Thursday, April 27, 2017

Report on HAWKWIND Oral Hearing: Raphael Gutierrez

The TTAB heard oral argument on April 24th in Dave Brock v. Nicholas Turner, Opposition No. 91214199, involving Nik Turner's application to register the mark NIK TURNER'S HAWKWIND for "Entertainment services, namely, live musical performances by an individual or musical group." Opposer Dave Brock claims ownership and priority of use of the mark HAWKWIND, likelihood of confusion under Section 2(a), and false association under Section 2(a). The parties’ briefs, testimony, evidence, and other papers may be found here.

Dave Brock

Dave Brock alleges that he co-founded the band HAWKWIND in 1969 and has been the only person who has been a member of the band continuously since its founding. Brock asserts that he has controlled the style and quality of the band's music, that he is therefore the owner of the mark HAWKWIND, and that the mark is famous and is entitled to a broad scope of protection.

Applicant Nik Turner claims that HAWKWIND is not famous, but just an obscure "cult" band, that Brock is not the prior user in the United States, and that Brock has abandoned any rights he may have had.

Nik Turner

Friend of the TTABlog Raphael Gutierrez attended the oral hearing and provides the following observations and comments:

Attendance: About 40 people. The room could have accommodated about 100. Most appeared to be law students with their professors.

- Deputy Chief Judge Susan Richey
- Judge Lorelei Ritchie
- Judge Francine Gorowitz

Neither party was present.

Counsel for the Parties:
- For Opposer Dave Brock: first year associate Jodi Benassi of McDermott Will Emery. Another attorney was at the table, but did not argue.
- For Applicant Nik Turner: Evan Cohen of Manifesto Records

The Board stated that each side would get 30 minutes to present its case. When asked if Opposer would like to reserve time for rebuttal, Opposer indicated it would like to reserve 20 minutes for rebuttal. Judge Richey asked if Opposer was sure and Opposer replied that it was. After 10 minutes of argument, Judge Richey offered Opposer 10 more minutes for argument, leaving 10 for rebuttal. Opposer accepted the offer.

The Judges did not let either party get far into their arguments before starting in with questions.

Opposer opened with the factual history, but was reminded by the judges that they were familiar with it. The judges asked Opposer to move on to the legal arguments. Opposer argued that he is the proper owner of the HAWKWIND trademark because he was a founder of the band and the most consistent member since the beginning. Applicant, on the other hand, started as a roadie before joining the band. He was eventually fired after about 8 years. Opposer argued that 9th Circuit case law [Robi v. Reed] makes clear that the name of a band does not move with a member who has been kicked out. Judge Gorowitz asked whether Opposer knew that 9th Circuit law was not binding on the Board and whether Opposer had any Federal Circuit precedent; Opposer responded yes and no, respectively. Opposer admitted infrequent touring in the US using the HAWKWIND name, citing the difficulties of touring and complications due to “medical issues” arising from stress caused by Applicant’s use of HAWKWIND. Opposer also claimed that consistent record sales (a rough average of 1,000/year) showed no abandonment of the mark in the past 40 years. The Board’s toughest questions related to Opposer’s false association claim and the fame of the party asserting the claim. The Board was dubious of Opposer’s claim that HAWKWIND was famous among all concert-goers. Judge Gorowitz pointed out that she had never heard of the band.

Applicant argued that HAWKWIND was not and is not a famous band, even amongst the narrower subset of enthusiasts of the “prog rock” genre. Applicant made the point that there has been a revolving door of artists, but did not emphasize that as a result there is no singular source for HAWKWIND music. Applicant argued that Opposer’s use of the HAWKWIND mark in the United States for musical recordings (1,000 albums sold per year) was de minimis and that Opposer had abandoned the mark for live musical performances, not having performed in the US for over 10 years. This led to questions from the Board about how much use is enough to constitute use of the mark. Judge Richey asked if Applicant was familiar with the Adidas v. Christian Faith Fellowship case. He was not, so she did not press with further questions. [One might have countered that Adidas related to use sufficient to support a trademark registration - not use sufficient to establish nationwide common law rights.] Upon further questioning Opposer did go on to suggest that something like record sales of 10,000/year would probably be sufficient use to support a trademark claim. Applicant admitted there was confusion, but said it was not dispositive because there were lots of different versions of HAWKWIND the band. However, much of the confusion related to people emailing Opposer or posting on blogs with questions like “Which version of HAWKWIND is this?” Applicant might have argued that these were mere inquiries, not evidence of actual confusion.

The Board asked tough questions of both parties, but did not indicate which way they were leaning.

Read comments and post your comment here.

TTABlog comment: Thank you, Rafa. BTW: there are hundreds of comments to the original blog post regarding the hearing (here).

Text Copyright John L. Welch 2017.


At 3:02 PM, Blogger Unknown said...

There are NOT 'lots of different versions of Hawkwind the band'. Was the Applicant able to identify any 'version' that has sold a single record other than that associated with the Opposer for the last 47 years, the last 33 years (and 19 albums) being after Mr Turner was fired by Mr Brock for the second time? I assume the Applicant chose "not to emphasize that.... there is no singular source for Hawkwind music" because that is false. There is and has been only one 'source of Hawkwind music', namely the band of that name controlled and directed by the Opposer.

At 7:51 PM, Anonymous Jimski said...

I agree. There not not been lots of different versions. There *has* been several attempts to steal the name by Nik Turner - including one in the U.K. That led the court to order that Turner not be able to use the name. To even consider that there have been different versions and award.a trademark based on one persion's previous theft of a trademark would be a travesty of justice.


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