United States Golf Associationv.T-Golf LLC United States Golf Association v. Dee M. MacDonald and Christopher J. MacDonald

Trademark Trial and Appeal Board

Sep 30, 2009

No. 91181355 (T.T.A.B. Sep. 30, 2009)

Mailed: September 30, 2009
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

United States Golf Association
v.
T-Golf LLC

Opposition No. 91174712
_____

United States Golf Association
v.
Dee M. MacDonald and Christopher J. MacDonald

Opposition No. 91181355
_____

Philip R. Hoffman of Pryor Cashman LLP for United States
Golf Association.

Vincent M. Amberly of Amberly Law for T-Golf LLC and Dee M.
MacDonald and Christopher J. MacDonald.
______

Before Hairston, Walsh and Cataldo, Administrative Trademark
Judges.

Opinion by Hairston, Administrative Trademark Judge:

The above captioned opposition proceedings were
consolidated by order of the Board dated December 9, 2008.
United States Golf Association is the opposer in both cases,
and in this decision we shall refer to it as “opposer.”
T-Golf LLC is the applicant in Opposition No. 91174712, and
Dee M. MacDonald and Christopher J. MacDonald (the
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition Nos. 91174712 and 91181355
2
“MacDonalds”) are applicants in Opposition No. 91181355.
Because the record shows that T-Golf LLC is owned by the
MacDonald’s, in this decision we will refer to
T-Golf LLC and the MacDonald’s collectively as “applicant.”
Furthermore, because the two oppositions essentially involve
the same parties and common questions of law and fact, we
shall decide them both in this single opinion.
In application Serial No. 78791564 involved in
Opposition No. 91174712, applicant seeks to register on the
Principal Register the mark SUPER OPEN (in standard
characters; “OPEN” is disclaimed) for “men’s, women’s and
children’s clothing, namely, fleece tops and bottoms, caps,
headwear, T-shirts, sweatshirts, shorts, tank tops, jeans,
sweaters, pants, jackets, turtlenecks, jumpsuits, golf
shirts, woven shirts, knit shirts, jerseys, wristbands, warm
up suits, wind resistant jackets, raincoats, parkas,
ponchos, gloves, ties, suspenders, cloth bibs, sleepwear,
robes, night shirts and pajamas, mittens, knit hats and
caps, scarves, aprons, headbands, ear muffs, underwear,
sneakers and slippers” in International Class 25.1
In application Serial No. 78834430 involved in
Oppostion No. 91181355, applicant seeks to register on the
Principal Register the mark SUPER OPEN (in standard

1 Filed January 13, 2006, alleging a bona fide intention to use
the mark in commerce.
Opposition Nos. 91174712 and 91181355
3
characters; “OPEN” is disclaimed) for “entertainment in the
nature of golf tournaments; fitting of golf clubs to
individual users; golf caddie services; golf club services;
golf courses; golf instruction; providing a website through
which golfers locate information about golf courses and golf
tournaments; providing a website through which golfers
reserve tee times at golf courses; providing golf
facilities; providing refitting of golf grips to individual
users at the customer’s location; rental of golf equipment”
in International Class 41.2
Opposer asserts in both oppositions that applicant’s
mark, when used on the goods and services identified in its
applications, is likely to cause confusion and dilution in
view of opposer’s previously used and registered marks. In
both oppositions, opposer pleads ownership of the following
registrations, which are alleged to comprise a family of
“OPEN” marks:
1. Registration No. 1151942, issued April 21, 1981
(under the provisions of Section 2(f); renewed), for
the mark UNITED STATES OPEN CHAMPIONSHIP for
“educational and entertainment services, namely,
conducting a golf tournament;”

2. Registration No. 1151943, issued April 21, 1981
(under the provisions of Section 2(f); renewed), for
the mark U.S. OPEN for “educational and entertainment
services, namely, conducting a golf tournament;”

3. Registration No. 1151944, issued April 21, 1981
(under the provisions of Section 2(f); renewed), for

2 Filed March 10, 2006, alleging a bona fide intention to use the
mark in commerce.
Opposition Nos. 91174712 and 91181355
4
the mark U.S. OPEN CHAMPIONSHIP for “educational and
entertainment services, namely, conducting a golf
tournament;”

