Trademarks

Two Elements and a Single Factor: Cunningham v. Laser Golf and the Architecture of Cancellation

The Federal Circuit's golf-mark decision supplies the canonical two-part test for cancellation standing and shows how one DuPont factor can decide a likelihood-of-confusion case.

July 21, 2025
Golf clubs in a bag on a fairway
A dispute over LASER and LASERSWING golf clubs produced one of the most-cited statements of cancellation standing. Shutterstock
Educational content, not legal advice. This article explains general legal concepts. It does not create an attorney–client relationship. For your specific situation, consult a licensed attorney.

In Cunningham v. Laser Golf Corp., 222 F.3d 943 (Fed. Cir. 2000), No. 99-1585 (decided August 15, 2000), the U.S. Court of Appeals for the Federal Circuit affirmed the Trademark Trial and Appeal Board’s cancellation of a registration for the mark LASERSWING in light of the senior LASER mark for golf clubs. The opinion, authored by Judge Linn for a panel that also included Chief Judge Mayer and Senior Circuit Judge Archer, is unremarkable in its facts and outsized in its influence. It is the decision the Board reaches for whenever it needs to articulate what a cancellation petitioner must prove to get in the door, and it is a clean illustration of a principle that recurs throughout likelihood-of-confusion analysis: that a single one of the multifactor DuPont considerations can, on the right facts, control the outcome.

At a glance

  • Case: Cunningham v. Laser Golf Corp., 222 F.3d 943 (Fed. Cir. 2000), No. 99-1585.
  • Decided: August 15, 2000; panel of Mayer, Archer, and Linn (author).
  • Marks at issue: LASERSWING, registered to Cunningham for golf clubs (first use claimed 1993; registered 1996), and the senior LASER marks, registered to Laser Golf in 1983 for golf clubs and golf balls.
  • The Board’s ruling: Cancelled the LASERSWING registration based on a likelihood of confusion with the prior LASER registrations.
  • The standing framework: A cancellation petitioner must establish (1) standing and (2) a valid statutory ground; standing requires only a belief that the petitioner is likely to be damaged, supported by a real, direct commercial interest.
  • The confusion holding: The marks share the dominant term LASER; the descriptive component “swing” gets little weight; and because both registrations cover golf clubs without limitation, the goods are presumed to travel in the same channels to the same purchasers.
  • Outcome: Affirmed.

The two-element framework that anchors cancellation practice

The enduring contribution of Cunningham is structural. The court restated, in a form the Board has since quoted countless times, the basic architecture of a cancellation claim: a party petitioning to cancel a registration must prove two distinct things — first, that it has standing to bring the challenge, and second, that there is a valid statutory ground on which the registration should not continue. The two elements are independent. Standing concerns who may complain; the ground concerns why the registration is defective. A petitioner who has a real stake but no valid ground loses, and so does a petitioner with a strong ground but no stake.

On standing, the court was deliberately permissive. “Standing,” it explained, “is the more liberal of the two elements and requires only that the party seeking cancellation believe that it is likely to be damaged by the registration.” A direct commercial interest in the goods at issue suffices. This formulation matters because it deliberately sets the entry threshold low: the cancellation forum is open to anyone with a genuine, non-speculative interest in clearing the register of a mark, not merely to those who can prove they have already been harmed. The petitioner need not own a competing registration or even a competing mark; a real and direct commercial interest in the relevant market is enough to confer the right to be heard.

That liberal standing posture is worth pausing on, because it has aged into one of the most consequential ideas in Board practice. The line between standing as a threshold and the merits as the substantive question — who may sue versus whether they win — runs straight through later debates about entitlement to a statutory cause of action. Cunningham’s insistence that standing be kept “liberal” and analytically separate from the grounds has framed how the Board polices that line ever since.

When one DuPont factor carries the day

Having established that the parties were properly before the Board, the court turned to the substantive ground: likelihood of confusion under Section 2(d). The governing framework is the thirteen-factor inquiry from In re E.I. du Pont de Nemours & Co., but Cunningham is a reminder that the factors are not a scorecard to be tallied. “We have said that a single du Pont factor may be dispositive,” the court observed, “especially when that single factor is the similarity of the marks.” The opinion then works through the two factors that mattered most.

