Hillerich & Bradsby, Co.v.Carol Anne Spils

Trademark Trial and Appeal Board

Nov 23, 1999

No. 91108443 (T.T.A.B. Nov. 23, 1999)

Paper No. 17
ejs
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB NOV. 23, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Hillerich & Bradsby, Co.
v.
Carol Anne Spils
_____
Opposition No. 108,443
to application Serial No. 75/066,212
filed on March 1, 1996
_____
Laura D. Robertson of Middleton & Reutlinger for Hillerich &
Bradsby, Co.
Carol Anne Spils, pro se.
______
Before Seeherman, Quinn and Holtzman, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Hillerich & Bradsby, Co. has opposed the application of
Carol Anne Spils to register the mark GRAND SLAM and design,
as shown below, for “board game comprised primarily of game
board depicting a baseball field, and 4 types of category
Opposition No. 108,443
2
question cards regarding ‘places’, ‘objects’, ‘animals/
people’, and ‘miscellaneous’.”1
Opposer has based its opposition on the ground of
likelihood of confusion, Section 2(d) of the Trademark Act,
15 U.S.C. 1052(d).2 Specifically, opposer has alleged that
it is a manufacturer of sporting goods; that it licenses its
marks for use in connection with non-sporting goods; that it
has, since prior to the filing date of applicant’s
application, used the mark GRAND SLAM in connection with
golf clubs, baseball and softball bats, and batting gloves
and other goods; that it owns registrations for the mark
GLAND SLAM for, inter alia, baseball and softball bats and
batting gloves; and that applicant’s use of her mark is
likely to cause confusion or mistake or to deceive.
In her answer applicant has admitted that she has sent
letters to companies to request that they license

1 Application Serial No. 75/066,212, filed March 1, 1996,
asserting a bona fide intention to use the mark in commerce.
2 In its notice of opposition opposer also asserted that
applicant’s use of her mark may disparage or falsely suggest a
connection between applicant’s goods and opposer. However,
opposer did not refer to this ground in its brief, and we have
therefore given it no consideration.
Opposition No. 108,443
3
applicant’s board game, and has otherwise denied the salient
allegations of the notice of opposition. She has also
asserted affirmatively that the parties’ goods are
different, and that the term “grand slam” is extensively
used and therefore that opposer’s rights in the term are
narrowly circumscribed.
The record includes the pleadings; the file of the
opposed application; the testimony, with exhibits, of Bill
Williams, opposer’s vice president of public relations; and
applicant’s responses to opposer’s requests for admission,
submitted by opposer under a notice of reliance. Applicant
submitted no evidence, and only opposer filed a brief. An
oral hearing was not requested.
The record shows that opposer manufactures sporting
goods equipment, and also operates the Louisville Slugger
Museum, which is dedicated to the relationship between the
Louisville Slugger brand and the game of baseball. Opposer
began using the mark GRAND SLAM in 1924, and has used the
mark on, inter alia, wood and aluminum baseball bats,
including youth or “Little League” wood bats, batting
gloves, golf irons, golf woods and golf gloves. It owns
registrations for GRAND SLAM in typed form for golf clubs,
baseball and softball bats3 and batting gloves4 and in

3 Registration No. 1,985,686, issued July 9, 1996.
4 Registration No. 1,997,809, issued September 3, 1996.
Opposition No. 108,443
4
script form, for wooden golf clubs, iron golf clubs and
baseball bats.5
The mark GRAND SLAM is used on various LOUISVILLE
SLUGGER baseball and softball bats, and appears in
relatively large letters on the barrel of the bat. It is
this end of the bat which is visible when the bats are
displayed in stores. Opposer has advertised its bats in its
LOUISVILLE SLUGGER catalogs, 50,000 to 60,000 of which are
distributed each year. The catalogs are given to opposer’s
retail customers and to consumers who request catalogs;
catalogs are also distributed at trade shows and
tournaments.
Opposer also uses the mark GRAND SLAM on various golf
clubs. Woods, irons and shafts, which feature the mark on
the heads and shafts, are advertised in opposer’s POWERBILT
catalogs. These catalogs are distributed to golf
professional customers and to consumers, with 50,000 to
75,000 catalogs produced each year.
Opposer has continuously used its GRAND SLAM mark on
its baseball and golf products for decades. Mr. Williams
testified that “in baseball it is the only example that I am
aware of a product that has the Grand Slam name on it….” p.
22.

