• The Drifters, Yet Again

    by  • March 22, 2015 • trademark • 0 Comments

    One thing that’s sure to make my eyes roll back into my head is the word “Drifters” in a case caption. Westlaw has 13 cases listed, 8 federal, 3 state and 2 TTAB. Now the TTAB has had another crack at it, including looking at evidence that goes all the way back to the very first case, filed in 1958 or so.

    In today’s case we have a registration for BILL PINKNEY’S ORIGINAL DRIFTERS owned by Original Drifters, Inc., against which a petition to cancel was filed based on senior use of, and an application for, THE DRIFTERS owned by Treadwell Original Drifters, LLC. The parties are in TTAB circular hell, that is, an application for THE DRIFTERS was filed first, in 1989, by Treadwell Drifters, Inc. (presumably a predecessor to the petitioner here), the application was suspended for 12 years, BILL PINKEY’S ORIGINAL DRIFTERS successfully opposed it when it ultimately published, BILL PINKEY’S ORIGINAL DRIFTERS was then registered, and now Treadwell Original Drifters has opposed BILL PINKEY’S ORIGINAL DRIFTERS after having filed another application for THE DRIFTERS, which stands refused because of a likelihood of confusion with BILL PINKEY’S ORIGINAL DRIFTERS. (Got all that?)

    The type of proceeding is important: because it’s a cancellation, the registrant, Original Drifters, is entitled to the prima facie presumption that the mark is valid, that it owns the mark, and that it has exclusive use of the mark for the services identified in the registration. Treadwell Original Drifters has to rebut the presumptions and establish its case, based on priority and likelihood of confusion, by a preponderance of the evidence. If Treadwell Original Drifters successfully does so, then the burden of proof shifts back to the Original Drifters. But the decades that this dispute has been going on is essentially the death knell for Treadwell Original Drifter’s case.

    The parties agree that the original musical group “The Drifters” was formed in 1953 by singers Clyde McPhatter, Bill Pinkney, Andrew Thrasher and Gerhart Thrasher. The first of petitioner’s theories was that George Treadwell, who was a manager of the group, co-founded the group in 1953 with the then-president of Atlantic Records and singer Clyde McPhatter. Tina Treadwell is George Treadwell’s daughter and the president of the petitioner. She testified that

    The Drifters wasn’t a group that started in terms of four guys getting together and saying we are going to be The Drifters. It was a corporate entity that was begun by Clyde and my father, they chose the employees that came to be, you know, that sang with him. And it was always a group around the lead singer.

    Although “oral testimony, even of a single witness, if sufficiently probative, may suffice to prove priority,” “we also bear in mind that, as one who was born in 1958, Tina Treadwell has no personal knowledge of events that occurred before then.” A website that related the story of the The Drifters was equally unreliable, “we cannot logically view these web pages as corroborating or otherwise reinforcing the testimony of Tina Treadwell, because she testified that she manages and controls the content of the website.”

    And Team Pickney had first person testimony, from Pickney himself in the earlier opposition and from an agent for the band, that Treadwell had no part in the 1953 Drifters, as well as testimony from the 1958 dispute that the original members considered the name theirs. So the theory that Treadwell was part of the original group, and therefore had an interest in the name, failed

    [W]e find that Petitioner failed to demonstrate, by a preponderance of the evidence, that George Treadwell acquired trademark rights in the mark THE DRIFTERS through the formation of the Group in 1953. Rather, the evidence suggests that Respondent’s predecessor, Bill Pinkney, and the other singers who were members of the Group in 1953, shared in trademark rights that arose when the Group began to perform in 1953. Although the form of their ownership is unclear (e.g., partnership, joint ownership, unincorporated association), it is clear that trademark rights would have arisen upon the first performance of services under the mark, under common law principles, and Petitioner has not presented any evidence or argument to persuade us otherwise.

    The second theory was that a predecessor corporation, The Drifters, Inc., acquired the trademark rights, but that theory had a chain of title problem—from whom would they have been acquired? George Treadwell bought into the original corporation, but there was no evidence that the company owned the name and, to the contrary, evidence that the original members disputed having given the original corporation the name:

    The evidence shows that the Group was performing and recording under the name THE DRIFTERS in 1953, and the corporation was not formed until 1954. The formation of a corporation in 1954 could not create trademark rights in the name THE DRIFTERS when the Group had performed and recorded under that name in 1953, and there is no reliable evidence or testimony that anyone transferred ownership of that name to the corporation. Accordingly, we find that Petitioner has failed to demonstrate by a preponderance of the evidence that any incidents connected with the incorporation of The Drifters, Inc. resulted in ownership of the mark THE DRIFTERS by George Treadwell or any other predecessor of Petitioner.

    Third, Treadwell Original Drifters claimed that Pickney assigned his rights in the name after he became an employee of the original corporation. But even assuming Pickney signed an employment agreement, in contrast to later versions, his agreement didn’t assign anything.

    And finally we have the classic ownership theory for band names, that the trademark owner of the band name doesn’t have to be a performer but can be the one who exercises control over the group. But there was no evidence that Treadwell actually exercised any control, much less enough to have appropriated the trademark away from Pinkney given his prior ownership rights.

    All told, we have a lot of different theories, and evidence on both sides, but given the presumption in favor of BILL PICKNEY’S ORIGINAL DRIFTERS it wasn’t enough to cancel the registration. Bets on the next round?

    “Property, Intangible®, reading too many cases so you don’t have to.℠”

    Treadwell Original Drifters, LLC v. Original Drifters, Inc., Cancellation No. 92052155 (TTAB March 5, 2015).

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