Karsten Mfg. Corp.v.D. Kent Pingel

Trademark Trial and Appeal Board

Jun 22, 2011

No. 91189542 (T.T.A.B. Jun. 22, 2011)

Mailed:
June 22, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Karsten Manufacturing Corporation
v.
D. Kent Pingel
_____

Opposition No. 91189542
to Application No. 77612277
_____

John D. Titus of Hartman Titus PLC for Karsten Manufacturing
Corporation.

D. Kent Pingel, pro se.
______

Before Quinn, Cataldo and Wellington, Administrative
Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

D. Kent Pingel (applicant), an individual, has filed an
application to register the mark:

THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Opposition No. 91189542
2
for “advertising and publicity services, namely, promoting
the goods, services, brand identity and commercial
information and news of third parties through print, audio,
video, digital and on-line medium” in International Class
35.1 The term “WI FI” has been disclaimed.
Karsten Manufacturing Corporation (opposer) has opposed
registration of applicant’s mark under Section 2(d) of the
Trademark Act on the ground of priority and likelihood of
confusion. Specifically, opposer pleaded, inter alia, that
it is the owner of thirty-four trademark registrations for
PING marks (for the term by itself or in conjunction with
other terms or designs) and that these registrations cover
various goods and services, including golf-related
equipment, sponsoring golf professionals and tournaments,
providing training and educational services regarding the
fitting of golf clubs; that opposer “directly and/or through
its wholly owned subsidiary Ping, Inc. has used the mark
PING [and other PING-formative marks] in an open and public
manner...prior to the first use claimed in the above-
referenced application”; that PING is a famous mark within
the meaning of Section 43(c) (involving dilution) of the
Act; and that applicant’s mark should be refused

1 Application Serial no. 77612277 was filed on November 11, 2008
based on an allegation of first use in commerce on December 14,
2005.
Opposition No. 91189542
3
registration because it is likely to cause confusion with
opposer’s marks.2
Applicant, in his answer, admitted the allegation that
“opposer directly and/or through its wholly owned subsidiary
Ping, Inc. has used the mark PING in an open and public
manner in the United States since prior to the date of first
used claimed in [applicant’s] application, and has not
abandoned such use.” Applicant otherwise denied all other
salient allegations in the notice of opposition.
The Record
The record automatically consists of the pleadings and
the file of the involved application. Opposer submitted the
trial testimony, with exhibits, of: Steven Chance Cozby,
Director of Tournament Player Relations for Ping, Inc.;
Steven Bostwick, Forecasting Manager and Market Analyst for
Ping, Inc.; David Engelking, Subsidiary Operations Manager
for opposer; Susan Naylor, co-owner of Darrell Survey; Peter
Samuels, Head of Marketing Communications for Ping, Inc.;
and Frankie Ho, Director of Intellectual Property for Ping,
Inc. Opposer also submitted, under notices of reliance,

2 Opposer appears to have attempted to plead a claim of dilution
under Section 43(c) of the Act; however, opposer did not
specifically plead that its PING mark became famous prior to the
filing date of the subject application. Moreover, opposer did
not argue this ground in its brief. Rather, in the brief’s
“statement of the issues,” only priority and likelihood of
confusion is identified as a ground for which opposer believes
the Board should refuse registration. We therefore construe any
possible dilution ground as having been waived by opposer.
Opposition No. 91189542
4
copies of applicant’s responses to requests for admission
and interrogatories, and a copy of a Business Wire article.
In particular, we note that opposer properly introduced
all but one of its thirty-four pleaded registrations of
record.3 Opposer submitted, as exhibits to Mr. Ho’s
deposition, printouts for thirty-three pleaded registrations
from the USPTO TARR electronic database along with copies of
the actual registrations.4 In addition, opposer submitted
the same for six additional registrations that it owns but
were not pleaded in the notice of opposition.
Applicant did not take any testimony or submit any
evidence. It also does not appear that applicant was
present or represented by counsel at any of the
aforementioned testimonial depositions noticed by opposer.
Only opposer has filed a trial brief.
Standing
Opposer has established that it is the owner of the
pleaded registrations and that said registrations are valid