4. Registration No. 1151945, issued April 21, 1981
(under the provisions of Section 2(f); renewed), for
the mark U.S. WOMEN’S OPEN CHAMPIONSHIP for
“educational and entertainment services, namely,
conducting a golf tournament;”

5. Registration No. 1151946, issued April 21, 1981
(under the provisions of Section 2(f); renewed), for
the mark UNITED STATES OPEN for “educational and
entertainment services, namely, conducting a golf
tournament;”

6. Registration No. 1832941, issued April 26, 1994
(under the provisions of Section 2(f); renewed), for
the mark OPEN for “educational and entertainment
services, namely, conducting a golf tournament;”

7. Registration No. 1880927, issued February 28, 1995
(under the provisions of Section 2(f); SENIOR and
CHAMPIONSHIP disclaimed; renewed), for the mark UNITED
STATES SENIOR OPEN CHAMPIONSHIP for “educational and
entertainment services, namely, conducting a golf
tournament;”

8. Registration No. 1968466, issued April 16, 1995
(renewed), for the mark U.S. OPEN for, inter alia,
“men’s, women’s and children’s clothing, namely,
sweatshirts, shirts, caps, sweaters, vests, golf
shirts, mittens, boxer shorts, windshirts, jackets,
hats, baby rompers;”

9. Registration No. 2105083, issued October 14, 1997
(GOLF COLLECTION disclaimed; renewed), for the mark
U.S. OPEN GOLF COLLECTION for “clothing, namely,
shirts, t-shirts, sweater vests, cardigan sweater
vests, jackets, shorts, pants, caps and hats;”

10. Registration No. 2397344, issued May 8, 2001
(affidavits under Section 8 and 15 accepted or
acknowledged), for the mark NATIONAL OPEN for
“clothing, namely, shirts, windshirts, hats and
jackets;”

11. Registration No. 2448635, issued May 8, 2001
(under the provisions of Section 2(f); affidavits under
Section 8 and 15 accepted or acknowledged), for the
Opposition Nos. 91174712 and 91181355
5
mark U.S. WOMEN’S OPEN for “men’s, women’s and
children’s clothing, namely, sweatshirts, shirts, caps,
sweaters, vests, golf shirts, windshirts, jackets,
hats, visors” and “educational and entertainment
services, namely, the conducting of a golf tournament;”

12. Registration No. 2468933, issued July 17, 2001
(CHAMPIONSHIP disclaimed; affidavits under Section 8
and 15 accepted or acknowledged), for the mark NATIONAL
OPEN CHAMPIONSHIP for “entertainment services; namely,
the conducting of a golf tournament;” and

13. Registration No. 2590166, issued July 9, 2002
(under the provisions of Section 2(f) as to U.S. and
OPEN as to the services; SENIOR disclaimed; affidavits
under Section 8 and 15 accepted or acknowledged), for
the mark U.S. SENIOR OPEN for “men’s, women’s and
children’s clothing, namely, sweatshirts, shirts, caps,
sweaters, vests, golf shirts, windshirts, jackets,
hats, visors” and “educational and entertainment
services, namely, the conducting of a golf tournament.”

