Disney Enterprises, Inc.v.The Short Sport(s) Co.

Trademark Trial and Appeal Board

Jul 13, 1999

No. 91103575 (T.T.A.B. Jul. 13, 1999)

Paper No. 33
ejs
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JULY 13, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Disney Enterprises, Inc.1
v.
The Short Sport(s) Co.
_____
Opposition No. 103,575
to application Serial No. 74/733,405
filed on September 25, 1995
_____
Julia Anne Matheson of Finnegan, Henderson, Farabow, Garrett
& Dunner, L.L.P. for Disney Enterprises, Inc.
The Short Sport(s) Co., pro se.
______
Before Seeherman, Hairston and Chapman, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:

1 The opposition was filed in the name of The Walt Disney
Company. During the course of the opposition Disney Enterprises,
Inc. filed a notice of reliance stating that it was formerly
known as The Walt Disney Company, and Patent and Trademark Office
records reflect that The Walt Disney Company filed a certificate
of merger, changing its name to Disney Enterprises, Inc., on
February 9, 1996 with the Office of the Secretary of State of
Delaware. Accordingly, Disney Enterprises, Inc. has been
substituted as the name of the opposer in this proceeding.
Opposition No. 103,575
2
Disney Enterprises, Inc., by change of name from The
Walt Disney Company, has opposed the application of The
Short Sport(s) Co. to register THE MAGIC SWINGDOM as a
trademark for "prerecorded video cassettes, namely sports
training videos featuring animated and live characters for
instructional purposes."2 As grounds for opposition,
opposer has alleged that it produces live-action and
animated feature films and television programs, many of
which feature its animated characters; that it produces
interactive computer products geared at education and
entertainment for children, adults and families, and offers
online computer services; that it operates theme parks
worldwide and directs substantial merchandising and
licensing operations for its characters and various product
lines; that its DISNEYLAND theme park in Anaheim, California
has been identified by its nickname DISNEY’S MAGIC KINGDOM
since the park’s inception in 1955; that it also operates
the MAGIC KINGDOM park at Walt Disney World in Florida; that
it has used the mark MAGIC KINGDOM for a variety of goods
and services associated with its theme parks since at least
as early as December 31, 1955, and the mark has become
famous and synonymous with opposer and its goods and
services; that it is the owner of registrations for MAGIC
KINGDOM for educational and entertainment services rendered

2 Application Serial No. 74/733,905, filed September 25, 1995,
Opposition No. 103,575
3
in a theme park and for MAGIC KINGDOM CLUB for membership in
a club operated by opposer; and that applicant’s applied-for
mark so resembles opposer’s mark MAGIC KINGDOM as to be
likely, when applied to applicant’s identified goods, to
cause confusion or mistake or to deceive; and that because
of the fame of opposer’s MAGIC KINGDOM mark and its
reputation for animation and entertainment, persons familiar
with opposer and the MAGIC KINGDOM will be misled into
believing that applicant’s goods are sponsored by or
otherwise associated with opposer.
In its answer applicant denied the salient allegations
of the notice of opposition, and has asserted, as
affirmative defenses, acquiescence and weakness of opposer’s
mark. Applicant also asserted as a counterclaim that
opposer’s pleaded registrations should be canceled; however,
applicant did not submit the required cancellation fee and
the counterclaim was never instituted.
The record includes the pleadings; the file of the
opposed application; the testimonial declarations, with
exhibits, of opposer’s witnesses Robert E. Chmiel, Robert S.
Tieman, Kevin R. Weickel and Teresa H. Miguel, and of
applicant’s witness, Anthony L. Gordon.3 Opposer also

