Tuesday, November 29, 2011

TTAB's CAVERN CLUB Ruling Heads to Federal Court

At the Trademark Blog, Marty Schwimmer reports (here) that Cavern City Tours Ltd. has filed a complaint seeking Section 1071(b) review of the Board's decision in Cavern City Tours Ltd. v. Hard Rock Cafe International, Inc., Cancellation No. 92044795 (September 29, 2011) [not precedential]

The Board dismissed Cavern City's fraud and Section 2(a) false association claims concerning Hard Rock Cafe's registration of the mark CAVERN CLUB for clothing and restaurant and bar services (summarized at the TTABlog here). Marty provides a copy of the complaint as filed in the U.S District Court for the District of Nevada. Furthermore, as an expert on issues of trademark use by foreign entities (he's my go-to guy on that topic), he observes:

Plaintiff has added an infringement claim, so it will have the opportunity to establish protectable trademark rights in CAVERN CLUB prior to HRC’s ITU filing date. Readers of the [Trademark] blog know that the US doesn’t protect "reputation without use." On the other hand, cases such as Casino de Monte Carlo and Grupo Gigante (646 F3d 0309), give plaintiff a fighting chance to establish that it had protectable prior rights (if it is correct, for example, that plaintiff promoted the Cavern Club as part of its US advertising efforts in the 1991 to 1995 period).

Text Copyright John L. Welch 2011.


At 2:32 PM, Anonymous Anonymous said...

If they've added an infringement claim, they might have a shot. The 2(a) claim was dead in the water - - there was just no way the plaintiff could meet the initial test required by the Lanham Act: that "Cavern Club" identifies "persons. . . institutions, beliefs, or national symbols." It's a trademark, pure and simple. And trademarks aren't people, my friend.

At 3:27 PM, Blogger John L. Welch said...

No one claims that trademarks are people. The Board said it didn't matter whether Plaintiff was considered an institution or a juristic person: it ruled that "petitioner has not persuaded us that THE CAVERN CLUB is petitioner’s persona or identity."


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