Softspikes, Inc.

Trademark Trial and Appeal Board

Mar 19, 2012

No. 75574825 (T.T.A.B. Mar. 19, 2012)

Mailed: March 19, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Softspikes, Inc.
________

Serial No. 75574825

Ira C. Edell of Epstein Edell Shapiro & Finnan LLC for
Softspikes, Inc.

Kimberly Krehely, Senior Attorney, Law Office 111 (Robert
Lorenzo, Managing Attorney).
_______

Before Rogers, Chief Administrative Trademark Judge, and
Seeherman and Holtzman, Administrative Trademark Judges.

Opinion by Holtzman, Administrative Trademark Judge:

Softspikes, Inc., (applicant) filed the above-identified
application to register the mark SOFTSPIKES (in typed form) on
the Principal Register for "cleats for footwear for sports" in
Class 25.1

1 Serial No. 75574825 filed October 21, 1998 asserting dates of first
use and first use in commerce in August 1992. The application includes
a claim of ownership of Registration No. 1773925 on the Supplemental
Register for the mark SOFT SPIKES (“Spikes” disclaimed) for "cleats for
footwear for sports" in Class 25.
The Board consolidated this case with application Serial Nos.
75424804 and 75480420 on April 17, 2001 because the applications
involve the same marks and related issues. In that same order, the
Board suspended the appeal and remanded this application to the senior
attorney for consideration of a Section 2(f) claim in the application
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 75574825
2
The senior attorney has refused registration under Section
2(e)(1) of the Trademark Act on the ground that SOFTSPIKES is
generic for the identified goods, and if not generic, merely
descriptive of the goods, and that the evidence is insufficient

and for supplemental briefing on that issue. A supplemental brief was
filed by the senior attorney on April 29, 2011 and applicant filed a
supplemental reply on May 19, 2011.
In the time between the 2001 issuance of the remand order and the
2011 filing of supplemental briefs, the file for this application was
lost by the Office, and in accordance with applicant’s request, the
Board agreed to decide the appeals in the ‘804 and ‘420 applications
prior to reconstructing the file for this application. The Board
issued separate decisions in those appeals on March 3, 2009. The
Office sincerely regrets the significant delays associated with this
case and its long and troubled history, and given the size of this
record, with voluminous evidence on both sides, recognizes the
tremendous burden on applicant required to reconstruct it. To minimize
such burden, the evidentiary record has been reconstructed through
resort to available electronic records of the Office, as well as the
senior attorney’s archived records, and through applicant’s
resubmission of certain portions of the record. Those portions include
applicant’s memorandum dated October 19, 1998 along with the
declaration (with exhibits 1-13) of applicant’s senior vice president,
Faris W. McMullin, dated September 29, 1998. This evidence was
originally submitted when applicant filed the application and it has
been resubmitted by applicant under “Attachment A.” Applicant also
resubmitted website printouts (dated February 11, 2002) of golf course
and tournament regulations which are identified under Attachments B and
C. We have also, in accordance with applicant’s request, considered as
part of this record and made part of this application file, the
additional evidence of acquired distinctiveness which appears in the
record for the ‘804 application, as applicant indicates that the
evidence should be the same. This evidence consists of a supplemental
declaration of Mr. McMullin (with exhibits A-E) dated July 15, 1999.
In addition, we note that the evidence detailed in applicant’s original
brief corresponds directly to certain evidence contained in the ‘420
application, in particular, the declaration (with exhibits 1-19) of Mr.
McMullin dated August 2, 1999, and we have considered that evidence of
record herein and made it part of this application file as well. The
evidence consists of examples of third-party packaging for cleats, and
it also updates the information contained in Mr. McMullin’s September
29, 1998 declaration regarding applicant’s sales, advertising and
market share. We have identified the dates and/or location of all the
evidence under the “Record” section of this opinion.
Serial No. 75574825
3
to show that the mark has acquired distinctiveness under Section
2(f) of the Act.
Applicant has consistently maintained the alternative
positions that SOFTSPIKES is not merely descriptive of its goods,
and that even if the mark is merely descriptive, it has acquired
distinctiveness for those goods.
When the refusals were ultimately made final, applicant
appealed. As detailed above, briefs and supplemental briefs have
been filed.
The Record
The senior attorney's evidence includes the entire results
of a Nexis database search in the SPORTS Library for "SOFT SPIKE
OR SOFTSPIKE," i.e., as one or two words, excluding the terms "BY
SOFTSPIKES" and "SOFTSPIKES, INC.," which produced 267 articles;2
Internet articles (including articles appearing on the websites
services.golfweb.com and brainerddispatch.com) with various
references to "softspikes" or "soft spikes";3 a definition of
"spikes" from the Dictionary for Golfers (1st ed. 1996) which

2 This search was conducted on June 16, 1998 and submitted with the
first Office action. Subsequent Nexis searches conducted by the senior
attorney are as follows: (1) a June 16, 1998 search (search strategy
not included) returned 566 stories and the first six were printed; (2)
a January 29, 1999 search (for “NOCAPS” “SOFTSPIKES or ‘SOFT SPIKES’”)
returned 206 stories and three selected stories from sports magazines
were printed; (3) a November 24, 1999 search (for SOFTSPIKE) returned
157 stories and four selected stories were printed; (4) a July 21, 2000
search (for “NOCAPS” “SOFTSPIKES or SOFT SPIKES”) returned 267 stories
and the first 15 were printed.
3 Submitted with first Office action.
Serial No. 75574825
4
includes a reference to "Soft spikes," that does not define the
term as a trademark or particular brand;4 printouts from the
websites of golf course facilities and/or tournament operators
stating course regulations, including footwear requirements;5 two
third-party intent-to-use applications (Ser. Nos. 75283629 and
75540992) which include "soft spikes" in the identification of
goods;6 pages from a retail golf products catalog The Goldsmith
Store featuring third-party advertisements for golf shoes and
golf cleats;7 a print article from the publication Washington
Golf Monthly discussing “Softspikes”;8 sample packaging for
applicant’s SOFTSPIKES cleats;9 a dictionary definition of
“spike” from The American Heritage Dictionary of the English
Language (Third Edition 1992);10 and a printout from the website
of Champ (champspikes.com), one of applicant’s competitors,
referring to “soft golf spikes.”11

