Precedential No. 21: TTAB Sides With Band in "WONDERBREAD 5" Ownership Dispute

The Board granted a petition for cancellation of a registration for the mark WONDERBREAD 5 for "entertainment services in the nature of live musical performances," ruling that the underlying application was void ab initio because Respondent and ex-band member Patrick Gilles was not the owner of the mark at the time of his filing the underlying application. Wonderbread 5 v. Patrick Gilles a/k/a Wonderbread 5 and/or Wonderbread Five, 115 USPQ2d 1296 (TTAB 2015) [precedential].

Evidentiary Issues: Respondent Gilles timely mailed his pre-trial disclosures, but to the wrong address for Petitioner's counsel. The disclosures were eventually received by Petitioner's successor counsel. Since it was highly unlikely that Petitioner was surprised that Gilles intended to testify, the Board declined to strike his testimony.

Gilles, however, failed to provide "a general summary or list of the types of documents and things which may be introduced as exhibits during [his] testimony" Rule 2.121(e). The disclosures merely stated that "Registrant may introduce exhibits to be identified in a Notice of Reliance." The disclosures were therefore inadequate and defective. The Board therefore struck all of Respondent's trial exhibits and all testimony referring thereto.

Petitioner had its own evidentiary problems. Under notice of reliance, it submitted an affidavit that Respondent Gilles had submitted in connection with a summary judgment motion. The Board declined to consider it. An affidavit or declaration is inadmissible as trial testimony absent a stipulation from the other party. See Rule 2.123(b). Petitioner also submitted Respondent's answer to its admission requests, including admissions and denials. The admissions were deemed properly of record, but denials are not admissible. See Rule 2.120(3))(i).

Ownership: The petition for cancellation asserted claims of likelihood of confusion and fraud, and included allegations that Gilles did not own the mark at the time of filing his application to register. Ownership of a mark is an element of every Section 2(d) claim. [W]hen both parties are relying upon activities the two conducted in concert with one another, each in an attempt to establish prior rights in a mark over the other, the dispute centers on ownership of the mark."

Despite the absence of any agreement, Petitioner claimed to own the WONDERBREAD 5 mark as a partnership under California law. It alleged that two days after Gilles was terminated as a partner, he filed the underlying application without the Petitioner's knowledge or consent. He concealed the existence of the application in subsequent state court litigation with Petitioner, which culminated in a buy-out and release of all of Respondent's claims.

Gilles claimed the he was one of two founding members of the band and therefore he owned a 50% interest in the partnership. The lawsuit, he contended, dealt only with monetary relief, not trademark rights.

The Board found, based on the totality of the evidence, that Gilles was not individually the owner of the mark at the time he filed his application to register. His actions with regard to the state court lawsuit confirmed that he understood that the band was a partnership of which he was no longer a member.

The Board also considered the "legal framework courts and commentators have developed to deal with" disputes regarding musical band names when there is no written agreement or other legal formalities that clearly delineate ownership rights. The Board observed that Professor McCarthy's test has been adopted by several courts and is a "useful adjunct" to the Board's findings here. Professor McCarthy frames the question as "Does Mark Identify the Group Regardless of its Members?"

In these performing group cases, it must first be determined whether the group name is personal to the individual members or not. If not, a second question then must be determined: for what quality or characteristic is the group known and who controls that quality? The answer should identify the person or entity that owns the group name as a mark

Temporal continuity of identification is an important factor, according to the Professor. The issue is "whether the mark signifies personalities, or style and quality regardless of personalities."

The Board concluded that the WONDERBREAD 5 mark was not "personal" to Respondent Gilles or any other of the band members. The mark signified the "style and quality" of the group: a Jackson 5 tribute band, not a "particular performer combination." As one band member testified, the band was "a bunch of Caucasian boys playing Jackson 5 songs."

The bands discontent with Respondent Gilles began with his refusal to wear the "over the top" costumes that the band's public persona required. Thus the band monitored and controlled the "style" of its musical services, not Gilles. The band's use of prerecorded music and substitute musicians further supported the conclusion that the music performed by the band was not personalized by the performers.

The Board concluded that at the time Gilles filed his application to register, "the consuming public did not associate the mark WONDERBREAD 5 with [him], but rather with the style of a Jackson 5 tribute band costumed in exaggerated 1970s regalia. It was the group/partnership consisting of WONDERBREAD 5 that controlled this quality or characteristic of the band."

The Board sustained the petition for cancellation, ruling that Respondent Gilles was not the owner of the mark at the time of filing his application, and therefore that the application was void ab initio.

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TTABlog comment: Easy as ABC. Is "WONDERBREAD 5" dilutive of the bread? [No, not the band, BREAD, the bread bread]. One Oneders.

Text Copyright John L. Welch 2015.