and asserting a bona fide intention to use the mark in commerce.
3 Although no written stipulation that the parties could testify
by way of testimonial declarations was submitted, it is clear
that the parties have so stipulated. Accordingly, the
testimonial declarations form part of the record. The parties
Opposition No. 103,575
4
submitted, under notice of reliance, status and title copies
of its pleaded registrations4; articles taken from various
printed publications referring to the golf facilities at
Walt Disney World; and applicant’s answers to certain of
opposer’s interrogatories.
Only opposer filed a brief.5 However, the testimonial
declaration of Anthony L. Gordon, applicant’s president, is,
to a large extent, argument. Because applicant is appearing
pro se, we have treated the declaration to be in the nature
of a brief. Opposer, of course, is not prejudiced by this,
since it prepared and filed its brief well after the
submission of Mr. Gordon’s declaration. An oral hearing was
not requested.
Before we discuss the evidence in support of opposer’s
case, we note that there has been some confusion with
respect to the company name of opposer. This is due in

should note, for future reference, that with the recent
amendments to the Trademark Rules of Practice, effective
October 9, 1998, Trademark Rule 2.123(b) now provides that if
parties wish to stipulate that the testimony of a witness may be
submitted in the form of an affidavit, it must be done by written
agreement.
4 Registration No. 938,314, issued July 18, 1972, for MAGIC
KINGDOM CLUB for "indicating membership in applicant", Section 8
affidavit accepted, Section 15 affidavit received, renewed;
Registration No. 1,072,396, issued August 30, 1977, for MAGIC
KINGDOM for "educational and entertainment services rendered in a
theme park," Section 8 affidavit accepted, Section 15 affidavit
received, renewed.
5 Opposer’s uncontested motion to extend briefing dates, filed
July 15, 1998, is granted.
Opposition No. 103,575
5
large part to opposer’s merely inserting the name Disney
Enterprises, Inc. in its motion to extend filed July 18,
1997, without any explanation as to why this name was used.
Opposer is advised that it would have been far better if it
had filed a motion to substitute, and provided information
about the filing of the merger and change of name
certificate. However, as we stated in footnote 1, supra,
PTO records show that a certification from the Delaware
Secretary of State was recorded with this agency, showing
that The Walt Disney Company filed a certificate of merger
changing its name to Disney Enterprises, Inc. on February 9,
1996.
We also note that opposer’s witnesses are not
identified as employees of Disney Enterprises, Inc. Rather,
Mr. Chmiel states that he is employed by Disney Online, Mr.
Tieman is an employee of The Walt Disney Company,6 Ms.
Miguel is an employee of Walt Disney Attractions, Inc., and

