Taylor Made Golf Co., Inc.v.R & M Golf Co.

Trademark Trial and Appeal Board

Mar 4, 1999

No. 91100296 (T.T.A.B. Mar. 4, 1999)

Hearing: Paper No. 29
May 6, 1998 TDC/RS
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MARCH 4, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Taylor Made Golf Company, Inc.
v.
R & M Golf Company dba Triumph Golf Company
_____
Opposition No. 100,296
to application Serial No. 74/640,224
filed on March 1, 1995
_____
Thomas C. McDonough of Altheimer & Gray for Taylor Made
Golf Company, Inc.
Larry L. Coats of Rhodes, Coats & Bennett, L.L.P. for R & M
Golf Company dba Triumph Golf Company
______
Before Simms, Hohein and Hairston, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Taylor Made Golf Company, Inc., a Delaware corporation,
has opposed the application of R & M Golf Company, doing
business as Triumph Golf Company, a Florida corporation, to
register the mark BALLOON SHAFT (“SHAFT” disclaimed) for
Opposition No. 100,296
2
golf shafts and golf clubs.1 In the notice of opposition,
opposer asserted that since 1979 it has been making, selling
and distributing golf equipment including golf clubs; that
opposer’s clubs have always featured a distinctive
construction and performance; that opposer’s clubs are among
the most popular clubs used by professional and amateur
golfers; that since December 1994 opposer has been using the
mark BUBBLE for golf clubs and golf club shafts and that
opposer has developed widespread goodwill and recognition of
that mark; that opposer owns a registration of this mark for
golf clubs and golf club shafts (Registration No. 1,926,587,
issued October 10, 1995); that opposer has also used the
mark BUBBLE SHAFT on its golf clubs and golf club shafts;
and that applicant’s mark BALLOON SHAFT so resembles
opposer’s previously used and registered mark BUBBLE as to
be likely to cause confusion, to cause mistake or to
deceive. In its answer applicant has denied the essential
allegations of the notice of opposition.
Each party has taken testimony and submitted a notice
of reliance, opposer having relied upon certain portions of
a discovery deposition of applicant’s president, while
applicant has relied upon dictionary definitions of the

1 Application S.N. 74/640,224, filed March 1, 1995, based upon
applicant’s bona fide intention to use the mark in commerce
under Section 1(b) of the Act, 15 USC §1051(b).
Opposition No. 100,296
3
words “balloon” and “bubble.” The parties have submitted
briefs and an oral hearing was held.2
Opposer’s Record
According to the testimony of Mr. George Montgomery,
opposer’s president and chief executive officer, opposer
introduced the BUBBLE golf clubs in October 19943 with the
first interstate shipment being made in December of that
year. Mr. Montgomery testified that opposer’s registration
of the mark BUBBLE for golf clubs and golf club shafts was
valid and subsisting, and that the allegation of opposer’s
ownership in the notice of opposition was true. Montgomery
dep., 36. Opposer uses the mark BUBBLE with its other
trademarks, such as BURNER and CHAMPAGNE BURNER. The BURNER
BUBBLE mark, for example, identifies a line of metal woods.
Mr. Montgomery testified that the BUBBLE or BUBBLE SHAFT
clubs account for approximately 90% of opposer’s sales. In
1996, opposer spent around $8 million on advertising and
sold over 1.6 million shafts under the mark BUBBLE. Opposer
advertises its goods in magazines and trade publications, on
television, by means of trade shows and on the Internet

2 While opposer’s counsel objected to the alleged leading nature
of the questions posed to applicant’s witness, opposer did not
reiterate this objection until its reply brief. Applicant,
therefore, had no opportunity to argue this point in its brief.
We consider these objections to have been waived.
Also, on page five of its reply brief, opposer has made
reference to certain of applicant’s interrogatory answers.
Suffice it to say that these responses are not of record in this
case.
Opposition No. 100,296
4
computer network. Opposer’s goods are sold through golf
specialty retailers including “green grass” pros and in golf
discount stores.
Opposer has made of record copies of articles wherein
opposer’s pleaded mark has received media attention.
According to Mr. Montgomery, in 1995, more tournaments were
won using the BURNER BUBBLE driver than any other.
Opposer’s exhibits include copies of federal court
orders involving opposer’s attempts to protect its
intellectual property, including its patents and trademarks
with respect to its golf clubs. Pursuant to an agreement
between opposer and certain third parties, for example, a
federal district court in the Northern District of Ohio
entered a permanent injunction banning the use by the
defendants of the mark BALLOON. A federal district court in
South Carolina also entered an order enjoining third-party
use of such marks as SCORCHER, BOMBER, BUMBER and BALLOON.
Opposer has also made of record a copy of a letter from the
U.S. Customs Service indicating seizure of third-party golf
clubs bearing the marks BALLOON SHAFT and TOUR MADE, stated
to be confusingly similar to BUBBLE SHAFT and TAYLOR MADE.
See opposer’s Exhibit 5.
With respect to the marks involved in this case, Mr.
Montgomery testified, at 33:

3 The evidence shows that opposer frequently uses the term
“SHAFT” with the mark BUBBLE on the goods.
Opposition No. 100,296
5
[T]he word “balloon” and the word
“Bubble” are similar in suggesting
a spherical shape filled with air
that is meant to suggest the shafts
are different in shape from other
golf club shafts, and that they’re
so similar in meaning that they
would confuse consumers.
In this regard, the exhibits of record show that
opposer’s shafts have an assertedly distinctive narrowing at
the top of the shaft immediately below the grip.
Opposer’s record also consists of reliance upon certain
discovery deposition responses of applicant’s president and
majority owner, Matthew Adams. Among other things, he
testified that, while opposer’s mark BUBBLE or BUBBLE SHAFT
is not suggestive of opposer’s goods, applicant’s mark
BALLOON is suggestive of the shape or contour of applicant’s
golf clubs.
Applicant’s Record
According to the testimony of Mr. Julian Bunn, III, the
president of a golf retail business (Carolina Custom Golf),
and who has been in golf retailing for 20 years, a set of
opposer’s golf clubs costs between $1200-$1500 whereas a set
of applicant’s clubs retails for between $100 and $500. Mr.
Bunn testified that opposer’s golf clubs are considered top
of the line. The average cost of applicant’s BALLOON SHAFT
wood, on the other hand, is between $59 and $79 retail. Mr.
Bunn also testified that golf purchasers are generally
careful and discriminating and are not impulse purchasers.
Opposition No. 100,296
6
He further testified that the term “BALLOON” as used on
applicant’s clubs connotes a “bulging out” of the shaft.
Q. Do you understand the function of the
bulge?
A. Of this bulge (indicating)?
Q. Yes
A. Yes, sir.
* * * * * * * *
Q. Can you explain that to us?
A. Yes, sir. This is an overlay that’s
put on the shaft to enable the butt
section of the shaft to be stiffer so
that it’s more tip flexible, enabling
the ball to get airborne a little
quicker, which is better for the
clientele that Triumph sells its golf
clubs to. Tends to be not an excellent
golfer, generally.
Q. Are there other manufacturers that
manufacture a golf shaft that includes a
bulge or a swell in it?
A. Oh, absolutely. Bulge and swells are
everywhere right now.
Q. For example, does Spalding make a
shaft that has a bulge or swell?
A. They do.
Q. And can I ask you: Do you know what
Spalding calls its bulging shaft?
A. It’s called Muscle.
Q. Can you identify a few more other
manufacturers that make shafts that have
a bulge or a swell in them?
A. Yes, sir. The Cobra IQ system is in
the –- the iron has a swell in the tip
section. The Lynx Flare has a swell in
it, in the lower section. The Goldwin
Large Butt has a swelling in the butt
section, extreme butt, this part
(indicating).
And then there are a lot of shaft
manufacturers that are making bulged
shafts of one variety or other with
bulges—-in some cases, as many as three
bulges in a shaft.
Bunn dep., 20-21. Finally, Mr. Bunn testified that there
Opposition No. 100,296
7
have been no instances of actual confusion4 and that there
is no likelihood of confusion between the respective marks.
Arguments of the Parties
It is opposer’s position that the respective marks are
similar in appearance, connotation and commercial impression
and that, when used on substantially identical goods sold in
the same channels of trade, confusion is likely. Opposer
points to the level of sales and advertising as
demonstrating that its mark BUBBLE is famous. In fact,
counsel states that arguably this mark “is the most heavily
promoted and most famous trademark ever used on a golf club
shaft.” Brief, 10. Opposer also points to the statement of
applicant’s president that the mark BUBBLE (or BUBBLE SHAFT)
indicates opposer. With respect to the parties’ marks,
opposer argues that both marks begin with a “B” and include
a repeated consonant. Also, both words, according to
opposer, suggest a spherical shape filled with air. Both
terms, opposer argues, suggest shafts different in shape
from other golf club shafts. Finally, opposer notes that it
has successfully prevented other entities from selling
products under similar marks.