Opposer also asserts in both oppositions that its
family of “OPEN” marks is famous.
Applicant, in its answers to the notices of opposition,
admitted that opposer is the owner of the pleaded
registrations. Applicant denied the remaining salient
allegations of the notices of opposition, and asserted as an
affirmative defense that the word “OPEN” is merely
descriptive of opposer’s goods and services, and that
applicant has a “fair use right to use its descriptive
phrase OPEN.” (Answers, p. 3)
The Record
The record consists of the pleadings; the files of the
opposed applications; the testimony deposition (with
exhibits) of opposer’s Deputy Executive Director, Michael A.
Opposition Nos. 91174712 and 91181355
6
Butz; applicant’s notices of reliance on opposer’s responses
to applicant’s requests for admissions and third-party
registrations for marks that include the term “OPEN”; and
the testimony deposition (with exhibits) of one of the
owners of T-Golf LLC, Christopher J. MacDonald.
The Parties
Opposer is a non-profit organization which was formed
in 1894 to preserve and promote the game of golf in the
United States. It has 1.2 million members and is a
governing body of golf in the United States. Opposer
conducts thirteen golf championships in the United States,
including the U.S. OPEN, U.S. WOMEN’S OPEN, and U.S. SENIOR
OPEN. The U.S. OPEN is opposer’s flagship tournament and
has been conducted since 1895. The U.S. OPEN is one of the
four major tournaments in men’s golf. Opposer writes and
interprets the rules of the game of golf in the United
States, and has developed a handicapping system whereby
players of all levels can compete against each other.
Opposer also maintains a museum and library devoted to the
history of golf.
Dee M. MacDonald and Christoper J. MacDonald are the
owners of T-Golf LLC. T-Golf LLC was formed in 2001 or 2002
and offers golf equipment and instruction. The equipment
consists of a modified golf club and a series of tees to aid
Opposition Nos. 91174712 and 91181355
7
beginning players in developing golf swings. Applicant has
not begun use of the SUPER OPEN mark.
Standing and Priority
Opposer made copies of its pleaded registrations of
record and its witness, Mr. Butz, testified that the
registrations are subsisting and owned by opposer. In view
thereof, and because its likelihood of confusion claim is
not without merit, we find that opposer has established its
standing to oppose registration of applicant’s mark for the
identified goods and services. See Cunningham v. Laser Golf
Corp., 222 F.3d 942, 55 USPQ2 1842 (Fed. Cir. 2000); Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024,, 213
USPQ 185 (CCPA 1982). Further, because opposer’s pleaded
registrations are of record, priority is not an issue in
this case with respect to the marks and goods and services
identified in the registrations. King Candy Co. v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ (CCPA 1974).
Likelihood of Confusion

Our likelihood of confusion determination is based on
an analysis of all of the probative facts in evidence that
are relevant to the likelihood of confusion factors set
forth in In re E. I. du Pont de Nemours and Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also Palm Bay Imports.,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005).
Opposition Nos. 91174712 and 91181355
8
In considering the evidence of record on these factors,
we keep in mind that “[t]he fundamental inquiry mandated by
§2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods [or services] and
differences in the marks.” Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1975). We also must bear in mind that the fame of an
opposer’s mark, if it exists, plays a “dominant role in the
process of balancing the DuPont factors.” Recot Inc. v.
M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir.
2000).
Family of Marks
Opposer pleaded and argues that it owns a family of
“OPEN” marks for conducting golf championships and goods
related thereto. Applicant, however, argues that “OPEN” is
a descriptive term for golf tournaments, and thus, can not
serve as the basis for a family of marks.
Evidence that a plaintiff adopted, used, and registered
a group of marks sharing a particular feature is not, in and
of itself, sufficient to prove plaintiff’s ownership of a
family of marks. Rather, to prove ownership of a family of
marks, a plaintiff must show that (1) prior to the
defendant’s first use of its mark, the various marks said to
constitute the family, or at least a good number of them,
were used and promoted in such a manner and to such an
Opposition Nos. 91174712 and 91181355
9
extent as to create, among the members of the purchasing
public, a recognition that the shared feature is indicative
of common origin, and (2) that the shared feature is
distinctive. See J & J Snack Foods Corp. v. McDonald’s
Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991);
Marion Laboratories Inc. v. Biochemical Diagnostics Inc., 6
USPQ2d 1215 (TTAB 1988); American Standard Inc. v. Scott &
Fetzer Co., 200 USPQ 457 (TTAB 1978).
Even assuming that the term “OPEN” may serve as the
basis for a family of marks, we find that the evidence
offered by opposer is not sufficient to establish that it
owns a family of marks characterized by the term “OPEN.”
Aside from its thirteen registrations, opposer’s evidence of
a family of “OPEN” marks consists of the following testimony
of its witness Mr. Butz:
Again, especially with the United States Open
championship, we have been running that
championship for over 100 years and between that
and the Women’s Open and Senior Open they are run
as national championships as or at the highest
level of competition in the United States and so
when people hear U.S. Open championship or Senior
Open or Women’s Open or National Open they connect
that with conducted by the United States Golf
Association. We continue to promote it that way
so people have made the connection over the years.

