• If There’s No Evidence, How Do You Decide?

    by  • November 18, 2013 • trademark • 1 Comment

    I often write about cases where there are two claimants to the same trademark. We’re still struggling with the fundamental doctrine that should apply in the situation, and because we’re struggling it means that the litigants may not capture or offer evidence that the fact finder needs in order to decide.

    Which is what happened in the trademark opposition Cooley v. Cooper. So what does the TTAB do when the litigants don’t give it the facts that are relevant to the decision it has to make?

    Opposer Cooley, co-applicants Cooper and Irby, and some other women were members of a band called “Klymaxx.” They were successful in the 80’s,

    quit performing, and then various combinations of members started performing again, still as Klymaxx. Cooper and Irby filed a trademark application which Cooley ultimately opposed.

    Here are the facts the TTAB had to work with:

    • 1987: Opposer left the band
    • 1988: Both applicants left the band
    • 1990: The band ceased performing altogether for 10 years
    • 2002: Opposer Cooley auditioned musicians and started rehearsing
    • May 17, 2003: Cooley had her first performance as “Klymaxx featuring original guitarist Cheryl Cooley”
    • November 21, 2003: Applicants Cooper and Irby claim to have started performing as Klymaxx
    • A statement that the original band had no formal legal entity
    • Documentary evidence purporting to show the use of “Klymaxx” for reunion performances by the original members in 2003 and 2004*
    • A copy of a letter purportedly on behalf of three of the original band members not involved in the opposition stating “we question [applicants’] proposed ‘ownership’ of this business name.”

    There were procedural complications in the opposition too; at some point applicant Irby disappeared, and so while Cooley and Cooper agreed on abandoning the application, the application couldn’t be abandoned because Irby was a joint owner and hadn’t formally agreed. (Demonstrating once again, should you have had any doubt, that joint ownership by individuals is a bad, bad idea.)

    So how do you decide who owns the mark? Cooley would make it a question of priority in 2003 only, but it’s not that simple. First, the parties hadn’t provided enough information to determine whether there was an abandonment between 1990 and 2003. Just because a band ceases to perform doesn’t mean that they weren’t still using the name to promote previously recorded albums.

    As to the competing ownership claim, the TTAB cited Rick v. Buchansky, Wrist-Rocket Mfg. Co. v. Saunders and yours truly as suggesting questions courts might consider when deciding which competing party is the owner of a disputed trademark. The information that is missing here:

    • because neither the Solar Agreement nor any other agreement between the parties is of record, it is unclear whether there are any contractual rights relating to the ownership, use or registration of the KLYMAXX trademark and service mark;
    • while opposer is not aware of any “corporation, limited liability company or other legal entity … in which Opposer and Applicants had or have any joint ownership interest,” that does not mean that there is no such entity which owns or has the right to control the use of the KLYMAXX mark;
    • the record is devoid of any evidence regarding which, if any, of the parties has or had the right to control the parties’ band(s) or any band’s use of the KLYMAXX mark;
    • there is no evidence regarding who “conceived” of the KLYMAXX mark or paid for the band’s advertising and promotion, or which, if any, of the group’s members’ names or likenesses were featured in KLYMAXX’s
      promotional materials;
    • there is no evidence regarding whether the relevant public associates the mark KLYMAXX with one or more of its current or former members, or whether the relevant public instead associates the mark with a style of music or performance, regardless of which individuals make up the band at any particular time.

    Ultimately the decision rested on one Request for Admission that applicant Cooper didn’t dispute at her deposition:

    the Original Members warranted, represented and agreed that the Original Members had the sole and exclusive ownership of all right in and to the name KLYMAXX.

    Irby had said essentially the same thing in a cease and desist letter she sent to Cooley when Cooley was forming her new band, and the settlement that Cooper was willing to sign was consistent with this position also. Thus, because the two applicants Cooper and Irby were not the sole owners of the mark

    but were instead, at most, co-owners of the mark with other band members, who have not provided their consent to applicants’ registration of the mark, the involved application is void ab initio.

    And if there had been an abandonment, Cooper and Irby were not the first users or sole owners of the mark either.

    HT to John Welch at TTABlog for the case.

    Cooley v. Cooper, Opp. No. 91189474 (TTAB Nov. 4, 2013).

    *The applicants didn’t make any hearsay objections, but the Board made a general statement that it only considered admissible evidence in its decision.

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    One Response to If There’s No Evidence, How Do You Decide?

    1. Pingback: TTAB Sustains Opposition to KLYMAXX in Band Name Ownership Dispute

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