3 Opposer pleaded ownership of Registration No. 704552 for the
mark PING for “golf clubs” (issued on September 20, 1960 and
renewed). However, opposer failed to submit printouts from the
USPTO electronic database or otherwise properly introduce this
registration into the record by showing the status and title
thereof. The fact that this registration is not of record is not
fatal to opposer’s claim and does not affect the outcome of this
proceeding in light of our determination, discussed infra, that
opposer has established common law rights in the mark PING in
connection with “golf clubs” long before the filing date of the
subject application.
4 The simpler approach is to submit the USPTO electronic database
printouts for each of the pleaded registrations under a notice of
reliance. See Trademark Rule 2.122(d)(1).
Opposition No. 91189542
5
and subsisting. Accordingly, opposer has shown that it has
a personal interest in this proceeding. See Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir.
2000); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023
(Fed. Cir. 1999); and Lipton Industries, Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
Priority and Opposer’s Registrations
Opposer’s proof of ownership of its pleaded
registrations removes priority as an issue with respect to
the goods and services covered by the registrations, vis-à-
vis the recited services in the subject application. King
Candy, Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400,
182 USPQ 108 (CCPA 1974).
Opposer’s pleaded registrations of record include the
following marks in connection with golf-related goods or
services:

for: golf accessories, namely, umbrellas and
travelling bags;5

for: sponsoring golf professionals;6

5 Registration No. 1647448 issued on June 11, 1991; renewed.
Section 8 and 15 affidavits accepted and acknowledged.
6 Registration No. 1633477 issued on January 29, 1991; renewed.
Section 8 and 15 affidavits accepted and acknowledged.
Opposition No. 91189542
6

for: golf clubs;7

for, inter alia,: travel covers for golf bags;8
for: training and educating sporting goods dealers to
fit golf clubs to customers, golf club fitting,
sponsoring amateur golf tournaments for men, women and
for junior golfers, and sponsoring professional golf
tournaments;9

PING (in typed lettering)
for: newsletters on professional golf;10

for: sporting goods; namely, golf bags, golf balls,
and head covers for golf clubs;11

for: golf playing equipment; namely, golf clubs;12

for: golf bags;13

7 Registration No. 2923069 issued on February 1, 2005. Section 8
and 15 affidavits accepted and acknowledged.
8 Registration No. 2773222 issued on October 14, 2003. Section 8
and 15 affidavits accepted and acknowledged.
9 Registration No. 2870863 issued on August 10, 2004. Section 8
and 15 affidavits accepted and acknowledged.
10 Registration No. 1638323 issued on March 19, 1991; renewed.
Section 8 and 15 affidavits accepted and acknowledged.
11 Registration No. 1632445 issued on January 22, 1991; renewed.
Section 8 and 15 affidavits accepted and acknowledged.
12 Registration No. 1647510 issued on June 11, 1991; renewed.
Section 8 and 15 affidavits accepted and acknowledged.
13 Registration No. 3320110 issued on November 23, 2007.
Opposition No. 91189542
7

for: golf bags;14 and

PING JUNIOR SOLHEIM CUP (in typed lettering)
for: organizing and conducting golf tournaments.15

Opposer’s other pleaded registrations of record for the
mark PING (either stylized or in typed letters) cover
various non-golf specific goods, including: sun block,
metal key rings, pocket knives, computer carrying cases,
refrigerator magnets, calculators, lamps, watches, pens,
stationery items, travel document cases, toiletry cases,
gloves, belts, chairs, plastic water bottles sold empty,
mugs, wastepaper baskets, lanyards for eyeglasses, towels,
articles of clothing, caps, visors, mittens, rugs, and
drinking water.
As previously alluded to, opposer also introduced six
other registrations that it owns, but were not pleaded in
the notice of opposition.16 These registrations, all for
the mark PING (in typed letters or with a standard character
claim), cover goods and services such as: application
service provider services featuring non-downloadable
software, computer software, computers, downloadable video
recordings, consumer telecommunications services, and
entertainment and educational services in the fields of