6 Although The Walt Disney Company was the name of the opposer
at the time of the filing of the opposition, that company name
change was effective February 9, 1996. Mr. Tieman did not sign
his declaration until February 3, 1998; therefore, it is unclear
whether he is an employee of opposer and is referring to his
former company name, or he is an employee of another company
which subsequently formed under the name The Walt Disney Company.
In this connection, we note that applicant’s witness, Mr. Gordon,
has submitted as an exhibit what he asserts to be a copy of a Dun
& Bradstreet listing of "companies related to opposer,"
declaration, p.4, which show Disney Enterprises Inc. to be a
subsidiary of "Walt Disney Co (Inc)." The Dun & Bradstreet
document, however, is undated, and may simply reflect the
situation prior to the merger and change of name reflected in the
Delaware Secretary of State certificate.
Opposition No. 103,575
6
Mr. Weickel is employed by Walt Disney World Co. It would
have been far better if opposer had elicited testimony from
these witnesses reflecting how their employers are
affiliated with opposer; however, it is clear from their
declarations that the activities relating to the MAGIC
KINGDOM mark refer to opposer’s mark MAGIC KINGDOM. See
Somerset Distilling Inc. v. Speymalt Whiskey Distributors
Ltd., 14 USPQ2d 1539 (TTAB 1989). The relationship between
the companies is further confirmed by the Dun & Bradstreet
report submitted with the testimony of applicant’s witness.
Thus, we view the evidence submitted by opposer with respect
to the activities of the various Disney companies as
reflecting a general use of the mark MAGIC KINGDOM. See
also, West Florida Seafood Inc. v. Jet Restaurants Inc., 31
F.3d 1122, 31 USPQ2d 1660 (Fed Cir. 1994); In re Wella A.G.,
787 F.2d 1549, 229 USPQ 274 (Fed. Cir. 1986); Transamerica
Financial Corporation v. Trans-America Collections, Inc.,
197 USPQ 43 (TTAB 1977).
Opposer’s evidence shows that since 1955, when
opposer’s DISNEYLAND theme park opened in Anaheim,
California, the park has been identified by the nickname
DISNEY’S MAGIC KINGDOM, and by 1957 the term MAGIC KINGDOM
was being used in travel brochures. In 1957 opposer formed
THE MAGIC KINGDOM CLUB, membership in which was made
available to employees in participating organizations in
Opposition No. 103,575
7
business, industry and the military, and which afforded
member employees certain discounts and other benefits not
available to the general public. By 1980, the MAGIC KINGDOM
CLUB reached as many as 34 million member employees
nationwide.
In 1971 opposer opened a second MAGIC KINDGOM theme
park at its Walt Disney World resort in Florida. Opposer
has submitted the first ticket book from Walt Disney World,
which features the name THE MAGIC KINGDOM.
Each year each of the MAGIC KINGDOM parks attracts
millions of visitors of every age, and from every region of
the country. Since the parks have opened, they have each
attracted over a hundred million visitors. Opposer has also
expended "hundreds of millions of dollars" to advertise and
promote its MAGIC KINGDOM destinations. Tieman declaration,
p. 4.
Opposer has sold a range of souvenir merchandise
featuring the term MAGIC KINGDOM, including guide books;
recordings; apparel such as T-shirts, golf shirts, sweat
shirts and baseball caps; postcards and video cassettes.
Sales of such goods have been made since as least as early
as 1993, with guide books sold since 1955, recordings sold
since 1956, and video cassettes sold as early as 1992. The
exhibits submitted as examples of such use show a record
album cover entitled "Walt Disney takes you to Disneyland,"
Opposition No. 103,575
8
with the word "Disneyland" featured in the largest type.
Below that is the subheading, "A MUSICAL TOUR of the MAGIC
KINGDOM," with "Magic Kingdom" shown in all capital letters
on a separate line. Another record album cover shows, as
its apparent title, "A Musical Souvenir of Walt Disney
World’s Magic Kingdom." The guidebook, which bears the mark
WALT DISNEY WORLD on its cover, contains a page depicting a
picture of three cartoon characters, with the words THE
MAGIC KINGDOM featured prominently at the top.
Current examples of use on merchandised products show
prominent trademark use of MAGIC KINGDOM on golf shirts, T-
shirts, baseball caps, bibs, children’s T-shirts,
stationery, pens, picture frames, lunch bags, key chains and
Christmas ornaments. Many of these products also feature
cartoon characters.
Opposer’s MAGIC KINGDOM videos feature many of
opposer’s popular characters, along with the music, parades
and attractions of the MAGIC KINGDOM parks. Opposer has
sold more than 230,000 videos, representing over $7.7
million in sales. The most recent version of the MAGIC
KINGDOM video is available at Disney retail locations for
$19.95. Its cover shows the words MAGIC KINGDOM in large
letters, with MAGIC at the top of a picture of a castle, and
KINGDOM at the bottom. In much smaller letters, and in a
different, cursive type font, the words "a day at the"
Opposition No. 103,575
9
appear above the word MAGIC. The spine of the box has the
words "a day at the" in small letters in cursive font,
followed by the words MAGIC KINGDOM in large block-type
letters. The videos are intended to appeal to viewers of
every age group, and are purchased by MAGIC KINGDOM visitors
from every region of the country.
Opposer’s Walt Disney World Resort, which is the
location of its Florida MAGIC KINGDOM park, has five
championship golf courses, and opposer has produced a number
of brochures featuring the golfing attractions at the Walt
Disney World Resort.7
Opposer’s courses host several events for junior
golfers. As part of the annual PGA Tour event held at Walt
Disney World, opposer and the PGA team conduct a junior golf