(Butz dep., p. 32)

In addition, among opposer’s exhibits, we have
identified a few examples of instances where the U.S. OPEN,
U.S. WOMEN’S OPEN and U.S. SENIOR OPEN marks appear
Opposition Nos. 91174712 and 91181355
10
together. For example, Butz Test. Exhibit 9E, the 2003 U.S.
SENIOR OPEN program states on page 128 that: “The USGA
conducts golf’s national championships. These include the
U.S. Open, the U.S. Women’s Open, the U.S. Senior Open, the
10 national amateur championships and the State Team
Championships”; and Butz Test. Exhibit 14B, an apparel and
gift catalog featuring men’s clothing bearing the U.S. OPEN
mark and women’s clothing bearing the U.S. WOMEN’S OPEN mark
on page 9. However, we have not found sufficient evidence
to establish that opposer has advertised and promoted its
“OPEN” marks together and in association with each other in
such a manner that the public would recognize common
ownership thereof in opposer based on the common feature.
Although opposer submitted a large number of exhibits, there
is no evidence of a significant number of the thirteen
“OPEN” marks herein used together; rather there is evidence
of, at most, use of three “OPEN” marks in the same programs
and catalogs by opposer. Generally, opposer’s evidence
shows use of the U.S. OPEN, U.S. WOMEN’S OPEN and U.S.
SENIOR OPEN marks individually and independent of each other
in opposer’s official programs, annuals and catalogs. Even
those uses where there are three “OPEN” marks (i.e., U.S.
OPEN, U.S. WOMEN’S OPEN and U.S. SENIOR OPEN), the uses are
inside the programs and catalogs and are not especially
prominent. See e. g., Butz Test. Exhibit No. 9B, the 2006
Opposition Nos. 91174712 and 91181355
11
U.S. OPEN program features a preview of all of opposer’s
championship tournaments, including the U.S. WOMEN’S OPEN on
page 100 and the U.S. SENIOR OPEN on page 103. All of these
factors do not leave an impression of a family of marks.
Viewing the totality of opposer’s evidence regarding its
asserted family of “OPEN” marks, the record before the Board
is not sufficient to prove that opposer has used and
promoted its “OPEN” marks in a manner resulting in public
recognition of “OPEN” as a family feature such that
opposer’s various “OPEN” marks would be assumed to have a
common origin.3
Because opposer’s evidence is insufficient to prove a
family of “OPEN” marks, the issue of likelihood of confusion
must be determined by comparing applicant’s mark with each
of opposer’s registered marks considered individually.
The most pertinent of opposer’s marks is the mark U.S.
OPEN, the strongest of opposer’s marks by reason of
opposer’s extensive use and promotion thereof, and the mark
to which most of opposer’s evidentiary record is devoted.

3 There are also a few instances where opposer uses the U.S.
OPEN, U.S. WOMEN’S OPEN and U.S. SENIOR OPEN marks together in
media guides, press kits and annual reports. However, inasmuch
as these materials are generally not distributed to the public,
they are not probative of whether the public regards opposer’s
various “OPEN” marks as being part of an “OPEN” family of golf
tournaments.
Opposition Nos. 91174712 and 91181355
12
Fame
In turning to consider the marks, we first take up the
factor of fame, because fame of the prior mark plays a
dominant role in likelihood of confusion cases featuring a
famous mark. Bose Corp. v. QSC Audio Products Inc., 293
F.3d 1367, 63 USPQ2d 1303 (Fed. Cir. 2002); Recot Inc. v.
M.C. Becton, supra and Kenner Parker Toys, Inc. v. Rose
Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir.
1992). Fame for likelihood of confusion purposes arises “as
long as a significant portion of the relevant consuming
public … recognizes the mark as a source indicator.” Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 73 USPQ2d at 1694. That is, we look to the class
of customers and potential customers of a product or
service, and not the general public. Here, the relevant
consuming public comprises amateur and professional golfers,
recreational golfers, and attendees and viewers of golf
tournaments.
As previously indicated, the U.S. OPEN has been
conducted since 1895 and it is one of the four major
tournaments in men’s golf. Opposer’s evidence on fame
includes annual reports for the years 1997 and 2002-2007.
Opposer’s total revenue from its golf championships and
related goods and services totaled $72,998,000 in 1997;
$115,990,000 in 2003; $122,239,000 in 2004; $99,561,000 in
Opposition Nos. 91174712 and 91181355
13
2005; $126,672,000 in 2006; and $137,772,000 in 2007.4
Although the figures are not broken down to reflect the
revenue of opposer solely under the U.S. OPEN mark, we
believe it is reasonable to infer that the overwhelming
majority of revenue earned is under such mark. In this
regard, opposer’s witness, Mr. Butz, testified that the U.S.
OPEN is “the most important thing that we do. It’s our
showcase flagship event.” (Butz dep., p. 23)
The U.S. OPEN is televised, with weekend play broadcast
on the NBC network and weekday rounds broadcast on ESPN, NBC
and/or The Golf Channel throughout the day, in addition to
highlight shows. Opposer generates publicity for the U.S.
OPEN beginning with a press release at the time of site
selection. This is followed by additional press releases
which promote the fact that the U.S. OPEN is coming to that
particular site. These press releases are distributed to
all media outlets by way of wire service, e-mail “blasts”
and at opposer’s website. Immediately prior to and at the
U.S. OPEN itself, opposer creates and distributes to the
media press kits and handouts with facts and figures related
to the championship. Opposer also sells and distributes to
spectators and its members official programs for the U.S.