On the similarity of the marks, the Board had compared LASER and LASERSWING and found them confusingly close. The reasoning rested on dominance: both marks begin with the identical term LASER, producing obvious similarities in appearance and pronunciation, while the added word “swing” is “both common and descriptive” in the golf context and therefore entitled to little weight in the comparison. The Federal Circuit endorsed the analytical move. A mark must be considered as a whole, but in deciding which features drive the commercial impression, the Board may properly give reduced weight to a descriptive or generic component. The dominant, source-identifying element of LASERSWING was LASER — the very mark Laser Golf already owned.

On the relatedness of the goods, the analysis was even more direct. Both registrations identified golf clubs. Where the goods in the respective registrations are identical and the identifications contain no restrictions as to channels of trade or classes of purchasers, the Board must presume that the goods move through the same channels to the same buyers. That presumption flows from the registrations themselves and cannot be rebutted by extrinsic evidence about how a party happens to market in the real world. Identical goods, similar marks: the conclusion followed almost mechanically, and the court affirmed.

Reading the registration, not the marketplace

A theme worth isolating from Cunningham is its insistence that the confusion analysis in a registration dispute is bounded by what the registrations say. The relevant comparison is between the goods as identified, not the goods as actually sold; the relevant channels are those the unrestricted identification permits, not those a party currently uses. This registration-bounded approach is what gives Board confusion determinations their predictability — and what occasionally produces results that feel detached from commercial reality. A party that drafts a broad identification of goods accepts the consequence that its mark will be measured against everything the identification reaches.

The lesson cuts in both directions. A senior registrant benefits from the breadth of its own identification when it opposes or seeks to cancel a junior mark. A junior applicant, conversely, may invite a confusion finding by claiming more goods than it needs. Cunningham shows the senior party reaping the advantage: because LASER was registered for golf clubs without limitation, the presence of golf clubs in the LASERSWING registration was enough to put the two in the same channels of trade as a matter of law.

Open questions

  • How descriptive must a term be to be discounted? Cunningham gave “swing” little weight, but the line between a weakly distinctive component that still contributes to the commercial impression and a merely descriptive one that may be discounted is fact-intensive and unevenly applied.
  • How far does the “single dispositive factor” principle reach? The court endorsed letting mark similarity carry a case, but did not define when the remaining DuPont factors are strong enough to overcome a high degree of similarity.
  • What is the modern relationship between standing and entitlement? Cunningham’s “liberal” standing framing predates the Supreme Court’s zone-of-interests cases, and the Board continues to refine how the two fit together.
  • How should coexistence in the marketplace be weighed? Because the analysis is registration-bounded, real-world coexistence evidence often receives limited weight, raising recurring questions about when it should matter.

Implications

  • Cite Cunningham for the threshold. Its two-element formulation — standing plus a valid ground — remains the standard articulation of what a cancellation petitioner must prove.
  • Standing is meant to be easy. A real, direct commercial interest in the relevant goods suffices; petitioners need not show actual damage or own a competing registration.
  • Draft identifications with confusion in mind. Broad, unrestricted identifications expose a mark to comparison across all permissible channels and goods, helping senior parties and exposing juniors.
  • Mark similarity can end the case. Where the dominant elements coincide and the goods overlap, a single DuPont factor may decide the dispute regardless of the others.
  • Discount descriptive components carefully. Reduced weight for descriptive matter is permissible, but the mark must still be evaluated as a whole.

Frequently asked questions

What is the legal test for standing in a TTAB cancellation under Cunningham? A petitioner must show two things: standing and a valid statutory ground. Standing is the more liberal element and requires only a belief, grounded in a real and direct commercial interest, that the petitioner is likely to be damaged by the registration.

Why did LASERSWING lose to LASER? The marks shared the dominant term LASER, the added word “swing” was descriptive and given little weight, and both registrations covered golf clubs without restriction — so the goods were presumed to travel in the same channels to the same purchasers, yielding a likelihood of confusion.

Can a single DuPont factor decide a confusion case? Yes. The Federal Circuit reaffirmed that a single DuPont factor may be dispositive, particularly the similarity of the marks, even though the full inquiry contemplates thirteen factors.

Authorities and sources