4 Although applicant has filed on an intent-to-use basis,
applicant has begun use of its mark.
Opposition No. 100,296
8
Applicant, on the other hand, argues that the
respective marks are different in sound, appearance and
meaning, that the purchasers of golf clubs are sophisticated
and knowledgeable and that the expensive nature of golf
clubs leads to the conclusion that confusion is unlikely.
Also, applicant contends that the respective terms “bubble”
and “balloon” are not used interchangeably. With respect to
the letter from the U.S. Customs Service, applicant objects
to this evidence on the basis of hearsay5 and to the court
judgments of record. Applicant argues that no weight should
be given to such evidence because applicant was not a party
to any of the proceedings and its mark has not been the
subject of federal litigation. These actions, therefore,
have no probative value, according to applicant.
Discussion and Opinion
As noted, opposer has made of record its pleaded
registration. Therefore, there is no issue with respect to
priority of the mark BUBBLE. King Candy Co. vs. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA
1974). In any event, the record establishes opposer’s use
of this mark (as well as the mark BUBBLE SHAFT) since before
the filing date of applicant’s application.

5 Applicant’s attorney did not appear for the taking of
opposer’s testimony and, therefore, was not present to object to
any of the testimony or exhibits offered. The objection, not
having been timely raised, is accordingly considered to be
waived.
Opposition No. 100,296
9
Because the descriptions of goods in both opposer’s
pleaded registration and in applicant’s application are
substantially the same, there is also no issue with respect
to the similarity of the goods of the parties. While the
evidence of record does point to specific differences in the
nature and quality of the respective goods, because these
goods are identically described in the respective
application and registration, for our purposes we must
assume that the goods are the same. Octocom System, Inc.
vs. Houston Computer Services, Inc., 918 F.2d 937, 16 USPQ2d
1783 (Fed. Cir. 1990). Therefore, of course, the channels
of trade and purchasers must also be considered essentially
the same.
The only real issue before us is whether applicant’s
mark BALLOON SHAFT and opposer’s marks BUBBLE and BUBBLE
SHAFT are so similar that, as applied to golf clubs and golf
club shafts, confusion is likely. While there are obvious
similarities in these words (each begins with the letter
“B”, each begins with a two-syllable word and has a double
consonant in the middle of the first word), we believe that
applicant’s mark projects a sufficiently different
commercial impression from each of opposer’s marks that
confusion is unlikely. These words have different meanings,
which we believe would not be lost upon potential
purchasers. While the parties’ marks may be somewhat
Opposition No. 100,296
10
suggestive of the contour of a golf club shaft, a bubble
would be understood, we believe, to refer to a small body of
air within a thin film of liquid whereas a balloon would be
understood to mean, typically, a rubber or elastic
structure, often colorful, filled with air or gas. These
marks also have obvious differences in sound and appearance.
While we have considered the record and argument with
respect to the renown of opposer’s mark, we are not
convinced that this record establishes that its mark BUBBLE
is “famous,” only that it is a strong one that is relatively
well-known in the field. In any event, we think it is
significant that the goods involved in this case are not
inexpensive items subject to casual or impulse purchasers.
Purchasers spending several hundreds of dollars on golf
clubs are likely to exercise some degree of care in making
their purchases. We agree with applicant, therefore, that
purchasers of golf clubs may be considered relatively
careful and discriminating.
The fact that there have been no instances of actual
confusion has been given little weight in view of the lack
of evidence concerning the level and scope of distribution
and sales of applicant’s goods, and therefore the
opportunity for possible confusion. Also, the evidence
concerning the consent judgments involving third parties has
little, if any, probative value.
Opposition No. 100,296
11
Accordingly, we find that applicant’s mark is
sufficiently different from opposer’s marks that, even when
used on legally identical goods, confusion is unlikely.
Decision: The opposition is dismissed.
R. L. Simms
G. D. Hohein
P. T. Hairston
Administrative Trademark
Judges, Trademark Trial
and Appeal Board