4 Opposer’s witness, Mr. Butz, attested to the accuracy of the
figures in the annual reports.
Opposition Nos. 91174712 and 91181355
14
OPEN championship. Articles concerning the U.S. OPEN have
appeared in the sections of numerous newspapers, including
The New York Times, Boston Globe, and The Washington Post.
Opposer engages in a substantial amount of licensing in
connection with the U.S. OPEN mark, with 656 manufacturers
who are licensed to produce apparel and gift items bearing
the mark.
Finally, opposer vigilantly polices its U.S. OPEN mark,
ranging from cease and desist letters to filing legal
proceedings against “OPEN” marks to which it objects.
Opposer uses a watch service to look for persons using
and/or attempting to register “OPEN” marks. Opposer’s
witness, Mr. Butz, identified over twenty–five examples of
cease and desist letters sent and legal proceedings filed
against alleged infringers.
Based on the foregoing evidence, we find that opposer’s
U.S. OPEN mark is famous among the relevant purchasers in
this case. We note that applicant’s witness, Mr. MacDonald,
answered “Yes” to the question “Would you say that the U.S.
Open is a famous golf tournament?” (MacDonald dep., p. 156)
The du Pont factor of fame weighs heavily in opposer’s
favor in our likelihood of confusion analysis.
Third-party use
Applicant argues that opposer’s U.S. OPEN mark is weak
because other similar trademarks have been used and
Opposition Nos. 91174712 and 91181355
15
registered, and that no one should be accorded exclusive
rights to the term “OPEN.” Applicant has made of record by
notice of reliance third-party registrations for marks that
include the word “OPEN” for golf tournaments and other
sports competitions (e.g., Registration No. 939209 for
GREATER GREENSBORO OPEN for promoting and managing golf
tournaments, Registration No. 2277430 for TEXAS OPEN for
conducting golf tournaments, Registration No. 2655626 for
MASSACHUSETTS OPEN CHAMPIONSHIPS for promoting an annual
golf tournament for others, Registration No. 2832021 for
U.S. OPEN OF SURFING for arranging and conducting surfing
competitions, Registration No. 2975892 for COLORADO OPEN for
entertainment in the nature of golf, and Registration No.
2857099 for EAST COAST FREESKIING OPEN for arranging and
conducting skiing competitions and exhibitions); and
opposer’s responses to applicant’s requests for admissions
wherein opposer admits that a number of golf tournaments
have been held in the United States under names which
include the word “OPEN.” In addition, applicant introduced
during the testimony deposition of its witness, Mr.
MacDonald, listings of golf tournaments under names which
include the word “OPEN” (e.g. Shell Houston Open, Sony Open
Opposition Nos. 91174712 and 91181355
16
in Hawaii, Legends Reno-Tahoe Open, Valero Texas Open, and
Dick’s Sporting Goods Open).5
We judicially notice the following relevant definition
of the word “open” in The Random House Dictionary (2009)
from www.dictionary.com: “noun” – “a contest or tournament
in which both amateurs and professionals may compete, esp.
in golf and tennis.”6
Opposer does not seriously dispute that the word “Open”
is merely descriptive of golf tournaments. Indeed, most of
opposer’s pleaded registrations which consist of or include
the word “OPEN” for conducting a golf tournament issued
under the provisions of Section 2(f). Furthermore, although
the third-party registrations and listings from the Internet
are not evidence of use of the marks shown therein, or that
consumers have been exposed to them, they nonetheless are
probative evidence that marks using the descriptive term
“Open” are attractive to many organizers of sports
tournaments and competitions, are adopted to convey that the
tournament or competition is “open” to professionals and
amateurs, and that such marks often coexist and are