4 Id., printed on February 16, 1999.
5 Id., printed on February 12, 1999; and additional printouts of this
nature were submitted with the Office action dated August 16, 2001.
6 Id. The senior attorney refers, for the first time in a footnote to
her supplemental brief, to an additional third-party application (Ser.
No. 75802844) which also includes “soft spikes” in the identification
of goods and states that both this third application and the ‘922
application referenced above were registered with the language intact.
However, neither the additional application nor the registrations are
of record and therefore they have not been considered.
7 Office action dated December 21, 1999.
8 Office action dated July 28, 2000.
9 Office action dated October 5, 2000.
10 Office action dated August 12, 2002.
11 Id.
Serial No. 75574825
5
Applicant’s record includes dictionary definitions of "soft"
and "spike" from Webster's Ninth New Collegiate Dictionary;12 Mr.
McMullin’s declaration (with exhibits) attesting to sales and
advertising figures, the market share for its plastic golf
cleats, the extent of use of applicant's cleats by professional
golfers and the extent of recognition of the term as a mark. The
exhibits include examples of applicant's packaging and
promotional materials; letters and notices from golf course
facilities regarding course requirements; articles from various
publications and magazines directed to golfers with references to
applicant and/or its SOFTSPIKES brand; and evidence of
recognition of the mark by competitors and/or customers.
Mr. McMullin’s supplemental declaration (dated July 15,
1999) is accompanied by exhibits including the entire results of
applicant’s own Nexis search for the one word "Softspikes (or
softspikes)" which returned 156 articles, 58 of which would not
have been covered by the initial search conducted by the senior
attorney; a letter from the publisher of the Dictionary for
Golfers; and letters to and/or from the owners of the two
applications referenced by the senior attorney. As previously
indicated, Mr. McMullin’s declaration dated August 2, 1999

12 We take judicial notice of these definitions which were recited in
applicant’s October 1998 memorandum. See 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).
Serial No. 75574825
6
attests to updated information regarding applicant’s sales,
advertising and market share, and includes examples of third-
party packaging for “alternative” golf cleats. Also of record
are website printouts of various golf course and golf tournament
regulations with footwear requirements.13
In addition, applicant submitted the declaration of its then
counsel, Vincent N. Palladino,14 with exhibits including
promotional materials from the websites of golf shoe
manufacturers (etonic.com and footjoy.com); printouts of an
Internet search summary for "softspikes"; and a survey purporting
to show that SOFTSPIKES is recognized by purchasers primarily as
a brand name. Applicant also submitted the declaration of its
president, Jon Hyman, providing a breakdown of the marketing
channels for applicant’s cleats.15
The evidence of record spans from 1994 to 2002, but is most
concentrated in the years 1996 to 1999, and we focus our
determination primarily on that period in time. All references
to the Nexis evidence in this opinion are to the initial group of
267 articles submitted by the senior attorney unless otherwise
noted as being from a different group of searches.
As brief background, applicant is the originator of the
plastic golf cleat. Brief, p. 3. Applicant first introduced the

13 Attachments B and C.
14 Resp. dated May 18, 2000.
15 Resp. dated August 15, 2000.
Serial No. 75574825
7
plastic cleats in 1992. McMullin Dec., ¶7. The product was
apparently created in response to concerns regarding the damage
to golf course greens caused by traditional metal spikes. As Mr.
McMullin states, the plastic cleats "provide traction without
penetrating the surface of golf course greens the way traditional
metal spikes do." Id., ¶2. Subsequent to applicant's
introduction of the product, other companies began marketing
plastic golf cleats as alternatives to metal spikes, and now
there “are a vast array of alternative cleats on the market."
Id., ¶3 (referring to Exh. 5-A47); and Brief, p. 3.
We turn first to the issue of genericness. The test for
determining whether a mark is generic involves a two-step
inquiry. First, what is the genus (category or class) of goods
or services at issue? Second, is the term sought to be
registered understood by the relevant public primarily to refer
to that genus (category or class) of goods or services? H.
Marvin Ginn Corporation v. International Association of Fire
Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986).
The general category of goods in this case is cleats for
sports footwear, and more particularly plastic cleats for golf
shoes. The relevant public for these goods consists primarily of
golfers and golf shoe manufacturers. Mr. Hyman states in his
declaration that applicant sells about 44% of its SOFTSPIKES
cleats to original equipment manufacturers, who install them in
Serial No. 75574825
8
golf shoes; about 17% are sold to those who operate pro shops at
private and public golf courses, who frequently install the
cleats in the shoes worn by golfers at their clubs; about 9% are
sold to golfers through retail outlets; and the remaining 30% of
sales of the cleats are made through distributors, who in turn
sell to pro shops or retailers.
The Office has the burden of proving genericness by "clear
evidence" of the public's understanding thereof. In re Merrill
Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141
(Fed. Cir. 1987). Evidence of the public's understanding of a
term may be obtained from any competent source including consumer
surveys, dictionary definitions, newspapers and other
publications. In re Northland Aluminum Products, Inc., 777 F.2d
1556, 227 USPQ 961, 963 (Fed. Cir. 1985).
In making this determination we have considered all the
evidence of record bearing on purchaser perception of the term
SOFTSPIKES, including the evidence that would be relevant to the
issue of descriptiveness and to applicant’s claim of acquired
distinctiveness.16 See In re Recorded Books Inc., 42 USPQ2d 1275
(TTAB 1997).

