Trademark Proceedings Do Not Preclude Infringement Claims Over Band Name; 3rd Circuit

Beasley v Howard, 14 F4th 226 [3d Cir 2021]

In a long in a long-running dispute over the rights to the band name “Ebonys,” the 3rd Circuit held that proceedings to cancel a trademark before the TTAB did not have claim preclusive effect against trademark infringement lawsuits in federal district court. The plaintiff had filed two petitions in the TTAB to cancel the EBONYS trademark, which were dismissed. He then sued in federal court, alleging infringement. The lower court dismissed the claims on the basis of the TTAB proceedings, but the appellate court reversed.

Beasley appeals, so we now consider whether trademark cancellation proceedings before the TTAB have claim preclusive effect against trademark infringement lawsuits in federal district courts. We hold that they do not. The TTAB's limited jurisdiction does not allow trademark owners to pursue infringement actions or the full scope of infringement remedies in proceedings before it. Because the judgments of tribunals with limited jurisdiction have limited preclusive effect, we will reverse and remand in part the District Court's order so that the District Court may determine the scope and plausibility of Beasley's claims. But we will affirm the District Court's order to the extent it dismisses any claim that Howard defrauded the U.S. Patent & Trademark Office (“PTO”).

Marshall Tucker Band TM Action Dismissed Because Mark Not Used In Commerce

Marshall Tucker Band v. MT Industries, No. 16-420 (D. S.C. Mar. 1, 2017).

In an action by the Marshall Tucker Band alleging trademark infringement, dilution, declaratory judgment, and trademark cancellation under federal law and a host of state-law claims, the Court granted the defendants' Rule 12(b)(6) motion to dismiss because the complaint failed to allege that the defendant actually uses the mark in commerce.  Instead, the complaint relied upon statements made by the defendant  when it applied to register two federal trademarks consisting of the mark (The Marshall Tucker Band) to satisfy the use in commerce requirement.  The Court held: "Completely absent from the SAC are any allegations of Defendants’ actual use of the Mark in commerce. Inasmuch as registration of the Mark, without more, is insufficient to constitute a use in commerce, Plaintiffs’ federal trademark infringement claim fails as a matter of law."  The trademark dilution claim was dismissed for the same reason, and the Court declined to exercise supplemental jurisdiction over the remaining state law claims.

Rick Ross "Mastermind" Album Not Trademark Infringement Upon Cancelling Plaintiff's Registered Mark

Caiz v. Roberts, No. 15-9044 (C.D. Cal. Dec. 15, 2016).

Plaintiff rapper's trademark infringement claim against Rick Ross (and others) over Ross's album title "Mastermind" was dismissed at summary judgment because the Court found that Plaintiff's registered mark "Mastermind" was merely descriptive and had not acquired secondary meaning and therefore should be cancelled.  The Court also dismissed plaintiff's trademark dilution claim because the "Mastermind" mark was not famous, as required under the Lanham Act.  However, summary judgment was denied as to Defendant's trademark fair use defense.  Plaintiff's remaining claims were also dismissed.

Jackson 5 Tribute Band Trademark Cancelled

Wonderbread 5 v. Gilles, TTAB No. 92052150 (TTAB 6/30/2015).

This case involves a dispute about who owns the band’s name in the wake of the departure of one of the band’s five members.  The band, a Jackson 5 tribute band, filed a petition to cancel a trademark registration obtained by a former member who filed the application for the registration only 3 days after he was fired from the band.  The court found by a preponderance of the evidence that the mark WONDERBREAD 5 was not “personal” to the applicant/departing-band-member (Gilles), or for that matter, any of the band members as individual musicians.  Rather, the mark signified the collective “style and quality” of the group, and the partnership, not the departing band member, controlled those qualities. That is to say, the mark WONDERBREAD 5 identified a Jackson 5 tribute band, not a “particular performer combination.”  Thus, because the consuming public did not associate the mark with a particular member (but rather, a style of tribute band), the applicant did not "own" the mark when he applied for it.  The application was therefore void ab initio, and the registration was cancelled.

Hard Rock's CAVERN CLUB Trademark Not Subject To Cancellation

Cavern City Tours Ltd. v. Hard Rock Cafe Int'l (USA), Inc., No. 6:12-cv-1410 (M.D. Fla. Oct. 31, 2014).

The Court held that the TTAB properly dismissed the the petition of plaintiff, who owns the mark THE CAVERN CLUB in the UK and other jurisdictions, to cancel Hard Rock Cafe's CAVERN CLUB mark in the USA.  "The Cavern Club" was a venue where the Beatles performed hundreds of times early in their career.

First, the Court found that Hard Rock did not knowingly make false statements in their application for the CAVERN CLUB mark concerning the use of the mark by other people (like plaintiff), and rejected plaintiff's argument to adopt a "willful blindness" standard.  The Court found that plaintiff failed to submit sufficient evidence to prove that Hard Rock was aware of Plaintiff's mark; further, even if Hard Rock did have knowledge of plaintiff's use of the mark, the Court found that Hard Rock had reasonable basis to believe that plaintiff did not have a superior right to use the mark in commerce.

Second, the Court found that Hard Rock's mark did not falsely suggest a connection with plaintiff in violation of section 2(a) of the Lanham Act.  "The mere fact that Plaintiff's name has a word in common with the CAVERN CLUB does not establish that Plaintiff's identity or persona is the CAVERN CLUB."  Similarly, plaintiff's lease and operation of a "new" Cavern Club venue did not establish that Plaintiff's persona or identity is the CAVERN CLUB.  Moreover, Plaintiff did not establish that the CAVERN CLUB mark points uniquely and unmistakably to Plaintiff.  To the contrary, the evidence links the CAVERN CLUB with the original venue, which was demolished in 1973; thus, it did not point uniquely to Plaintiff.  Accordingly, Hard Rock was granted summary judgment dismissing the case.

Oh, Yoko - Petition to Cancel LENNON Mark

Oh, Yoko...

TMZ reports that "Lennon Murphy, a singer-songwriter whose band is called Lennon, has been sued by Yoko for 'tarnishment' of her widow's name [sic] and for 'fraudulently' registering the name as a trademark." However, it rather appears that Yoko Ono (as she herself clarified) filed a petition for cancellation with the Trademark Trial and Appeal Board seeking to cancel Trademark Registration No. 2676604, based on Registration numbers 1769796 and 1488395 for the marks JOHN LENNON.

Petitioner claimed Murphy obtained her registration fraudulently, and that Murphy's mark dilutes and/or tarnishes her late husband's surname. Petitioner did not, however, make a section 2(d) likelihood of confusion claim in her petition (15 U.S.C. 1052). USPTO TTAB Cancellation number 92048785; filed 1/18/08.

The petition is unusual in certain respects. Whether the petitioner intended to bring a likelihood of confusion claim is unclear. When filing the petition to cancel electronically, petitioner did identify Section 2(d) as a cause, however the petition has no pleadings referring to likelihood of confusion.

Additionally, it is interesting that the substance of the fraud allegation is that applicant did not identify that her first name was Lennon. However that fact was disclosed in that she filed the application as an individual, in her own name, Lennon Murphy.

Lastly, according to TMZ, Murphy asserts that the band has a co-existence agreement to use the LENNON mark (Yoko gave her "blessing"), raising a possible acquiesence argument.

[Documents can be accessed via the USPTO Trademark website, by searching TESS for the above registration numbers and then clicking the TTAB tab.]