Sid Terror Punked by Bobby Steele in "THE UNDEAD" TTAB Priority Clash
In a semi-lively priority battle, the TTAB sustained a Section 2(d) opposition brought by Robert Kaufhold a/k/a Bobby Steele against Robert P. Yeomans a/k/a Sid Terror, regarding the mark THE UNDEAD for "entertainment namely, live performances by a musical band." Kaufhold v. Yeomans, Opposition No. 91160771 (September 26, 2006) [not citable].
The Board had no difficulty in finding likelihood of confusion, since both parties claimed use of the same mark, THE UNDEAD, for identical services (punk rock bands). The question was: who was undead first?
In his application, Yeomans stated a first use date in 1976 for his version of THE UNDEAD, but he failed to submit any evidence whatsoever and so was seemingly stuck with the application filing date (July 30, 2002) as his constructive first use date.
Opposer Kaufhold testified that he chose the name THE UNDEAD for a punk rock band in 1980 and started playing "live" shows under that name in late January 1981 at the A7 club in New York City. The Board concluded that Kaufhold had indeed established a first use date of January 30, 1981.
Normally, the Board would have concluded that Opposer had priority. But the Board hesitated because Opposer's own testimony raised the issue of whether Opposer "has established an earlier prior use date for applicant." [Emphasis in original].
Q. When did you first hear of the applicant?
A. When I first heard of him was when we played with the Dead Kennedys. And after the show --
Q. Let me just clarify that. That was sometime in mid-'81, late '81?
A. Right, that was - yeah, that was mid-'81.
A. And after the show, we were hanging our with the Dead Kennedys in the dressing room, and we were kind of like, you know, just having a conversation. And Jello Biafra [lead singer of the Dead Kennedys] just, like - just, like, mentioned that, you know - you know, there's a band - there's a band in San Francisco called The Undead. And did you know that?
I was, like, no. He said, you know, I wouldn't expect you to, you know. And that was about the extend of it, was just, like, you know, there's this other band out there, you know.
Q. So, before Jello Biafra told [you] about him, you hadn't heard of him?
The Board incisively ruled that Opposer's own testimony did not allow it "to draw any conclusions that undermine opposer's claim of priority."
Finally, the Board noted that, "from a trademark perspective," the fact that the two bands had played at least one concert together was "certainly perplexing." Blatantly venturing into obiter dictum, the Board asserted that had Applicant raised the issues of consent or acquiescence, the Board would have rejected them for various reasons. But he didn't, so they didn't have to.
Declaring Applicant's THE UNDEAD application dead, the Board sustained the opposition on the ground of likelihood of confusion.
TTABlog comment: I think there might also be a descriptiveness issue here. I mean, if the band is giving "live" musical performance, aren't the performers necessarily "undead?"
Text Copyright John L. Welch 2006.