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Likelihood of Confusion Justifies Cancelling of Trademark to Protect Senior Mark
Description Appeals court upheld the decision of the Trademark Trial and Appeal Board to cancel "laserswing," a mark registered years later than the mark "laser." Since both marks apply to golfing items, there is a likelihood of confusion in that market and the senior mark is due protection.
Topic Intellectual Property
Key Words Trademark; Seniority; Confusion
C A S E   S U M M A R Y
Facts Cunningham produces a device that looks like a golf club and is used by golfers to practice their swing with the aid of two light-emitting diodes contained in the head. He markets the device under the name "laserswing" and received registration for the mark in 1996. Laser Golf uses the mark "laser" for its golf clubs and balls. It has used the "laser" mark since 1983. Laser Golf filed a petition to cancel Cunningham's registration. The Trademark Trial and Appeal Board cancelled Cunningham's registration, concluding that there was a likelihood of confusion. Cunningham appealed.
Decision Affirmed. When a trademark is challenged, if it has been registered for less than five years, the standards for validity are the same standards as are required to register the mark initially. Cunningham does not contest that "laser" is the senior mark, he argues that his junior mark, "laserswing" will not cause confusion in the market. The Board cancelled the mark due to their similarity and the fact that both are in the same market and trade channels. That conclusion stands, as Laser Golf proved by a preponderance of the evidence that there was a likelihood of confusion between the two marks.
Citation Cunningham v. Laser Golf Corp., 222 F.3d 943 (Fed. Cir., 2000)

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