16 We note, as a preliminary matter, that as the senior attorney points
out, applicant’s registration on the Supplemental Register does not
preclude a subsequent finding that the mark is generic. However, the
senior attorney’s apparent contention that this registration is binding
on any subsequent determination of whether the mark is descriptive is
in error. See In re Hester Industries, Inc., 230 USPQ 797, 798 (TTAB
1986).
Serial No. 75574825
9
The record includes the following definitions of “soft” and
“spike” from Webster's Ninth New Collegiate Dictionary:
Soft a: yielding to physical pressure, ...c(1): of
a consistency that may be shaped or molded, (2):
capable of being spread..., e: lacking relatively or
comparatively in hardness.

Spike 1: a very large nail, 2a: one of a row of
pointed irons placed (as on top of a wall) to prevent
passage, b(1): one of several metal projections set
in the sole and heel of a shoe to improve traction.

Applicant argues that its plastic cleats are neither "soft"
nor "spikes," as those terms are commonly understood; and that,
moreover, the plastic cleats are "hard" not "soft." Memorandum
of October 1998, pp. 3-4. Applicant argues that none of the
dictionary definitions of "soft" or "spike" applies to plastic
cleats. Applicant also points to a letter from Titleist and
Foot-Joy Worldwide (“FootJoy”), a manufacturer of golf shoes,
stating that "SOFTSPIKES cleats and other brands of plastic
cleats with which they compete are not spikes at all." McMullin
Dec., Exh. 2.
Applicant’s arguments are not well taken. There are many
Nexis articles referring to plastic or non-metal cleats as
"spikes," as illustrated by the following examples:
Softspikes Co. was also on hand to install their
plastic spikes.
Newsday June 11, 1998

HEADLINE: More golfers taking alternative route with
spikes. Going soft helps protect knees.
The Bulletin (Bend, OR) April 30, 1998
Serial No. 75574825
10

Softspikes,...produced the first plastic spikes in
1993....
Sports Illustrated September 29, 1997

The non-metal spikes are required there.
Pittsburgh Post-Gazette July 20, 1997

The plastic spikes were not invented until April, 1994.
The Providence Journal Company-Bulletin May 28, 1997

We also note that most of applicant’s examples of third-
party packaging for "alternative" cleats refer to the goods at
least somewhere on the packaging as "spikes." For example, the
package for TRED-LITE Plastic Golf Cleats states, "Patented
spikes provide up to 60% better traction." McMullin Dec. (dated
August 2, 1999), Exh. 4.
Furthermore, non-metal cleats or "spikes" are often
described as "soft," as shown in the following examples: "Soft
cleats have their virtue, but players should have a choice." The
Atlanta Journal and Constitution June 14, 1998; "Terrace Hills in
Altoona and Briarwood in Ankeny allow soft or metal spikes." The
Des Moines Register May 4, 1998; "Course superintendent Jim
Johnson said The Rail will require soft, non-metal spikes, for
all players...." The State Journal-Register (Springfield, IL)
August 30, 1997; “Softer spikes...don't solve everything."
Pittsburgh Post-Gazette February 3, 1999; (group of 566).
As applied to plastic cleats, the term "soft" falls within
the dictionary definition of the term provided by applicant as
Serial No. 75574825
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"lacking relatively or comparatively in hardness." It can be
seen from the following Nexis excerpts that the term "soft
spikes," as a whole, is used in this comparative sense to
contrast the plastic or non-metal spikes with the conventional
"hard" or metal spikes:
Golf course operators saw less wear and tear in the
clubhouse flooring...with the switch from metal to
soft spikes.
The Patriot Ledger (Quincy, MA) February 14, 1998

Another warning: While the green fees are
reasonable..., be ready to pay $5 to have your spikes
changed from metal to soft spikes.
The Boston Globe August 28, 1997

"I bet we sell 75 packages of soft spikes for every
one package of hard spikes," Bunch said.
Charleston Daily Mail July 9, 1997

The movement toward replacing metal spikes for
golfers with the plastic, or soft spikes, is sweeping
the sport....
The Providence Journal-Bulletin May 28, 1997

There are several kinds of soft spikes, which screw
into a golf shoe in the same fashion as the hard
spikes. Instead of the single point, the traction is
provided by groups of plastic knobs or triangles.
The Virginian-Pilot (Norfolk, VA) December 15, 1996

Their new golf shoes, involving five patents, have
spikes that slide in on a bar, making it easier to
switch from soft spikes to hard spikes.
Chicago Tribune May 12, 1996

When it comes to traction, many of the best players
in the world still prefer metal golf spikes over soft
golf spikes....
golftransactions.com

Serial No. 75574825
12
In fact, there are numerous Nexis articles of record, as
shown in the examples above and those which follow, where “soft
spikes” is used to designate the generic name for any plastic or
“alternative” golf cleats (emphasis added):
Metal spikes are not allowed at Otter Creek. Soft
spikes, the national rage are in. If you arrive in
plenty of time for your tee time with metal spikes, a
member of the Otter Creek staff will convert your
shoes to soft spikes.
The Des Moines Register May 4, 1998

The rules: Beware. Southerness is a soft spike
facility. The pro shop staff will switch over those
who wear metal.
The Atlanta Journal and Constitution April 3, 1998