7 Opposer’s witness Kevin Weickel testified that an article
(actually, a "Special Advertisement Section") entitled "The Magic
Linkdom" and featuring the resort’s golf courses, appeared in the
February 1994 issue of "Golf Magazine," prior to the September
1995 filing date of applicant’s intent-to-use application.
Applicant takes issue with the date of that article, pointing out
that the exhibit itself is undated, and that the 1994 date
testified to by Mr. Weickel is contradicted by information in the
article coupled with Mr. Weickel’s own testimony. Specifically,
one of the articles in that section, which was written by Mr.
Weickel himself, describes him as the "head professional" at Walt
Disney World’s golf courses, but in Mr. Weickel’s declaration he
states that he became the Head Golf Professional in October 1997,
prior to which he was a golf teaching professional. Opposer has
given no explanation for this discrepancy. In view thereof, we
have not considered the article to have been in existence prior
to the filing of applicant’s application or the bringing of this
opposition proceeding. Moreover, opposer never pleaded use of
THE MAGIC LINKDOM as a trademark in its notice of opposition, and
it is clear from Mr. Gordon’s declaration that applicant never
agreed to try this issue. Thus, to the extent that opposer has
attempted to rely on trademark rights in THE MAGIC LINKDOM, a
Opposition No. 103,575
10
clinic. Opposer also sponsors the American Junior Golf
Association Rolex Championship, hosts the Florida State
Junior Golf Association Championships, runs a Summer Junior
Golf Camp, and conducts a Golf Awareness Day for Juniors.
Opposer also offers instructional programs for golfers of
all ages, including young people. As part of its golf
instruction programs, golfers can arrange to have their golf
game videotaped and critiqued by Disney’s instructors, with
the students receiving a copy of the videotape at the
conclusion of the training program.
Applicant’s witness, Anthony Gordon, is the president
of applicant. He testified that the mark MAGIC SWINGDOM was
chosen to show the concept of the applicant’s instructional
video: "a magical place (whether real or not) where children
are instructed in a unique way to swing in this video a golf
club." Declaration, p. 2. Although the application was
based on an intention to use the mark, applicant has, in
fact, sold the video. The box for the cassette shows a
costumed person called "Will Tell-em," and cartoon figures
of a bird and squirrel. One of applicant’s promotional
materials also features these cartoon figures, while another
is a photograph of the costumed "Will Tell-Em" with three
children, and the legend "Sing. Swing and Laugh as you
Learn the Game of Golf!" appearing under the words THE MAGIC

likelihood of confusion ground based on such mark has not been
Opposition No. 103,575
11
SWINGDOM, which are shown the most prominently. The cartoon
bird is depicted in the upper corner.
Before turning to opposer’s grounds for opposition, we
must address applicant’s affirmative defense of
acquiescence.8 The evidence submitted by applicant
indicates that on July 2, 1996 applicant sent a letter to
Michael Eisner at "Walt Disney Co." referring to a tape
entitled "The Magic Swingdom" which applicant sent on
June 20, 1996. In view of the request for an extension of
time to oppose filed by opposer on July 12, 1996, followed
by the opposition itself, opposer undertook no affirmative
act which would logically indicate to applicant that opposer
had no objection to applicant’s use of THE MAGIC SWINGDOM
trademark.
Applicant has asserted a claim of laches in its
"brief." Specifically, applicant has alleged that opposer
would have been aware of applicant’s application, because of
opposer’s asserted use of watch services, from the time
applicant filed its application on September 25, 1995, but
that opposer raised no concern to applicant until opposer
filed a request for extension of time to file a notice of
opposition on July 12, 1996. This claim is without merit.