14 Registration No. 3033057 issued on December 20, 2005.
15 Registration No. 2949957 issued on May 10, 2005.
16 Registrations Nos. 3505238, 2599013, 3617336, 3703528, 3728814,
and 3795969.
Opposition No. 91189542
8
sports and entertainment. Although these registrations were
not pleaded by opposer, applicant did not object to their
introduction. We therefore treat the issue of opposer’s
ownership of registrations as tried by consent and the
notice of opposition deemed to be amended accordingly. Fed.
R. Civ. P. 15. Nevertheless, we note that opposer does not
argue in its brief how these six registrations are relevant
to the opposition other than showing various other goods and
services for which opposer registered the PING mark; opposer
does not argue that any of the services and goods covered by
the registrations are related to the advertising and
promotional services recited in the subject application.
Opposer’s Common Law Rights
As noted, opposer has not properly introduced
Registration No. 704552 (see footnote 3) for the typed mark
PING for “golf clubs”; however, opposer has clearly proven
through the testimonial depositions and exhibits that it has
used that mark on golf clubs since at least 1960, long
before the filing date of the subject application.
Accordingly, we find that opposer has prior common law
rights in the PING mark for golf clubs. Mason Engineering
v. Mateson Chemical, 225 USPQ 956, 961 (TTAB 1985) (in the
absence of evidence regarding its date of first use, the
earliest date on which applicant can rely is the filing date
Opposition No. 91189542
9
of its application); see also, Miller Brewing Co. v.
Anheuser-Busch Inc., 27 USPQ2d 1711, 1714 (TTAB 1993).17
In addition to relying upon the services covered by its
pleaded registrations, opposer argues in its trial brief
that it renders services it describes as “promoting golf
professionals and the sport of golf [since 1984]” and
“promoting golf shaft manufacturers [since 1984].” Brief,
p. 9. Opposer further states that “[a]s established by the
testimony of Peter Samuels and others, for at least the past
20 years, Opposer has been engaged in the business of
promoting the services of third parties such as golf
professionals, golf shaft manufacturers, and golf tournament
events; and has been engaged in the business of publishing
news about third parties such as golf professionals and tour
events.” Id., p. 16.
Opposer’s asserted “promotional” services involving the
goods and services of third parties are not encompassed by
the “sponsorship...training...educating” services found in
the pleaded registrations. Moreover, and based on the
entire record before us, we cannot conclude that opposer
actually prepares advertisements or promotes the goods and
services of others as a routine matter of business.18 In

17 We have no testimony or other evidence from applicant regarding
its use, if any, of the applied-for mark.
18 We further note that opposer also did not plead rights in the
PING mark with respect to advertising and promotional services
nor moved to amend the notice of opposition to conform to the
Opposition No. 91189542
10
other words, the evidence fails to show that opposer renders
or offers promotional services to others under any of its
PING marks.
In spite of our finding that opposer has not shown that
it renders advertising or promotional services for others in
commerce, the testimony and exhibits submitted by opposer
have probative value. This evidence elaborates upon
applicant’s sponsorship and other services, as well as its
golf-related goods, by showing the type and manner of
opposer’s own advertising used in connection with the
sponsorship services and indicates, as well, the level of
exposure accorded to applicant’s PING mark.
In sum, we find opposer has established common law
rights in its mark PING on golf clubs, but it has not
established rights in the mark in connection with any
advertising and promotional services for others, as asserted
in its brief. Accordingly, for purposes of our likelihood
of confusion analysis, we consider only opposer’s use of the
PING mark on golf clubs as well as the other various goods
and services covered by opposer’s registrations vis-à-vis
the applied-for mark and the services recited in the
application.