5 Registration No. 816,085, issued October 4, 1966; Section 8
and 15 affidavits filed; renewed.
Opposition No. 108,443
5
Annual sales of opposer’s baseball and softball
products bearing the mark GRAND SLAM ranged from $100,000 to
$200,000 in the early 1990’s to around $1 million or more
from 1994 through 1997, with total revenue during this
period of more than $5 million, representing sales of
660,000 items.
Opposer’s GRAND SLAM baseball products are
characterized as “economically priced.” They are used by
church leagues and Boys’ Clubs, rather than pro players or
high school or college teams. Mr. Williams testified that
the bats are purchased on impulse, with the customers’
recognizing the mark LOUISVILLE SLUGGER as indicating a
quality product, and the price then being the determinative
factor.
Although Mr. Williams did not specifically testify
about the outlets in which opposer’s GRAND SLAM products are
sold, he did say that baseball equipment in general is sold
in sporting goods stores, retail outlets, mass merchant
stores, toy stores, drug stores, general merchandise stores
like Sears, at batting cages and batting ranges, through
direct response mail order, and on the Internet. He also
testified that any of these trade channels could include
board games.
Finally, Mr. Williams testified that opposer has
licensed marks for various products, including stuffed and
Opposition No. 108,443
6
plush toys, small plastic toy pitching machines and batting
tees, video baseball games, books and publications, and
apparel. The record does not indicate which marks have been
licensed for which goods, or whether the mark GRAND SLAM has
been used on any of the licensed items, although Mr.
Williams did state that the GRAND SLAM mark was available to
be licensed.
As noted above, applicant did not submit any evidence.
Priority is not in issue, in view of opposer’s
registrations for GRAND SLAM which are of record. In
addition, the record shows that opposer has been using the
mark GRAND SLAM for baseball and softball bats and golf
clubs since prior to the filing date of applicant’s
application.
Turning then to the issue of likelihood of confusion,
we find that the marks are extremely similar. Opposer’s
mark is GRAND SLAM, registered in both typed and script
form, while GRAND SLAM is the only verbal portion of
applicant’s mark. As such, it is the portion by which
people would refer to the product. Although marks must be
compared in their entireties, there is nothing improper in
stating that, for rational reasons, more or less weight has
been given to a particular feature of a mark. In re In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985). Moreover, in view of the design element in
Opposition No. 108,443
7
applicant’s mark and the nature of the goods on which both
marks are used, the significance of GRAND SLAM in both
marks, as a baseball term, is the same.
With respect to the goods, although opposer’s baseball
bats and batting gloves are obviously different in nature
from applicant’s identified board game, both involve the
game of baseball. Further, applicant’s mark includes, in
prominent fashion, a bat, which is the same item on which
opposer uses its GRAND SLAM mark. In addition, the record
shows that marks used for baseball bats are licensed for use
on a wide variety of items, including toys. It is not
necessary that the goods of the parties be similar or
competitive, or even that they move in the same channels of
trade to support a holding of likelihood of confusion. It
is sufficient that they are related in some manner, and/or
that the conditions and activities surrounding the marketing
of the goods 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. See In re International Telephone & Telegraph
Corp., 197 USPQ 910 (TTAB 1978).
Here, in addition to the baseball-related connection of
the parties’ goods and the evidence of licensing of
opposer’s marks for toys, the record shows that baseball
Opposition No. 108,443
8
equipment such as opposer’s is sold in toy stores and other
retail outlets in which board games such as those identified
in applicant’s application can be sold. Thus, the parties’
goods must be deemed to travel in the same channels of
trade. The evidence also shows that the goods can be sold
to the same classes of consumers, applicant’s having
admitted that her goods are intended to be sold to all
persons ages ten to adult, which would certainly encompass
the same consumers who purchase and use opposer’s adult and
youth bats.
We would also point out that, although the mark GRAND
SLAM is suggestive of baseball bats and of a game depicting
a baseball field, there is no evidence, as applicant
asserted in her answer, that the term “grand slam” is
commonly used or that opposer’s rights in its mark are
narrowly circumscribed. On the contrary, the evidence shows
that opposer has used its mark GRAND SLAM for bats for more
than 70 years, has advertised it for many years in its
catalogs, and that no other parties sell baseball-related
products under the mark GRAND SLAM. Thus, opposer’s mark
GRAND SLAM must, on this record, be considered a strong
mark.
Opposition No. 108,443
9
Having considered all of the relevant duPont factors,6
we find that applicant’s use of the mark GRAND SLAM and
design for a board game consisting primarily of a game board
depicting a baseball field and question cards is likely to
cause confusion with opposer’s mark GRAND SLAM, depicted in
both typed and script form, for baseball and softball bats.
Decision: The opposition is sustained.
E. J. Seeherman
T. J. Quinn
T. E. Holtzman
Administrative Trademark Judges
Trademark Trial and Appeal Board

6 In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973)