Last year, 350 courses around the nation prohibited
metal spikes. ... Country club pros are singing their
praises, agronomists are celebrating their arrival
and superintendents are amazed at the minimal impact
soft spikes have on their greens. ... "Basically a
metal spike catches the grass and pulls it up. We
don't get any of that with the soft spikes."
Morning Star (Wilmington, NC) July 23, 1997

The Golf Course Greens Superintendents of America
have already endorsed soft spikes for all of their
tournaments and a number of clubs...are looking in
that direction. At first, I had my doubts about the
soft spike, but after using them in both good and bad
weather, I'm ready to put my name on the dotted line.
Sunday Telegram (Worcester, MA) December 15, 1996

The Match-Play was conducted last week at Oak Ridge
Country Club, the first club to require the use of
soft spikes instead of the traditional metal spikes.
... Avoiding spike marks on the greens was just one
of the reasons Oak Ridge decided to go to the soft
spikes.
Star Tribune (Minneapolis, MN) July 16, 1995

For all practical purposes, I'm not allowed to wear
steel golf spikes in my shoes. Courses that still
Serial No. 75574825
13
permit them are getting fewer and fewer. The growing
number of ones that don't will outfit your old shoes
with a set of so-called soft spikes - for a fee, of
course.... What's more, the soft spikes don't
puncture anything.
Pittsburgh Post-Gazette February 3, 1999; (group of
566)

The people who invoke that “purity” argument are the
same ones who whined about yardage markers, gallery
ropes, metal drivers, the “hot” ball, cavity-backed
irons, the long putter and soft spikes.
Sports Illustrated (February 9, 1998); (group of 206)

Applicant argues that the majority of the Nexis articles are
by authors who are not identified as buyers of cleats or,
according to applicant, even as golfers. Noting that virtually
all of the articles appear in publications of general
circulation, applicant argues that the articles do not indicate
whether or not the author plays golf or buys golf cleats and,
thus, in applicant's view, the articles do not show what buyers
of golf cleats understand the word SOFTSPIKES to represent.
Brief, pp. 14-15. Applicant contends that, in contrast, the
articles in magazines directed to golfers (such as Golf Magazine
and Golf Digest) refer properly to applicant's SOFTSPIKES mark
and that those authors are more likely to be purchasers of golf
cleats. Id., p. 15.
By applicant's own figures, a large percentage of its cleats
are sold to ultimate consumers, i.e., golfers. It is not
significant that applicant sells its cleats through distributors
to retail stores rather than directly selling them to the public.
Serial No. 75574825
14
The Nexis articles, most if not all of which appeared in the
"sports section" of the publications, are reporting on subject
matter of interest to golfers, and they would be read by golfers
or those who are interested in golf. The usage of the term in
these general circulation publications is evidence of exposure of
the term to this group of relevant purchasers or potential
purchasers and reflects their understanding of the term's
significance.
Furthermore, it can be seen from many of the Nexis articles
as well as the golf course websites that “soft spikes” or
“softspikes” is used generically in reporting the shoe and/or
spike requirements of the courses, for example:
Country Land Golf Club (semi-private) ... Soft
spikes required.
...
Champions Club of Atlanta (semi-private) ... Soft
spikes or spikeless required.
The Atlanta Journal and Constitution June 5, 1998

Rehoboth Country Club
Spikes: Soft spikes only
...
Richmond Country Club
Spikes: Soft spikes only
The Providence Journal-Bulletin April 8, 1998

NEMACOLIN WOODLANDS RESORT & SPA
Rules of Play
Please note: We are a soft spike facility.
nwlr.com

Laurel Ridge is soft-spike only course. Come in an
hour before tee time and we'll replace your metal
spikes with soft spikes for $5.
laurelridgeclub.com
Serial No. 75574825
15

Important Announcement: Effective January 1, 1998,
the Kings Bay Golf Club will become a soft-spikes
only facility. No metal spikes will be permitted
beyond this date.
eagnet.com

LPGA International Golf Course
Play Attire: Collar shirts,... no cut-off shorts,
softspikes only.
daytonavisit.com
Bridlewood Golf Club
“soft spike” facility
bridlewoodgolf.com

Golf Course Directory
SPRING VALLEY GOLF COURSE INC.
Driving range, rental carts, softspikes only....
TARA HILLS GOLF COURSE
Pull and motorized cart rentals, soft spikes
required.
iowan.com

The senior attorney has also submitted a printout from the
website of CHAMP (champspikes.com) showing that MacNeill
Engineering Worldwide, a competitor of applicant, is producing
its own “soft golf spikes.” As described on the website:17
CHAMP Scorpion Spikes™ are soft golf spikes that
bring a heightened level of dependability to the feet
of every golfer.
...
FAQ
Champ Products/MacNeill Engineering
How many styles of soft golf spikes does Champ offer?
Champ offers four styles of alternative golf
spikes.... Also in this category are the Champ Edge,
Tred-Lite and Soft Play.

