PGA Tour, Inc.v.Timothy J. Constantine

Trademark Trial and Appeal Board

May 29, 2008

No. 91169260 (T.T.A.B. May. 29, 2008)

Mailed:
May 29, 2008
UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

PGA Tour, Inc.

v.

Timothy J. Constantine
_____

Opposition No. 91169260 to application Serial No. 78459125
filed on July 29, 2004
_____

Auma N. Reggy of Troutman Sanders LLP for PGA Tour, Inc.

Timothy J. Constantine (pro se).
______

Before Hohein, Holtzman and Zervas, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:

Applicant, Timothy J. Constantine, has filed an
application (Serial No. 78459125) for registration on the
Principal Register of the mark

THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Opposition No. 91169260
2
for the following goods, as amended: “clothing, namely
caps, gloves, hats, jackets, pants, rainwear, shirts,
shorts, socks, sweaters, sweatshirts, t-shirts, vests,
visors” in International Class 25. Applicant claims first
use anywhere on January 1, 2003 and first use in commerce on
January 29, 2003, and has entered a disclaimer of GOLF
COLLECTION.
Opposer, PGA Tour, Inc., has filed an opposition to the
registration of applicant's mark. In its notice of
opposition, opposer has pleaded prior common law rights to,
and its registrations for, marks incorporating the words
WORLD GOLF, including WORLD GOLF CHAMPIONSHIPS, WORLD GOLF
VILLAGE, WORLD GOLF FOUNDATION and WORLD GOLF HALL OF FAME,
for various goods including clothing and various services;
and a likelihood of confusion under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d).
Applicant has filed an answer in which he has denied
the salient allegations of the notice of opposition.
The record consists of the pleadings; the file of the
involved application; and opposer's single notice of
reliance which submits one item, namely, opposer's first
requests for admissions. In its notice of reliance, opposer
states that applicant failed to respond to the requests for
admissions. See Trademark Rule 2.120(j)(3)(i); TBMP
§ 704.10 (2d ed. rev. 2004).
Opposition No. 91169260
3
Applicant argues in his brief that he never received
the second copy of opposer's requests for admissions after
opposer's first copy thereof was returned to opposer as
undeliverable; that he learned of opposer's requests for
admissions only through checking the electronic database for
this proceeding; and that because the requests were not
properly served on him, the “‘automatic admission’ of 37
C.F.R. … 2.120(j) [is] moot.” Brief at p. 3.
Even if we consider the facts which opposer contends
applicant has admitted in connection with his requests for
admissions, and the admissions by applicant in his answer,
opposer has not established key elements of its claim – the
status of its registrations or common law priority. At
best, we may consider applicant to have admitted only that
opposer is the owner of one or more registrations for
particular goods and services. See, e.g., request for
admissions no. 9 (“Opposer is the owner of U.S. Trademark
Registration Number 3,010,914, registered with the United
States Patent and Trademark Office on November 1, 2005 for
the mark WORLD GOLF HALL OF FAME & Design, in connection
with ‘clothing namely men’s and women’s shirts, sweaters,
jackets, pants, socks, scarves and headwear’ in
International Class 25”); and ¶ 5 of applicant's answer
(“Applicant acknowledges that opposer PGA Tour, Inc. and
World Golf Foundation own trademarks in International Class
Opposition No. 91169260
4
025 incorporating the words ‘World Golf’ paired with other
words such as Championships, Village, Foundation and Hall of
Fame.”) However, even by this evidence, opposer has not
established the status of its registrations. None of
opposer's requests seek an admission directed to the status
of the registrations, applicant has not made any admissions
regarding the status of opposer's registrations in its
answer, and opposer has not submitted status and title
copies of the asserted registrations. In order for priority
not to be in issue with respect to opposer's claim of
priority of use and likelihood of confusion based on its
registrations, it was incumbent upon opposer to prove that
the current status of its pleaded registrations is that such
registrations are subsisting and not merely, as applicant
has admitted at least through his answer, that such
registrations are currently owned by opposer. See King
Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108 (CCPA 1974). Further, regarding opposer's asserted
common law rights, even if we consider applicant to have
admitted Request No. 18, that is, that “Opposer offers or
sells clothing under” the asserted marks, applicant has made
no admission regarding priority of use by opposer, either in
connection with the requests for admissions or his answer.
Accordingly, irrespective of whether confusion is
likely from contemporaneous use of the marks at issue in
Opposition No. 91169260
5
connection with the respective goods and/or services of the
parties, because opposer, as the party bearing the burden of
proof in this proceeding,1 has not presented testimony or
introduced any other evidence during its initial testimony
period as proof establishing the status of its registrations
or its priority of use, it is adjudged that opposer cannot
prevail on its claim of priority of use and likelihood of
confusion and that the opposition must fail.
Finally, we point out that we have not considered
applicant's admission that there is a likelihood of
confusion in this case. Requests for admissions are a
discovery device and cannot be used to elicit admissions as
to the questions of law in the case. Harco Laboratories,

1 It is settled that opposer, as the plaintiff in this
proceeding, bears the burden of proof with respect to its claim
of priority of use and likelihood of confusion. See, e.g., Bose
Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303,
1305 (Fed. Cir. 2002) [“[t]he burden of proof rests with the
opposer … to produce sufficient evidence to support the ultimate
conclusion of [priority of use] and likelihood of confusion”];
Hoover Co. v. Royal Appliance Mfg. Co., 238 F.3d 1357, 57 USPQ2d
1720, 1722 (Fed. Cir. 2001) [“[i]n opposition proceedings, the
opposer bears the burden of establishing that the applicant does
not have the right to register its mark”]; Champagne Louis
Roederer S.A. v. Delicato Vineyards, 143 F.3d 1373, 47 USPQ2d
1459, 1464 (Fed. Cir. 1998) (Michel, J. concurring); Sanyo Watch
Co., Inc. v. Sanyo Elec. Co., Ltd., 691 F.2d 1019, 215 USPQ 833,
834 (Fed. Cir. 1982) [“[a]s the opposer in this proceeding,
appellant bears the burden of proof which encompasses not only
the ultimate burden of persuasion, but also the obligation of
going forward with sufficient proof of the material allegations
of the Notice of Opposition, which, if not countered, negates
appellee's right to a registration”]; Clinton Detergent Co. v.
Proctor & Gamble Co., 302 F.2d 745, 133 USPQ 520, 522 (CCPA 1962)
[“[o]pposer … has the burden of proof to establish that applicant
does not have the right to register its mark.”]. It remains
opposer's obligation to satisfy its burden of proof, regardless
of whether applicant offers any evidence.
Opposition No. 91169260
6
Inc. v. The Decca Navigator Co. Ltd., 150 USPQ 813 (TTAB
1966).
Decision: The opposition is dismissed.