Wednesday, November 04, 2009

Precedential No. 44: TTAB Decides "CAB CALLOWAY" Priority Dispute, Rules that Personal Names Are Inherently Distinctive

An intra-family fracas regarding the service mark CAB CALLOWAY for retail music store and entertainment services was won by the late band leader's grandson, Christopher Brooks. He proved prior rights in the mark THE CAB CALLOWAY ORCHESTRA for musical recordings and entertainment services, and therefore the Board found confusion likely under Section 2(d) and sustained his opposition against a corporation formed by Calloway's widow and daughters. Christopher Brooks v. Creative Arts By Calloway, LLC, 93 USPQ2d 1823 (TTAB 2009) [precedential].


Prior Litigation/Judicial Estoppel: Creative Arts sued Brooks for trademark infringement a decade or so ago, and lost. The court ruled that Creative Arts could not prevail because any trademark assignment to it was invalid because Cab Calloway "was not operating a going concern at the time of his death [in 1994], precluding the transfer of a mark." In that lawsuit, Brooks argued that Creative had to prove secondary meaning for the mark CAB CALLOWAY because "personal names must have secondary meaning."

Here, Creative asserted that Brooks was now judicially estopped from claiming that CAB CALLOWAY is an inherently distinctive mark.

The Board sided with Brooks, ruling that the statements made by Brooks in the litigation were statements of law and not admissions of fact. "Prior statements of law are not admission of fact, and cannot serve as admissions against interest." Moreover, the Board found that judicial estoppel is not applicable because the parties are before a different tribunal that applies different legal standards to determine different rights.

Personal Name Marks: The parties stipulated that the sole issue before the Board was priority: whether Brooks could establish prior rights in THE CAB CALLOWAY ORCHESTRA prior to Creative's filing date of July 23, 1999.

The record showed that Brooks first used his mark in December 1998 and gave at least three more performances prior to July 23, 1999. Creative argued that this usage was not sufficient to establish rights in the mark because under the common law "personal names must have secondary meaning" and Brooks' evidence was insufficient.

The Board observed that, for registration purposes, the USPTO views personal names as inherently distinctive and registrable on the Principal Register. See In re Yeley, 85 USPQ2d 1150 (TTAB 2007) [J.J. Yeley identifies an individual and, therefore, is not primarily merely a surname]. [TTABlogged here].

"We see no logical basis for holding that a personal name mark which is inherently distinctive for registration purposes must nonetheless be shown to have acquired secondary meaning before it can be relied upon by an opposer in an opposition proceeding."

And so the Board held that "when a plaintiff is asserting prior rights based on a personal name, not a surname, the personal name trademark is inherently distinctive." [Joe Smith is inherently distinctive? -ed.]

Trade Name Use: The Board also found that the record "supports use as a trade name" prior to Creative's use because Brooks "developed a trade identify" in THE CAB CALLOWAY ORCHESTRA. Brooks contended that "to serve as a bar to registration, a trade name need not be inherently distinctive, nor must it have acquired any secondary meaning."

Brooks had argued that an oppose need not have a "superior right" in the trade name in order to prevail. The Board disagreed, but in any case it concluded that personal names are inherently distinctive and that Brooks "has established its 'superior right' through prior trade name use."

Cab Calloway

And so the Board sustained the opposition.

Text Copyright John L. Welch 2009.

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