17 As the senior attorney points out, an additional reference to “soft
golf spikes” by the president of MacNeill Engineering appears in the
article “Soft spikes footed for success” on the website
services.golfweb.com. We note, however, that the article also contains
a reference to “Softspikes” as a brand name along with a link in the
article to more information on “Softspikes.”
Serial No. 75574825
16
champspikes.com

The senior attorney's additional evidence of asserted third-
party use is not persuasive. The advertisement by one of
applicant's competitors appearing in the catalog The Golfsmith
Store states: "Men's Ashworth Traditional leather upper
lightweight, MTI convertible outsole with multi-traction insert.
Removable, breathable footbed with soft spikes." That same
advertisement, however, also includes the statement "Extra
Softspikes® Free" in a clear reference to SOFTSPIKES as a mark.
Thus, the use in a generic manner could be viewed as misuse of
applicant's mark.
The senior attorney notes that an article by the Director of
Golf at Augusta National Golf Club includes a reference to "soft
spike tread pattern" as a generic term in describing the product
of one of applicant's competitors, i.e., Cotswold Golf Shoes.
(The National News 1998 Summer Issue from the website
nationalgolf.com.) While this may be an example of generic use,
it is not use by applicant's competitor.
An article from the Atlanta Journal and Constitution (May 9,
1999; group of 157) refers to a golfer who wears "sandals with
Softspikes made by a company called Bite." However, it is
unclear whether the article is referring to Bite as the producer
of the sandals or of the cleats. Furthermore, this appears to be
trademark use of SOFTSPIKES rather than generic use.
Serial No. 75574825
17
The senior attorney also points to an article from Sporting
Goods Business October 1996, which references three manufacturers
of golf shoes who, according to the senior attorney, “use the
term ‘softspikes’ in relation to the spikes sold on their shoes.”
However, in two of the references (i.e., Etonic and Reebok),
“Softspikes” is used in the manner of a trademark, rather than as
a generic term (“[Etonic] will also add two new Softspike models
to its successful...line”; “Reebok will...continue its
Convertible collection of footwear sold with Softspikes in
place....”; and “Reebok Golf will offer Softspikes to retailers
in all of its spike shoes upon request.”). To the extent that
these examples actually constitute use by these entities, we
would have to view them as acknowledging rights in SOFTSPIKES as
a mark for cleats emanating from applicant. Etonic was licensed
by applicant to manufacture and market SOFTSPIKES brand golf
shoes (McMullin Dec., ¶2, Exh. 1); and at one time, applicant had
an agreement with Reebok to supply SOFTSPIKES cleats for use in
Reebok shoes (Id., ¶6). The third product mentioned in the
article, “Tred-Lite soft spikes,” refers to MacNeill
Engineering’s cleats noted previously and is not use by a
separate competitor.
We also note the two intent-to-use applications containing
"soft spikes" in the identifications of goods, Serial No.
75283629 for the mark TRACTOR for "non-slipping devices for
Serial No. 75574825
18
athletic shoes, namely, soft spike"; and Serial No. 75540992 for
the mark TURFDOGS (stylized) for "solid and multi-colored soft
spikes for golf shoes sold in a package." As applicant points
out, the owner of the TRACTOR application agreed to stop using
"soft spikes" to describe his products and the owner of the
TURFDOGS application acknowledged that the reference was
inadvertent. Furthermore, the applications are not evidence of
actual use of the term by these third parties. In fact, in
actual use, the TURFDOGS product, as shown on its packaging, is
described as "Plastic Golf Cleats."
Nor do we find the dictionary evidence from The Dictionary
for Golfers (1st ed. 1996) submitted by the senior attorney to be
clear evidence of generic use of "soft spikes" for plastic
cleats. The dictionary includes the following reference to "Soft
spikes" under the entry for "spikes": "[T]he pointed, usually
metal, objects built into the soles of golf shoes that enable the
golfer to get a firm stance. Soft spikes are being used at many
courses today, and serve the same purpose as metal spikes."
However, applicant has submitted a letter from the publisher of
this resource stating that the reference to "soft spikes" will be
deleted from the next edition of the dictionary and/or that the
dictionary "will use an appropriate term" to refer to the subject
matter of the definition.
Serial No. 75574825
19
The senior attorney correctly states that the right of
registration is to be determined at the time of examination.
However, we disagree with her contention that corrective action
taken in response to evidence of generic usage is of no
evidentiary effect. While an agreement to stop using a term is
not in itself an acknowledgment of any rights in the mark, at the
same time, this evidence raises a question as to the perception
of the term by these entities and whether they may have been
mistaken about their understanding of the term's meaning.18
Nevertheless, the senior attorney has presented evidence
showing significant use of “soft spikes” as a generic term for
plastic golf cleats. On the other hand, however, there is
substantial competing evidence of record demonstrating use and
recognition of SOFTSPIKES as a mark for applicant's plastic
cleats.

18 The senior attorney also refers to an article in Washington Golf
Monthly, Winter 2000 issue by David R. Sands titled "The Softest Touch
in Golf" wherein the author interviews one of the founding partners of
applicant, Bill Ward, who discusses applicant’s marketing strategy with
regard to its golf cleats. However, the statement the senior attorney
attributes to Mr. Ward ("Softspikes has become so popular that it has
become the shorthand name for any alternative-cleat product"), was
actually made by the author of the article, and not Mr. Ward. We note,
as the senior attorney points out, that the packaging for applicant's
BLACK WIDOW cleats shows SOFTSPIKES in comparatively small lettering;
however, we do not view this as evidence that applicant has in fact
altered its marketing strategy as the senior attorney contends. The
term “Softspikes” is still prominently displayed as a mark on the
package and, furthermore, it is well settled that more than one mark
may be used in connection with a product without detracting from the
source-identifying function of each one.
Serial No. 75574825
20
The record is replete with newspaper and magazine articles
wherein the term SOFTSPIKES is used as a mark, or at least in the
manner of a mark, to refer to applicant and its brand of plastic
cleats. The term frequently appears in these articles with an
initial capital letter which is consistent with trademark use,
and in many instances it is preceded or followed by generic
terminology for the goods, as shown by the following examples
(emphasis added):
A special shoe bottom has eliminated threads for
spikes. Only a quarter turn is required to remove
and replace the locking spikes. The product will be
incorporated into Etonic, Nike and Florsheim
shoes.... Both Champ Tred-Lite and SoftSpikes cleats
will be available in this system.
The Boston Herald June 14, 1998