evidence submitted. Because there is no evidence that opposer
actually renders these services, we need not reach the question
of whether any such unpleaded rights, had they existed, were
tried by implicit consent in order to deem the pleadings amended
in this regard.
Opposition No. 91189542
11
Likelihood of Confusion
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the likelihood of confusion issue.
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973).
Fame
We begin our likelihood of confusion analysis with the
du Pont factor involving opposer’s asserted fame of its PING
mark. Fame, if it exists, plays a significant role in our
analysis because a famous mark enjoys a broad scope of
protection. Bose Corp. v. QSC Audio Products Inc., 293 F.3d
1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002).
Upon careful review of the record in this case, we are
persuaded that opposer’s PING mark is famous within the
sport of golf, including many goods and services related
thereto. Applicant has also admitted that opposer’s PING
mark “is widely recognized by the general public as being
associated with the golf clubs manufactured by opposer.”
Admission Request No. 11.
As to the testimony and evidentiary materials submitted
by opposer to establish the fame of its PING mark, we are
mindful that certain portions and figures have been
designated as “confidential.” Nevertheless, we are able to
point to several factors in general terms which have been
Opposition No. 91189542
12
borne out by the record and helped us reach our conclusion
regarding the fame of opposer’s PING mark. They are:
opposer has been using the mark PING for over fifty years on
golf clubs and for many years in connection with a variety
of golf-related goods and services; opposer’s golf clubs are
regarded by its consumers as being of very high quality;
opposer has acquired several of the top market share
positions for various types of golf clubs and golf bags for
the last ten years; opposer’s annual sales of golf clubs and
golf bags in the United States for the last ten years is
very substantial; opposer’s advertising expenses for the
past ten years have also been significant and opposer is
among the top five golf equipment manufacturers in terms of
money spent on advertising; opposer has placed television
advertisements during some of the most important golf
tournaments, being first or second, with Nike as one of the
other major advertisers; opposer has sponsored many amateur
and professional golf tournaments as well as sponsored
golfers who went on to win major golf tournaments; several
other corporations have sought to co-brand their products or
services with opposer’s PING mark; opposer and opposer’s
founder have been featured in several articles; and opposer
has licensed its PING mark to a clothing company for a line
of clothing distributed through some major retailers as well
as golf pro shops, and some of this PING-licensed apparel
Opposition No. 91189542
13
has received exposure by being worn by professional golf
players.
Inasmuch as we have found opposer’s PING mark to be
famous in connection with golf-related equipment and
services, we accord the mark a wide latitude of legal
protection which certainly favors opposer and a finding of a
likelihood of confusion.
Similarity of the Marks
We turn now to the du Pont factor of the similarity or
dissimilarity of the marks, when viewed in their entireties
in terms of appearance, sound, connotation and commercial
impression. Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1722, 396 F.3d 1369, 73 USPQ2d
1689, 1694 (Fed. Cir. 2005).
Here, we waste little time in finding that the dominant
element of applicant’s mark is PING. To the extent that
applicant’s mark also contains the wording WI FI and a
triangle design, these elements have much less source-
identifying significance. The triangle design, as applicant
admits, is merely a “common geometric form.” Admission
Request No. 6. As to the term “wi fi,” we note that the
application’s recitation of services specifically states
that advertising or promotional services will be rendered
online, i.e., via the internet, and applicant has admitted
that “in the field of computers, the term ‘Wi-Fi’ refers to
Opposition No. 91189542
14
wireless connectivity to a network such as The Internet.”
Admission Request No. 4. Thus, the disclaimed term “WI FI”
is descriptive of a manner or method in which applicant
renders his services.
As to commercial impression and connotation, we take
notice that the word “ping” is defined as:19
PING (n.)
1. A sharp, high-pitched sound, as that made by a
bullet striking metal.
2. See knock. intr.v. pinged, ping·ing, pings
To make a sharp, high-pitched, metallic sound.

