Fame of "PING" Mark Brings TTAB 2(d) Victory Over "PING WI FI"
Pro se Applicant D. Kent Pingel did not take testimony, submit evidence, or file a brief in this Section 2(d) opposition to registration of the mark shown below [WI FI disclaimed] 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." Opposer Karsten claimed likelihood of confusion with its registered mark PING and proved that the mark is famous in connection with golf-related equipment and services. Karsten won. Karsten Manufacturing Corporation v. D. Kent Pingel, Opposition No. 91189542 (June 22, 2011) [not precedential].
Karsten proved use of the PING mark since 1960, high market share, and very substantial sales and significant advertising expenditures. It advertises at major golf tournaments and licenses its mark to a clothing maker. The Board concluded that the mark has achieved fame for Section 2(d) purposes, and is therefore entitled to "a wide latitude of legal protection."
Karsten attempted to prove that it renders advertising and promotional services for others, but its proofs fell short: it failed to show that those services were rendered under any of its marks. Nonetheless, the Board found that Karsten's evidence had probative value: "a relationship exists between opposer's sponsorship services in the golf field and applicant's 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.
The Board therefore found it "plausible" that the parties "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."
Balancing the duPont factors, and giving the prior registrant the benefit of any doubt, the Board sustained the opposition.
TTABlog comment: This is, I think, one of those cases where one party did little or nothing while the other party put in all its evidence and did all the hard work to prove its case. In my experience, under those circumstances the Board will almost always side with the latter. The point is, don't disrespect the Board by making a half-baked effort.
Text Copyright John L. Welch 2011.