Back Creek is a non-metal spike facility, and the
flawless consistent putting surfaces are a testament
to the benefits of Softspikes....
The Washington Times May 7, 1998

According to the Darrell Survey, about 80 percent of
the LPGA players are using Softspikes.
The Atlanta Journal and Constitution April 25, 1998

Notebook: Els started wearing Softspikes three weeks
ago at Bay Hill. "I tried it out and I'm quite
comfortable," he said. "I haven't slipped yet. It's
much more comfortable on your feet."
Milwaukee Journal Sentinel April 8, 1998

David Ogrin is among a growing number of PGA Tour
players switching to Softspikes--for comfort and
improved greens. ... Fred Funk, Davis Love
III...all players high on the leaderboard--are among
others wearing the alternative spikes....
The Atlanta Journal and Constitution October 4, 1997

Serial No. 75574825
21
Going spikeless. One manufacturer's sales rep
estimated 33 of the 144 players in The Sprint
International field are using Softspikes. There no
doubt [sic] are others using another name brand of
spikeless grippers on their golf shoes. ... Last
week at Hartford, 45 players wore Softspikes.
The Denver Post August 2, 1997

Around the green: Plastic cleats are the rage of the
Senior Tour. At the PGA Seniors' Championship, 63 of
the 114 players in the field wore the Softspikes
brand of non-metal spikes on their golf shoes....
USA TODAY April 21, 1997

In a poll in the September issue of Golf Digest,
readers were asked if they had tried Softspikes or
any of the new alternative spikes on their golf
shoes.
The Press-Enterprise (Riverside, CA) November 3, 1996

Golfers will be required to wear shoes with non-metal
spikes, such as Softspikes.
Milwaukee Journal Sentinel February 15, 1996

Twitty Likes Softspikes
So what's another benefit to most of the Senior Tour
players wearing Softspikes? Howard Twitty's not
liable to get his foot speared by a metal spike
through his foot.
The Atlanta Journal and Constitution May 9, 1999
(group of 157)

Do the plastic grips known by various brand names,
including Softspikes and Tred-Lite, keep golfers from
slipping?
Chicagoland Golf April 1995 (McMullin Dec. September
29, 1998, Exh. 5-A24)

[Senior PGA Tournaments] Thirty-one players wore non-
metal cleats (20 Softspikes and 11 TurfMates) at the
Northville Long Island Classic; 36 went spikeless (31
Softspikes and five TurfMates) at the Bank of Boston
Senior Classic;....
Golfweek (Id., at A38)

Players will not be allowed to wear traditional steel
or ceramic "nails" on their golf shoes.... [They
Serial No. 75574825
22
will have to use] any one of the alternative
"spikeless" cleats that are on the market, e.g.,
SoftSpikes®, Gripper Golf Cleats™ or Treadlites™.
Colorado Golfer 1996 Annual Guide (Id., at A43)

Tim Bettenga, president of Smart Spikes,...thought
there had to be a better design. ... "We are two to
three times more durable than Softspikes or other
plastic spikes."
Golf Product News January/February 1998 (Id., at A47)

Credit Softspikes for taking the trend all the way to
the boom. But don't confuse the spikeless or
alternative spike with the brand name, like
RollerBlade is to in-line skating or Kleenex to
facial tissue. Softspikes is the leader and
innovator of the alternative cleat.
PGA Tour Partners March/April 1998 (Id., at A51)

RaymondFloyd – SoftSpikes
...RAYMOND FLOYD WALKS TO SENIOR CHAMPIONSHIP IN
SOFTSPIKES CLEATS. Wearing Softspikes Extra Traction
plastic cleats, Raymond Floyd shot a final round 71
to finish two strokes ahead of Hale Irwin to win. . .
rayfloyd.com (Resp. dated May 18, 2000, Exh. 1)

In addition, the golf course notices and website printouts
advising the public of the metal spike or "no spike" ban, while
often referring to a “spikeless policy” or the requirement for
“non-metal spikes,” “spikeless” cleats or “spikeless
alternatives,” in many instances specify SOFTSPIKES brand of
cleats as acceptable footwear:
In addition, beginning January 1, metal spikes will
not be allowed on the golf course. All players must
have "Softspikes" cleats in their golf shoes; tennis
shoes or other flat-soled rubber shoes will be an
acceptable alternative.
The Valley Club of Montecito November 1, 1995

Serial No. 75574825
23
NON-METAL SPIKE POLICY
Pinnacle Country Club has adopted a non-metal spike
policy. ... Examples of acceptable footwear include
flat soled shoes, tennis shoes, Soft Spikes or Tred-
Lites, professional teaching shoes, and spikeless
golf spikes. ...
pinnaclecc.com

Men and ladies are required to wear appropriate golf
attire. Teton Pines is a metal spikeless golf
course. A nominal fee will be charged, per person,
for Soft-Spikes conversion.
tetonpines.com

Spikeless Shoes.
Golfers are required to wear Softspikes or other
approved non-metal spikes. Metal and ceramic spikes
are prohibited.
stonewatergolf.com

ICPA’s Golf Tournament
Disney’s Eagle Pines Golf Course
Walt Disney World Golf Courses are spikeless
facilities. Metal spike alternatives, such as
SoftSpikes, Black Widows, Q-Lok, etc. are permitted.
icpa-hq.com

