake or with de minimis
situations but with the practicalities of the commercial
world, with which the trademark laws deal."
Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 954
F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992), quoting from Witco
Chemical Co. v. Whitfield Chemical Co., 418 F.2d 1403, 1405, 164 USPQ
43, 44-45 (CCPA 1969), aff'g, 153 USPQ 412 (TTAB 1967).
Cancellation No. 25,703
14
golf or pro shops have expanded their merchandise offerings to
include a host of non-golf items, such as sunscreen preparations,
jewelry and logo bearing apparel, in addition to carrying the
standard mix of golf clubs, shafts, heads, balls and bags, does
not suffice to prove that the goods would typically be expected
to originate from the same entity. Similarly, the mere fact that
a muscle relaxant bath soak has been advertised, along with items
of golf equipment, in a publication primarily of interest to
women golfers does not serve to demonstrate that the parties'
goods are closely related in a meaningful commercial sense.
Petitioner argues, however, that "[b]ecause golf is an
outdoor activity, it is common for sunscreen, hand creams and
other personal care items to be advertised in the same magazines
and sold in the same stores as golf equipment." Additionally,
petitioner contends that "skin care products and golf equipment
are complementary products because the former are often used as
protection while using the latter" and maintains that "[i]t is
for this reason that skin care product manufacturers sponsor golf
tours, and that skin care products are sold in on-course golf
shops, off-course golf shops and in sporting goods stores
together with Aldila's products."
The record in this case plainly does not support
petitioner's assertions. Specifically, the few examples of
advertisements introduced by petitioner are insufficient to
demonstrate that it is indeed common for personal care items to
be displayed together with golf equipment and that such a
Cancellation No. 25,703
15
practice fosters a likelihood of confusion. If anything, the
scant number of examples offered by petitioner prove just the
opposite--that it is relatively rare for personal care products
to be displayed, either in magazines or at the retail level,
along with golf equipment. On the entire record, there is only a
single instance in which a golf equipment manufacturer and golf
tour sponsor, namely, Callaway, also offered a sunscreen product.
The "CALLAWAY GOLF" sun block, however, appears to be available
only in a department store, namely, Nordstrom, rather than in
golf or pro shops or retail sporting goods stores, and at the
time of Ms. Bahl's testimony, it had been on the market for only
a few months at most. Such recent action, by a single golf
equipment manufacturer, shows that it is uncommon for those in
the golf industry to expand their product lineup into the field
of what petitioner refers to as personal care items.
Moreover, it is significant that, on their face, none
of registrant's various cosmetics and perfumes, as identified in
her registration, appear to encompass sunscreens. Furthermore,
even if respondent's hand and facial creams, lotions and gels
were to be read as including sunscreen or sun block products, the
mere fact that such items, like golf equipment, are for outdoor
use does not mean that the respective goods are "complementary
products" or otherwise closely related in any significant
commercial sense. It is settled, in this regard, that just
because a broad term may be found which encompasses the parties'
products does not mean that customers will view the goods as
meaningfully related in the sense that they will assume that they
Cancellation No. 25,703
16
emanate from or are sponsored by or associated with a common
source. See, e.g., General Electric Co. v. Graham Magnetics
Inc., 197 USPQ 690, 694 (TTAB 1977) and Harvey Hubbell Inc. v.
Tokyo Seimitsu Co., Ltd., 188 USPQ 517, 520 (TTAB 1975). Playing
golf while wearing sunscreen does not make such an item a
complementary product to, or otherwise enhance the use of, golf
equipment, anymore than does, for example, wearing insect
repellent.
Here, the goods at issue are so diverse in their
nature, purpose and use that they would not be regarded by
prospective purchasers as coming from or sponsored by the same
entity, even when sold under essentially the same mark and trade
name. The fact that petitioner has made of record three use-
based third-party registrations, which arguably are the only
third-party registrations with any probative value, fails to
persuade us to the contrary. This is because, aside from their
limited number, such registrations do not constitute evidence
that the marks which are the subjects thereof are in use, and
thus that the purchasing public has become conditioned to
encountering certain products under the same or substantially
identical marks.8 In addition, the particular registrations are
so wide ranging, in that the scope of the various goods set forth
therein cover a multiplicity of classes involving vastly
different products, that they fail to demonstrate that any of the
8 See, e.g., AMF Inc. v. American Leisure Products, Inc., 474 F.2d
1403, 177 USPQ 268, 269 (CCPA 1973) and In re Hub Distributing, Inc.,
218 USPQ 284, 285-86 (TTAB 1983).
Cancellation No. 25,703
17
goods, including those of the same kinds as those at issue in
this proceeding, would be considered closely related by the
purchasing public for cosmetics and perfumes, on the one hand,
and golf shafts and other golf equipment, on the other.
As a final consideration, there has not been a showing
by petitioner that its "ALDILA" mark and trade name are famous
and, therefore, would be entitled to a broad ambit of protection.
See, e.g., Kenner Parker Toys Inc. v. Rose Art Industries Inc.,
963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992), cert. denied, 506
U.S. 862, 113 S.Ct. 181 (1992). While plainly a strong mark and
name, inasmuch as the term "ALDILA" appears on this record to be
arbitrary and without meaning other than as a mark and trade
name, we nevertheless cannot conclude from petitioner's sales and
advertising figures that such term is in fact famous. There is
no breakdown, for instance, as to what percentage of each of
petitioner's annual net sales represent golf shafts which
continue to bear its "ALDILA" mark after their sale to original
equipment manufacturers for incorporation into golf clubs, nor do
petitioner's expenditures for promoting its mark and trade name
appear to be anything more than modest at best in light of its
level of net sales. Accordingly, in view of petitioner's failure
to meet its burden of proof, the petition to cancel must fail.
Decision: The petition to cancel is dismissed.