5 Mr. MacDonald testified that he compiled this information from
Internet websites.
6 The Board may take judicial notice of online reference works
which exist in printed format or have regular fixed editions.
See Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581,
1590 n. 8 (TTAB 2008).
Opposition Nos. 91174712 and 91181355
17
distinguished because of the other indicia used in
connection with “Open.”
A review of the third-party registrations and listings
reveals that virtually every one of the marks shown therein
includes a geographic term and/or sponsor name in
conjunction with the word “Open.” Thus, these third-party
marks are different from applicant’s SUPER OPEN mark which
does not include any such indicia. Furthermore, the third-
party registrations and listings are consistent with
opposer’s position that it will not object to an entity’s
use of the word “Open” so long as the word is qualified by a
geographic term or sponsor name. (Butz dep., pp. 78-79)
Under the circumstances, we find that applicant’s
evidence fails to show that opposer’s U.S. OPEN mark is a
weak mark. Moreover, any asserted weakness in opposer’s
mark is overcome because opposer’s U.S. OPEN mark is famous.
This du Pont factor is neutral.
Goods and Services
Applicant’s recitation of services in application
Serial No. 78834430 includes “entertainment in the nature of
golf tournaments.” These services are essentially identical
to “educational and entertainment services, namely,
conducting a golf tournament” in opposer’s Registration No.
1151943 for the mark U.S. OPEN. Furthermore, many of the
clothing items in application Serial No. 78791562 are
Opposition Nos. 91174712 and 91181355
18
identical/closely related to the clothing items in opposer’s
Registration No. 1968466 for the mark U.S. OPEN. For
example, applicant’s application includes sweatshirts,
sweaters, golf shirts, woven shirts, knit shirts, wind
resistant jackets, and knit hats; and opposer’s registration
includes sweatshirts, shirts, caps, sweaters, golf shirts,
mittens, jackets, and hats.
In view of the identical/closely related nature of
opposer’s and applicant’s goods and services, the du Pont
factor of the similarlity of the goods and services favors a
finding of likelihood of confusion.
Channels of Trade and Classes of Purchasers
As noted above, the parties’ golf tournament services
are essentially identical and their clothing items are
identical/closely related. Furthermore, there are no
restrictions as their channels of trade or classes of
purchasers. When identical/closely related goods and
services are recited in an application and registration with
no limitations as to their channels of trade or classes of
purchasers, such channels of trade and classes of purchasers
must be considered to be legally identical. See Genesco
Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) [“Given the
in-part identical and in-part related nature of the parties’
goods and the lack of any restrictions in the
identifications thereof as to trade channels and purchasers,
Opposition Nos. 91174712 and 91181355
19
these clothing items could be offered and sold to the same
classes of purchasers through the same channels of trade.”];
and In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB
1994) [“Because the goods are legally identical, they must
be presumed to travel in the same channels of trade, and be
sold to the same class of purchasers.”]
The du Pont factors of channels of trade and classes of
purchasers favor a finding of likelihood of confusion.
Conditions of Sale
With respect to the conditions of sale, we recognize
that amateur and professional golfers are likely to be at
least somewhat knowledgeable as to the source of golf
tournaments in which they play. However, the applicable
standard of care is that of the least sophisticated
consumer. There is no evidence that recreational golfers or
other persons who attend or view golf tournaments exercise
more than ordinary care in selecting a tournament to attend
or view. Furthermore, the parties’ clothing items are
ordinary consumer items which generally are purchased with
nothing more than ordinary care.
In view of the fact that the relevant consuming public
in this case includes persons who would use nothing more
than ordinary care in purchasing clothing and deciding upon
a golf tournament to attend or view, this du Pont factor is
neutral.
Opposition Nos. 91174712 and 91181355
20
The Similarity or Dissimilarity of the Marks
We next consider the similarity or dissimilarity of the
marks in their entireties as to appearance, sound,
connotation and commercial impression. In comparing the
marks, we are mindful that the test is not whether the marks
can be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in terms of their overall commercial impression so
that confusion as to the source of the goods and services
offered under the respective marks is likely to result. The
proper focus is on the recollection of the average purchaser
who normally retains a general, rather than specific
impression of trademarks. Sealed Air Corp. v. Scott Paper
Co., 190 USPQ 106 (TTAB 1975). Furthermore, in making this
determination, we must keep in mind that “[w]hen marks would
appear on virtually identical goods or services, the degree
of similarity necessary to support a conclusion of likely
confusion declines.” Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701
(Fed. Cir. 1992).
Finally, we must keep in mind that where, as here,
opposer’s U.S. OPEN mark is famous for a golf tournament, it
is entitled to a broad scope of protection.
When an opposer’s trademark is a strong famous
mark, it can never be “of little consequence.”
The fame of a trademark may affect the likelihood
purchasers will be confused inasmuch as less care
Opposition Nos. 91174712 and 91181355
21
may be taken in purchasing a product under a
famous mark.