Similarly, many of the Nexis articles posting golf course
requirements and tournament regulations show that the SOFTSPIKES
brand of cleats is encouraged, and in some instances apparently
required, for play, as examples: “Raspberry Falls is absolutely
gimmick-free, a rarity in today's world of target-golf tedium.
Local knowledge: Bring your Softspikes. Raspberry Falls is a
non-metal facility.” The Washington Times March 26, 1998; “With
Softspikes mandatory, the superb tru-rolling greens might be
Chantilly's primary selling point." The Washington Times May 22,
1997; “Reedsburg Country Club opened Tuesday and joined the list
Serial No. 75574825
24
of public courses requiring Softspikes." Wisconsin State Journal
April 2, 1997; “All of the participants in this week’s senior
tournament at Sugar Valley Country Club will be required to wear
SoftSpikes.” The Dayton Daily News September 8, 1996; “There’s a
growing ‘soft’ spot out there for a product called Softspikes and
its many competitors. ... The Illinois PGA has jumped on board,
requiring Softspikes at two of its events this year.” Chicago
Tribune May 29, 1996.
It is clear that applicant’s SOFTSPIKES cleats have received
widespread publicity and public exposure. It is also clear that
applicant has enjoyed considerable success with its SOFTSPIKES
cleats. From 1994 to 1998, sales of cleats under the mark
exceeded $137 million, totaling $65.8 million in 1998 alone, and
amounting to the sale of approximately 500 million cleats over
those years. As of 1999, applicant’s SOFTSPIKES cleats were the
leading brand of alternative cleats, with a 50% share of the
market for such products.
Applicant’s advertising expenditures have been substantial,
as well, exceeding $9.5 million for that period. Applicant has
advertised and promoted its goods through magazines, including
national magazines such as Sports Illustrated, and in
publications directed to golfers, through television
advertisements (on the Golf Channel) as well as through its
website and other promotional materials. In addition, applicant
Serial No. 75574825
25
has promoted the mark by sponsoring golf tournaments and charity
events where the mark is displayed on signs, banners and
promotional items. For example, applicant sponsored the ”Rally
with Golf for Women Magazine For a Cure” amateur golf program in
1997 (supporting the Susan G. Komen Breast Cancer Foundation)
which had 75,000 participants. Applicant supplied more than 2.5
million cleats for use in golf tournaments and charity events by
the end of 1998.
Applicant has also received unsolicited acknowledgement of
SOFTSPIKES as a mark from at least one competitor:
Tim Bettenga, president of Smart Spikes,...thought
there had to be a better design. ... "We are two to
three times more durable than Softspikes or other
plastic spikes."
Golf Product News January/February 1998 (McMullin
Dec., Exh. 5-A47)

Moreover, a large segment of applicant’s market comprises
golf shoe manufacturers, and major manufacturers in the field
have acknowledged the value and goodwill associated with the
Softspikes mark. Applicant submitted a letter from FootJoy, the
leading manufacturer of golf shoes, which states:
For many years, our shoes came equipped with metal
spikes. In the past few years, we have also equipped
our shoes with alternatives to metal spikes. These
alternatives are cleats sold under brand names such
as SOFTSPIKES and Turfmates. We have always
respected the Softspikes trademark as the trademark
for Softspikes, Inc.'s brand of alternative
cleats....

Serial No. 75574825
26
FootJoy sells its shoes equipped with SOFTSPIKES cleats and
has purchased 65 million SOFTSPIKES cleats for use in its shoes.
FootJoy also prominently features SOFTSPIKES cleats in the
advertising for its golf shoes on its website (footjoy.com):
“SOFTSPIKES® XP PLUS™ CLEATS – the #1 alternative cleat in golf –
are automatically installed in all FootJoy golf shoes.” Another
leading golf shoe manufacturer, Etonic Worldwide Corporation,
obtained a license from applicant to use SOFTSPIKES as a mark for
golf shoes and to use the mark in the advertising and promotion
of its shoes.
In addition, applicant’s SOFTSPIKES cleats have dominated
professional golf tours. Its cleats have been widely used by
professional golfers in major tournaments such as the Masters,
the US Open, and the PGA Championship. Mr. McMullin reports that
by the end of the 1997 golf season, more than 60% of players on
all three American professional tours (PGA, LPGA and Senior PGA)
wore applicant’s SOFTSPIKES cleats, and that in 1999, for
example, 60% of players in the Senior PGA Tour, and 72% of
players in the LPGA Tour, used SOFTSPIKES cleats.
We also note that there are no instances of improper usage
of SOFTSPIKES by applicant on its packaging or in its
advertisements and promotional materials. Further, there are a
number of competing brands of cleats on the market, and they
consistently use different terminology on their packaging to
Serial No. 75574825
27
describe the cleats. For example, Champ’s Tred-Lite product is
described as “plastic golf cleats”; Green Keepers brand is
described as “spikeless golf cleats” (“Durable Polymer
Construction”); the Nike product is described as “green-friendly
spike alternatives”; Gripper Golf Cleats are described as “the
ultimate spikeless alternative”; and the Sun Spikes product is
described as “polymer golf spikes.”
We find that the substantial number of newspaper and
magazine articles showing proper trademark use of SOFTSPIKES19
combined with the evidence showing recognition of SOFTSPIKES as a
mark creates a mixed record which at least raises a doubt
regarding genericness. See Merrill Lynch supra, 4 USPQ2d at 1143
(noting that the evidence showed “recognition in a substantial
number of publications that the source of the CASH MANAGEMENT
ACCOUNT” was the applicant, the Court found that “The mixture of
usages unearthed by the NEXIS computerized retrieval service does
not show, by clear evidence, that the financial community views
and uses the term CASH MANAGEMENT ACCOUNT as a generic, common
descriptive term for the brokerage services to which Merrill
Lynch first applied the term.”)