Based on the definition, we speculate that the term
“ping” may be suggestive of the sound made by a metal golf
club striking a golf ball; yet there is no evidence that the
public would necessarily make such a connection. We can
further speculate that applicant’s use of the term PING
derives from his own last name, Pingel. Again, this is only
speculation and there is no evidence that consumers of
applicant’s services will be aware of applicant’s surname or
otherwise make such a connection. Thus, we cannot say with
any certainty that the term PING, as it appears in the
parties’ marks and in connection with their respective goods

19 The American Heritage Dictionary of the English Language
(Fourth Edition 2000). The Board may take judicial notice of
dictionary definitions. University of Notre Dame du Lac v. J. C.
Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d,
703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).

Opposition No. 91189542
15
and services, will be understood by consumers as having any
specific meaning or connotation. Rather, we assume each
party’s use of the term PING is arbitrary and will be
perceived as such by consumers.
Considering applicant’s mark in its entirety, as we
must, we find that it is similar in appearance and sound to
opposer’s PING mark. Because the term PING is used
arbitrarily in both marks, it will also convey the same
impression on consumers. It is significant that the
dominant element of applicant’s mark, PING, is the same as
opposer’s mark and this outweighs any dissimilarity.
Accordingly, we find the du Pont factor regarding the
similarity of the marks weighs in favor of finding a
likelihood of confusion.
Relationship of the Goods and Services; Trade Channels;
and Classes of Purchasers
We now consider the du Pont factor involving the
relationship, if any, between the services recited in the
application and the goods and services of opposer. In doing
so, we also consider the du Pont factors involving the
classes of purchasers for the respective services and goods
as well as their trade channels.
It is well established that the goods and/or services
of the parties need not be similar or competitive, or even
offered through the same channels of trade, to support a
Opposition No. 91189542
16
holding of likelihood of confusion. It is sufficient that
the respective goods and services of the parties are related
in some manner, and/or that the conditions and activities
surrounding the marketing of the goods and/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 source. See Hilson
Research, Inc. v. Society for Human Resource Management, 27
USPQ2d 1423 (TTAB 1993); and In re International Telephone &
Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). The issue,
of course, is not whether consumers will confuse the goods
and/or services, but rather whether there is a likelihood of
confusion as to the source of the goods and/or services. In
re Rexel Inc., 223 USPQ 830 (TTAB 1984). The question of
likelihood of confusion must be determined based on an
analysis of the services recited in applicant's application
vis-à-vis the goods and/or services identified in opposer's
pleaded registration(s). Canadian Imperial Bank of Commerce
v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815
(Fed. Cir. 1987). Our analysis must also include a
comparison between applicant’s services and whatever goods
and/or services for which opposer owns superior common law
rights.
Opposition No. 91189542
17
With the above principles in mind, we begin our
comparison of the parties’ respective goods and services by
noting that applicant’s “advertising and publicity services”
are broadly described in the application. There is no
restriction to the markets in which these services are
offered or the class(es) of prospective consumers. Rather,
the recitation states “promoting the goods, services, brand
identity and commercial information and news of third
parties,” and the consumer may be a corporation or an
individual receiving such services. Finally, the media used
by applicant in rendering the advertising and publicity
services essentially runs the gamut, i.e., “through print,
audio, video, digital and on-line medium.” Given such a
broad recitation of advertising and publicity services, we
must consider the possibility that applicant’s services are
offered to those involved in the field of the sport of golf
and could include: publicity services for professional
golfers, advertising and publicity services for golf
tournament organizations, promotion and advertising services
for companies that manufacture golf equipment, etc.
Although there is insufficient evidence to support
opposer’s contention that it actually renders advertising