Specialty Brands, Inc. v. Coffee Bean Distributors, Inc.,
748 F.2d 669, 223 USPQ 1281, 1284 (Fed. Cir. 1984).
In terms of sound and appearance, the respective marks
are obviously similar to the extent that they share the word
“OPEN.” They also share a similar structure in that “OPEN”
is modified by a single term, “U.S.” in opposer’s mark, and
“SUPER” in applicant’s mark.
In terms of connotation and commercial impression, the
respective marks are somewhat different due to the term U.S.
in opposer’s mark and SUPER in applicant’s mark. This fact,
however, is insufficient to distinguish the marks. Rather,
the terms U.S. and SUPER are likely to be perceived by the
relevant consumers as indicating golf tournaments from the
same source, with applicant’s SUPER OPEN mark indicating a
golf tournament featuring champions from other tournaments.
In this regard, we note the following testimony of
applicant’s witness, Mr. McDonald:
Q. So what makes your Super Open an open, as you
define the term?
A. It’s open to that year’s champion golfers.
(MacDonald dep., p. 102)
Q. How would your propose[d] tournament differ
from the PGA Grand Slam of Golf?
Opposition Nos. 91174712 and 91181355
22
A. This is four guys. There’s roughly 40
domestic champions in the PGA tour.
Q. Many of who[m] could be the same.
A. Yeah, could be the same. Then the women’s
tour. Then the senior tour. Then the
international. So this is four champions versus
roughly a field of 70 to 100.
(MacDonald dep., p. 106)

Finally, we note Mr. MacDonald’s testimony that
applicant’s SUPER OPEN golf tournament will be “like the
Super Bowl … a season ending big event” that “assemble[s]
the year’s champions in one final collision.” (MacDonald
dep., pp. 207-208).
In view of the fact that opposer conducts not only the
U.S. OPEN, but the U.S. WOMEN’S OPEN and U.S. SENIOR OPEN
golf championships, we find it likely that persons who
encounter applicant’s SUPER OPEN golf tournament would view
it as a championship for the winners of these and other golf
tournaments, and that opposer’s and applicant’s respective
golf tournaments emanate from, or are sponsored by or
affiliated with, the same source.
For similar reasons, we find that purchasers and
prospective purchasers familiar with opposer’s U.S. OPEN
clothing items, could reasonably assume, upon encountering
applicant’s SUPER OPEN clothing items, that such
Opposition Nos. 91174712 and 91181355
23
identical/closely related clothing items are sponsored by or
affiliated with, the same source.
The du Pont factor of the similarity of the marks
favors a finding of likelihood of confusion.
Conclusion
We have considered all evidence of record bearing on
the likelihood of confusion factors and conclude that there
is a likelihood of confusion between opposer’s U.S. OPEN
mark for conducting golf tournaments and clothing and
applicant’s SUPER OPEN mark, also for conducting golf
tournaments and clothing. We conclude so principally based
on the fame of opposer’s U.S. OPEN mark, the
identical/closely related nature of the goods and services,
and the similarity of the marks.
Dilution
Opposer also asserted dilution as a ground for
opposition. In view of our decision to sustain the
oppositions on the ground of likelihood of confusion, it is
not necessary for us to consider opposer’s dilution claim.
Decision: The oppositions are sustained on the ground
of priority and likelihood of confusion and registration is
refused in each of the applications in these proceedings.