19 We disagree with the senior attorney’s contention that the vast
majority of the Nexis articles demonstrate generic use. From our
review of the most comprehensive group of searches, i.e., the senior
attorney’s initial group of 267 articles supplemented by the 58
articles supplied by applicant, the number of articles reflecting
generic use and those reflecting trademark use are closer to even.
Serial No. 75574825
28
We cannot conclude from the evidence of genericness
presented by the examining attorney, in the face of applicant's
substantial showing that SOFTSPIKES is recognized as an indicator
of source, that SOFTSPIKES would be perceived by the relevant
public primarily as a generic term for applicant's plastic golf
cleats.20
Although the record presents a close case, any doubt
whatsoever on the matter must be resolved in applicant's favor.

20 Having made this determination, we have given little weight to
applicant's survey which has major deficiencies and is not particularly
useful to show that SOFTSPIKES is recognized as a mark by the relevant
public as a whole. This was a telephone survey conducted by Bruno and
Ridgeway Research Associates, Inc. on May 2-9, 2000. The sample
consisted of a total of 50 individuals from six states who were
responsible for ordering the products for golf shops located at courses
which require players to wear non-metal spikes. The 50 respondents
were divided into two groups of 25 respondents. Each group was read a
list of names for various golf products, some of which were brand names
and others of which were common names. The list presented to one group
included “Softspikes” and the other list included “plastic cleat.”
After each name in the list was read, respondents were asked whether it
is the name of a type of golf product, a brand name of a specific
product, or both. They could also respond “no opinion.” The results
show that 16% of respondents identified Softspikes as a type of
product; 48% identified it exclusively as a brand; and 36% identified
it as both a type of product and a brand. The fact that 48% identified
“Softspikes” as a brand name would be sufficient to raise a doubt as to
whether the mark is generic, but the sample size is so small and the
universe is so narrowly defined that the results are not meaningful.
In particular, even if we assume that the selected universe for the
survey, i.e., golf shops, identifies a discrete subset of purchasers
for applicant's golf cleats, that subset is very small, representing
only 17% (by applicant's own figures) of applicant's entire market.
And with only 25 participants in the test group, the results cannot be
generalized to even this limited subset of the relevant public as a
whole. Also, it is unclear why the respondents were given the option
of answering that the term is both a brand name and generic.
Nevertheless, because this category of responses is subject to more
than one interpretation, we do not believe it is appropriate to combine
these responses as applicant and the senior attorney, respectively,
would have us do, either with those who identified the term exclusively
as a mark or with those who identified the term as generic.
Serial No. 75574825
29
See In re American Academy of Facial Plastic and Reconstructive
Surgery, 64 USPQ2d 1748, 1757 (TTAB 2002).
On the other hand, there is no doubt, based on the
dictionary definitions, and the Nexis and Internet evidence
discussed above, that the term SOFTSPIKES is merely descriptive
of applicant’s plastic golf cleats. The question with regard to
descriptiveness is whether the term immediately conveys knowledge
of a quality, characteristic, function, feature, purpose or use
of the goods or services with which it is used. In re Gyulay,
820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). At a minimum, the
evidence shows that the comparative softness of plastic spikes as
opposed to the hard, metal spikes describes a significant and
desirable characteristic of applicant’s plastic golf cleats.
We turn then to the question of whether SOFTSPIKES has
acquired distinctiveness for applicant’s goods during the
relevant time period. In determining whether a mark has acquired
distinctiveness, the Board may examine advertising expenditures,
sales success, length and exclusivity of use, unsolicited media
coverage, and consumer studies.21 In re Steelbuilding.com, 415
F.3d 1293, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005). It is
applicant’s burden to prove that its mark has acquired

21 For the reasons stated earlier, applicant’s survey is not persuasive
on the question of whether the mark has acquired distinctiveness.
Serial No. 75574825
30
distinctiveness. See Yamaha International Corp. v. Hoshino Gakki
Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1006 (Fed. Cir. 1988).
As we noted earlier, applicant began using the term
SOFTSPIKES in connection with plastic cleats in 1992, and
applicant has marketed its cleats with significant commercial
success since that time, as indicated by its substantial sales
(exceeding $137 million from 1994 to 1998, amounting to the sale
of approximately 500 million cleats) and advertising expenditures
(exceeding $9.5 million for that period), and its leading
position in the market. The record shows that the term is used
by applicant exclusively in the manner of a mark, and that it has
been extensively promoted by applicant as such.
Furthermore, applicant’s use of the mark has been at least
substantially exclusive use during that time. The record
contains one example of generic use of a similar term by a third
party, Champ, but the actual extent of that third party’s use is
not clear. We note, for example, that the Champ product is
described on its packages for the goods not as “soft spikes,” but
rather as “plastic golf cleats” and “the golf spike alternative.”
The record shows that applicant’s SOFTSPIKES cleats have
been the subject of widespread, unsolicited publicity in the
national media, resulting in significant exposure of the term to
the public as a mark. In addition, applicant has demonstrated
recognition of SOFTSPIKES as a mark by at least one competitor,
Serial No. 75574825
31
by two of the largest manufacturers of golf shoes, and moreover,
by the wide endorsement of professional golfers who have used
SOFTSPIKES cleats during those years in major golf tournaments.
In view of the foregoing, we find that applicant has met its
burden of establishing that SOFTSPIKES has acquired
distinctiveness as a mark for its golf cleats.
Decision: The refusal to register under Section 2(e)(1) of
the Trademark Act on the ground that (1) the mark is generic is
reversed; (2) the mark is merely descriptive is affirmed.
However, the senior attorney’s refusal to accept applicant’s
claim of acquired distinctiveness under Section 2(f) is reversed.
The application will proceed to publication under Section 2(f).