considered.
8 The pleaded affirmative defense that opposer’s mark is weak is
not an affirmative defense, but goes to the issue of likelihood
of confusion.
Opposition No. 103,575
12
In terms of an opposition proceeding, which protests the
issuance of a registration, laches does not begin to run
until the application for registration is published for
opposition. National Cable Television Association, Inc. v.
American Cinema Editors, Inc., 937 F.2d 1572, 19 USPQ2d 1424
(Fed. Cir. 1991). In this case, applicant’s mark was
published for opposition on June 18, 1996, and opposer filed
a request for extension to oppose the application on July
12, 1996 and an opposition on October 16, 1996.
Accordingly, we find no merit in applicant’s
affirmative defenses.
This brings us to the ground of priority and likelihood
of confusion upon which opposer has brought this proceeding.
Priority is not in issue because opposer’s pleaded
registrations for MAGIC KINGDOM and MAGIC KINGDOM CLUB have
been made of record. King Candy Company v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Moreover, the evidence establishes use of the mark MAGIC
KINGDOM for, inter alia, theme park services, apparel, video
cassettes and records since prior to the filing of
applicant’s intent-to-use application on September 25, 1995,
which is the earliest date on which applicant is entitled to
rely.
With respect to the issue of likelihood of confusion,
we have, in making this determination, considered all
Opposition No. 103,575
13
factors, as set forth in In re E.I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), which are
relevant to this record.
Turning first to the marks, there are obvious
similarities between MAGIC KINGDOM and THE MAGIC SWINGDOM.
Applicant’s mark not only begins with (the commonly used
article THE has no source-identifying significance) the
identical word MAGIC of opposer’s mark, but SWINGDOM rhymes
with KINGDOM. Thus, the marks as a whole have phonetic and
visual similarities. Moreover, SWINGDOM, which is not a
word, is clearly a play on or reference to the word KINGDOM.
Applicant, in fact, describes MAGIC SWINGDOM as a magical
place where children are instructed to swing a golf club;
MAGIC KINGDOM also has the connotation of a magical place.
Applicant has argued that opposer’s mark is weak
because other similar trademarks have been registered, and
that no one should be accorded exclusive rights to the
suffix "dom." However, the registrations which applicant
has made of record--MAGIC and design, "THE SWING DOCTOR,"
and THE MAGIC SCHOOL BUS--are very different from the mark
MAGIC KINGDOM or, for that matter, THE MAGIC SWINGDOM.
Moreover, the similarity which we find between the marks is
not based on the element "DOM," but on the marks as a whole,
as indicated above.
Opposition No. 103,575
14
In fact, not only has applicant failed to show that
MAGIC KINGDOM is a weak mark but, on the contrary, the
evidence shows that MAGIC KINGDOM is a famous mark. MAGIC
KINGDOM has been in use since at least 1957 in connection
with entertainment services in the nature of a theme park,
and opposer’s MAGIC KINGDOM parks have existed in both
California and Florida since 1971. Opposer’s evidence
states that the parks have attracted over one hundred
million visitors,9 and that it has expended hundreds of
million of dollars to advertise its two MAGIC KINGDOM
destinations. Although it would have been more effective
for opposer to have provided more specific information about
its advertising efforts, we can still ascertain from the
materials that have been submitted that the mark has been
promoted in travel brochures, destination guides, and the
like. In addition, opposer has sold a video featuring the
MAGIC KINGDOM parks which in effect is a promotional tool.
Over 230,000 of these videos, totaling more than $7,700,000,
have been sold.
Fame plays a dominant role in cases featuring a famous
or strong mark. Kenner Parker Toys Inc. v. Rose Art
Industries, Inc.¸963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir.

9 We regard the reference to over one hundred million visitors
to reflect the number of admissions to the parks. Nonetheless,
even assuming that some of the attendees may be repeat visitors,
the overall number of people visiting the parks is clearly
extremely large.
Opposition No. 103,575
15
1992). Famous or strong marks enjoy a wide latitude of
legal protection. Id.
With that in mind, we turn to a consideration of the
parties’ goods and services. Applicant has pointed out that
its goods are specifically different from the services
identified in opposer’s registrations for MAGIC KINGDOM and
MAGIC KINGDOM CLUB, and that opposer has not provided any
evidence of registrations for these marks in Class 9, the
class covering applicant’s video cassette. However, in
order to support a finding a likelihood of confusion it is
not necessary for the goods or services of the parties to be
similar or competitive, or even that they move in the same
channels of trade. It is sufficient that the respective
goods or services of the parties are related in some manner,
and/or that the conditions and activities surrounding the
marketing of the goods or services are such that they would
or could be encountered by the same persons under
circumstances that could, because of the similarity of the
marks, give rise to the mistaken belief that they originate
from the same producer. In re International Telephone &
Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
In this case, opposer has shown that, in addition to
using the mark MAGIC KINGDOM for its theme park
entertainment services, it has also established prior use of