and promotional services for others as a course of business,
we find that a relationship exists between opposer’s
sponsorship services in the golf field and applicant’s
Opposition No. 91189542
18
services. First, based on the respective recitations of
services, the same golfers that opposer sponsors may also
retain applicant for publicity services. Likewise, the same
golf tournament organizations that seek opposer’s
sponsorship services may also retain applicant’s promotional
services. Second, and perhaps more importantly, the record
demonstrates that certain conditions and activities
surrounding opposer’s sponsorship services bridge the gap
with applicant’s advertising and publicity services. In
particular, opposer frequently places advertisements in
magazines and other media containing a picture of a
sponsored player using opposer’s PING golf clubs. In
addition to obviously promoting the PING golf clubs, the
record shows that these advertisements also promote and/or
provide publicity to the player shown in the advertisement.
See Samuels dep., p. 43-87; e.g., at 44:13-16(“[t]his
[advertisement] includes our Tour professional Bob Eastwood,
who represented us on Tour at that time. So we’re promoting
him. It also promotes a couple of our golf clubs...”), at
48:9 (“Well, here we’re promoting Ken Green who was one of
our staff professionals who won this particular
tournament…”); see also Cozby Dep. pp. 49-68. Thus, one of
the effects of opposer’s advertisements involving its
sponsored players and PING golf clubs serves the same
purpose as applicant’s recited services, i.e., promoting or
Opposition No. 91189542
19
publicizing the player and his/her accomplishments in the
same media used by applicant. While the sponsorship of
golfers and golf tournaments may not be the type of services
that will directly compete with applicant’s advertising and
publicity services, there is a commercial relationship
between said services.
In view of the foregoing, we find it plausible that
both applicant and opposer may offer their services to the
same consumers, golfers and golf tournament organizations.
There is also a degree of relationship between opposer’s
sponsorship services with the unrestricted advertising and
publicity services in the opposed application. Accordingly,
the du Pont factors of the similarity of the services and
classes of purchasers favor a finding of a likelihood of
confusion.
Balancing of Factors
As discussed above, several du Pont factors weigh in
favor of finding a likelihood of confusion. Most notably,
we have found that opposer’s PING mark is famous, at least
within the field of golf, and is entitled to a wider scope
of protection commensurate with said fame. Opposer’s mark
is also similar to applicant’s proposed mark. While
opposer’s goods and services are mostly directed to the golf
market and that is where the fame of its PING mark rests,
applicant’s advertising and publicity services are not
Opposition No. 91189542
20
restricted and may be offered as well to entities involved
in the sport of golf, e.g., golfers and golf tournament
organizations. With these factors in play, we find there is
a sufficient relationship between opposer’s sponsorship
services and applicant’s advertising and publicity services,
so that the similarity between opposer’s famous mark and
applicant’s mark is likely to give rise to the mistaken
belief that the respective services originate from the same
source. In other words, consumers such as golfers and golf
tournament organizations, already familiar with opposer’s
sponsorship services offered under the famous PING mark, are
likely to mistakenly believe that applicant’s advertising
and publicity services emanate from the same source when
they are offered to the same consumers under a similar mark.
We finally note that applicant has not presented any
evidence or set forth any argument as to why or how the
parties’ services are so different that there could be no
likelihood of confusion. However, to the extent that any
doubts might exist in this regard, we resolve such doubts in
favor of the party with prior rights in its mark, opposer,
and against applicant. See Century 21 Real Estate Corp.,
supra; Ava Enterprises Inc. v. Audio Boss USA Inc., 77
USPQ2d 1783 (TTAB 2006); and Baseball America Inc. v.
Powerplay Sports Ltd., 71 USPQ2d 1844 (TTAB 2004).
Opposition No. 91189542
21
In this case and on this record, we find that opposer
has demonstrated by a preponderance of the evidence that a
likelihood of confusion exists when the parties’ marks are
used in connection with the respective services.
Decision: The opposition is sustained and registration
of applicant’s mark is refused.