Strategy: Be creative in all endeavors; even golf. ||||
On appeal in the Eleventh Circuit, Don Hayden and team successfully defended the federal district court’s summary judgment which they had obtained in favor of the client. In this case, the plaintiff foundation, which operated an international golf skills competition, sued the client, The Golf Channel (TGC) for trademark infringement because TGC used the term “Drive Chip & Putt” in connection with TGC’s own golf skills challenge. The plaintiff sued under the Lanham Act, the Florida Deceptive and Unfair Trade Practices Act (FDUTPA), and Florida common law. Mr. Hayden won summary judgment in favor of TGC on grounds that “Drive Pitch & Putt” was a descriptive term that had not acquired secondary meaning, and therefore was not protectable. The plaintiff appealed, but the client again prevailed. In a sophisticated trademark infringement analysis that distinguished Ryder and NFL trademark cases relied upon by the defendant, Mr. Hayden successfully advanced the argument that the term at issue was descriptive and thus not protectable. First, the words in the mark were names of golf shots, and some combination of them is often used to describe a skills competition. The terms merely describe activities taking place. Second, the foundation failed to show that the terms had acquired secondary meaning. The court agreed with defendant’s argument that plaintiff’s use of the mark was not sufficiently sustained or pervasive in relation to the relevant public. Third, TGC had introduced evidence of seven separate competitions in Arizona, California, Colorado, Florida, and South Carolina using some combination of the terms. Mr. Hayden successfully argued that this evidence of competitions held around the country using variations of the same terms indicated that the use of those terms in connection with golf skills challenges was commonplace, leading the Eleventh Circuit to affirm the summary judgment in favor of the client.