Tuesday, October 18, 2011

TTAB Tosses Out CAVERN CLUB Fraud and 2(a) False Association Claims

When I hear "Cavern Club," I think of the Beatles and their birthplace. But so what? Hard Rock Cafe registered the mark CAVERN CLUB for clothing and for restaurant and bar services in February 2000. Cavern City Tours petitioned to cancel the registration in August 2005 on the grounds of fraud and Section 2(a) false association, but lost on both counts. Cavern City Tours Ltd. v. Hard Rock Cafe International, Inc., Cancellation No. 92044795 (September 29, 2011) [not precedential].

Petitioner Cavern City Tours has been offering music and live entertainment at The Cavern Club in Liverpool since 1991, and Beatles-themed tours since 1983. The original Cavern Club opened in 1957 but was closed off and on until 1991, when Petitioner took over. Petitioner has never directly advertised The Cavern Club in the USA. In April 1994, one of Petitioner's owners gave an interview in Toronto, stating that Petitioner planned to establish a Cavern Club-themed nightclub in the USA. One week later, Hard Rock filed its application to register CAVERN CLUB.

Fraud: Petitioner claimed that Hard Rock committed fraud when it filed its application to register (verifying that it knew of no other person who had the right to use the mark in commerce) because it was "intimately familiar with Petitioner's mark and its fame."

However, Petitioner failed to meet its burden of proof to show that (1) Hard Rock knew of any rights Petitioner had to the mark when the application was filed; and (2) Hard Rock intended to procure a registration to which it was not entitled.

Petitioner argued that Hard Rock is as a sophisticated company that holds itself out as "one of the world's largest repositor[ies] of rock and roll memorabilia, including thousands of pieces of Beatles memorabilia and dozens of pieces of Liverpool Cavern Club memorabilia." The Board therefore, according to Petitioner, must inescapably conclude that Hard Rock knew of the prior use of the Cavern Club mark by Petitioner and its predecessors.

The Board observed that in order to prove fraud by indirect evidence, the evidence must point to no reasonable conclusion other than an intent to deceive. Here there was no evidence that anyone associated with Hard Rock ever heard the Toronto interview. And the Board refused to infer, from the facts stated by Petitioner, that Hard Rock knew of any claimed rights to THE CAVERN CLUB in the United States and intended to deceive the PTO.

The Board found that Petitioner did not meet its "heavy burden of proof" in showing fraud, and it therefore dismissed the fraud claim.

Section 2(a): "Because Petitioner's name is not The Cavern Club, it must establish that its identity or persona is The Cavern Club." However, there was little, if any, evidence that THE CAVERN CLUB is the identity or persona of Petitioner. Much of the evidence concerned the significance of the Cavern Club to Beatles fans and did not mention Petitioner, and it linked The Cavern Club to the original proprietors of the club, not to Petitioner. Thus the evidence did not point uniquely to Petitioner, as required by Section 2(a).

Moreover, the record showed that Petitioner's customers from the USA visit The Cavern Club because the Beatles performed there in the 1960s, and not because the customers want to see any attractions or performances at the club.

In sum, it does no dishonor to the hallowed space at 10 Mathew Street in Liverpool to conclude that the evidence of record fails to establish that THE CAVERN CLUB points uniquely to petitioner.

Noting that Petitioner has more than one business interest, including operating a tour called "Magical Mystery Tour," the Board found this to be inconsistent with Petitioner's position that its persona is The Cavern Club. "That petitioner offers another service under a different mark undercuts its argument that petitioner's persona is The Cavern Club."

Finally, the Board noted that The Cavern Club in Liverpool had four previous owners. "Petitioner has not pointed to any persuasive evidence that it has the persona of The Cavern Club as opposed to any of the other earlier Cavern Clubs.

In sum, the Board ruled that Petitioner had failed to establish THE CAVERN CLUB "is unmistakably associated with a particular personality or 'person' that points uniquely to plaintiff."

TTABlog comment: I wonder why the Board didn't just decide the 2(a) claim, since without Petitioner having some right under 2(a), how could there be fraud? Perhaps the Board wanted to drill into our heads once more how hard it is to prove fraud.

Text Copyright John L. Welch 2011.


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