Opposition No. 103,575
16
the mark on a variety of merchandised items, including
sports apparel such as golf shirts and baseball caps; video
cassettes featuring the theme park; guide books on the
parks; and recordings featuring musical highlights from the
parks. In addition, opposer has expanded its use of the
mark to such varied items as baby bibs, picture frames,
pens, stationery and keychains. Moreover, cartoon
characters are often featured along with the trademark MAGIC
KINGDOM. In addition, although these services are not
rendered under the mark MAGIC KINGDOM, opposer offers golf
and golf-related goods and services at the Walt Disney World
Resort, where its Florida MAGIC KINGDOM theme park is
located, and brochures for the golfing activities include
references to the MAGIC KINGDOM theme park. These golfing
activities include golf lessons, and in particular, lessons
in which the student is videotaped and is given the video
cassette. Further, opposer markets animated movies and
cartoons on video cassettes, as shown by Exhibit 7, submittd
by applicant itself as part of Mr. Gordon’s testimonial
declaration.
Because of the range of opposer’s activities, and the
goods and services on which it uses its MAGIC KINGDOM mark,
we find that applicant’s use of THE MAGIC SWINGDOM for
"prerecorded video cassettes, namely sports training videos
featuring animated and live characters for instructional
Opposition No. 103,575
17
purposes" is likely to cause confusion. In particular,
opposer has shown that it markets video cassettes and is
engaged in golfing activities, and that it provides video
cassettes of students as part of its golf training programs.
These goods and services, taken together, are extremely
similar to applicant’s sports training videos, which at this
point feature training in the sport of golf. Moreover,
opposer has shown that it continues to expand its use of the
MAGIC KINGDOM mark to a variety of goods and, because of its
involvement with golf courses and golf training, consumers
might well assume, upon seeing THE MAGIC SWINGDOM for golf
instructional videos, that opposer had expanded its business
to market such goods. This is particularly true because
applicant’s training videos feature animated characters, and
opposer’s videos cassettes include animated movies and
cartoons, and its MAGIC KINGDOM mark is frequently used on
goods in close proximity to cartoon characters.
We also note that applicant’s video was designed for
young children, and the videos are purchased by parents and
grandparents for their children and grandchildren.
Opposer’s goods and services are designed for, and are
purchased by, people of every age group, and it is apparent
from this record that many of opposer’s products are for use
by children. Thus, we must consider the parties’ goods and
services to be sold to the same classes of consumers.
Opposition No. 103,575
18
We note that opposer’s goods appear to be sold, and its
services offered, only at its own theme parks and resort and
through its own retail stores, while applicant indicates
that it intends to market and sell its goods through
"television, radio, motion pictures, retail stores, and any
new market that would present itself." Response to
Interrogatory No. 11. Although the parties’ goods and
services would not be offered in the same places, the number
of people who visit opposer’s MAGIC KINGDOM theme parks is
so overwhelming that we must consider them to include a
sizable number of people in the United States. These same
people, i.e., the general public, are likely to encounter
applicant’s goods in retail stores and other places
applicant may advertise and sell its products, given the
widespread manner of distribution that applicant describes.
Applicant’s mark THE MAGIC SWINGDOM, when used on golf
instructional videos, suggests training in how to use a golf
club. Because of the fame of opposer’s MAGIC KINGDOM mark,
people encountering applicant’s video cassettes are likely
to regard THE MAGIC SWINGDOM as a variant of opposer’s
famous mark.
Accordingly, we find that applicant’s use of THE MAGIC
SWINGDOM for "prerecorded video cassettes, namely sports
training videos featuring animated and live characters for
instructional purposes" is likely to cause confusion with
Opposition No. 103,575
19
opposer’s MAGIC KINGDOM mark, as used for its theme park
entertainment services and related merchandising items.
Opposition No. 103,575
20
Decision: The opposition is sustained.
E. J. Seeherman
P. T. Hairston
B. A. Chapman
Administrative Trademark Judges
Trademark Trial and Appeal Board