Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1047965 Filing date: 04/08/2020
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 77119123 Applicant Treadwell Original Drifters, LLC Applied for Mark THE DRIFTERS Correspondence Dickerson M. Downing Address Law Offices of Dickerson M Downing 243 TRESSER BOULEVARD, 17TH FLOOR STAMFORD, CT 06901 UNITED STATES [email protected] 203 355-3620
Submission Appeal Brief Attachments Appeal Brief for Applicant.pdf(164798 bytes ) Filer's Name Dickerson M Downing Filer's email [email protected], [email protected] Signature /dmd/ Date 04/08/2020 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Applicant: Treadwell Original ) Drifters, LLC. ) Trademark Law Office: 117 Serial No.: 77/119123 ) ) Examining Attorney: Cory Boone Filing Date: February 28, 2007 ) ) Mark: THE DRIFTERS )
APPEAL BRIEF FOR APPLICANT
Applicant Treadwell Original Drifters, LLC (“Applicant”) submits this brief in support of
its appeal from the refusal to register the mark THE DRIFTERS for “Pre-recorded records,
audiotapes and compact discs featuring music” in International Class 9 and “Entertainment
services, namely, live performances by a musical band; Presentation of musical performances in
the nature of production, planning and arrangement; Music publishing services; Music production
services” in International Class 41. (“Application”)
The Application has been refused registration by the Examining Attorney, under Section
2(d) of the Trademark Act (15 U.S.C. §1052(d)) , on the ground it is believed to be likely to cause
confusion with United States Trademark Registration No. 3649096 for BILL PINKNEYS
ORIGINAL DRIFTERS and Design for “Entertainment services in the nature of live performances by a musical group” in International Class 41. (“Pinkney Registration”). The
Pinkney Registration was filed by Willie B. Pinkney and is currently owned by Original Drifters,
Inc. (“Registrant”).
The question of whether a likelihood of confusion exists is the sole issue on appeal.
Applicant did not directly address the issue in the course of the application.
1
Description of the Record
The record consists of the file history of United States Trademark Application No. 77-
119123 for THE DRIFTERS as shown on the USPTO TSDR database and the file history of
this appeal proceeding as shown on the USPTO TTABVUE database.
In accordance with 37 CFR 2.142(c), Applicant states it believes it has complied with
all registration requirements set forth by the Examining Attorney that are not the subject of this
appeal.
Statement of Facts
In view of the complex history of this application, a brief summary of that history may be helpful. This summary will focus on issues relevant to this appeal and shall ignore other technical or non-substantive issues that may have arisen but were resolved. Applicant submits this summary can also serve as a Statement of the Facts.
Applicant filed this Application on or about February 28, 2007. See February 28, 2007
Application TSDR.
On June 18, 2007, an Office Action issued noting the possibility that the then pending application to register BILL PICKNEY’S ORIGINAL DRIFTERS and Design (SN 75-469250)
(“Pinkney Application”), may be cited as a bar to registration of this Application pursuant to
Section 2(d) of the Trademark Act. The Pinkney Application had been filed by Willie B.
Pinkney, a predecessor in interest to Registrant. See June 18,2007 Office Action Outgoing
TSDR.
On January 28, 2007, this Application was suspended pending the ultimate disposition of the Pinkney Application. See January 28, 2007 Suspension Letter TSDR.
2 This Application remained in suspension for seven years.
In the interim, a registration was granted for the Pinkney Application on July 7, 2009.
Applicant subsequently petitioned to cancel the resulting Pinkney Registration. (Cancellation
No. 92-052155). (“Cancellation Proceeding”)
On October 13, 2014, an Office Action issued refusing registration of this Application
on the grounds it was deemed likely to cause confusion with the Pinkney Registration. See
October 13, 2014 Office Action Outgoing TSDR.
In the same Office Action, the Examining Attorney inquired as to the relationship
between Applicant and the music group The Drifters:
Specifically, applicant must describe itself as it relates to the famous music group
The Drifters. As the attached evidence demonstrates, the group has had many
members and competing claims of rights to use the name. The applicant must
explain whether it is composed of any performing members from any point in the
group’s history. If it is not, it must explain from where its rights are believed to
derive, ideally with evidence of the basis for such claims. See October 13, 2014
Office Action Outgoing Page 4.
The evidence, relied on by the Examining Attorney, consisted, in part, of a copy of
Wikipedia pages for The Drifters and Bill Pinkney. The Drifters page discusses the history of the group and the respective roles of the predecessors in interest to Applicant (George Treadwell the manager of The Drifters) and Registrant (Bill Pinkney an early member of The Drifters) and
describes some of the disputes that have arisen over the years regarding ownership to The Drifters
name. Both pages note that Mr. Pinkney left The Drifters in approximately 1958 and, at some point
continued to perform under the name Bill Pinkney’s Original Drifters or Original Drifters. Both
3 pages also note that the group The Drifters – with a variety of different performers – continued as a group and went on to record some of their biggest hits including “Save the Last Dance for Me”,
“This Magic Moment”, “Under the Boardwalk”, “Up on the Roof” and “On Broadway”. See
October 13, 2014 Office Action Outgoing TSDR Pages 13-22.
In responding to the October 13, 2014 Office Action, Applicant informed the Examining
Attorney it was currently involved in the Cancellation Proceeding against the Pinkney Registration
Applicant further noted that judgment had been entered against Applicant, based on priority of use,
by the Trademark Trial and Appeal Board (“TTAB”) and Applicant plans to appeal. See TSDR
April 13, 2015 “Response to Office Action” TSDR Page 3
In the same response, Applicant also noted it is the successor-in-interest to George
Treadwell, the former manager of The Drifters, and his successors whose rights in the name The
Drifters have been recognized by a United States District Court Judge in an action entitled Marshak v. Treadwell, 58 F. Supp. 2d 551 (D.N.J. 1999), aff’d, 240 F.3d 184 (3d Cir. 2001). See April 13,
2015 “Response to Office Action” TSDR Page 4
Applicant did appeal the adverse TTAB decision by filing a civil action in the United States
District Court for the Eastern District of Virginia in case entitled Treadwell Original Drifters, LLC v.
Original Drifters, Inc. 15-cv-00580-LO-TCB. (“Civil Action”)
Following an exchange of communications, the Examining Attorney suspended this
Application, on October 19, 2015 pending the disposition of the Civil Action. See October 19, 2015
Suspension Letter TSDR.
The application remained in suspension as the Civil Action continued. The Civil Action ultimately resulted in judgments adverse to Applicant in both the District Court and Fourth Circuit
Court of Appeals. On September 19, 2017, after being informed by Applicant of the termination of the Civil Action, the Examining Attorney issued a Final Office Action repeating the refusal to
4 register this Application based on a likelihood of confusion with the Pinkney Registration. See
September 19, 2017 Office Action TSDR.
On or about March 19, 2018, Applicant filed a Notice of Appeal from the final refusal to
register commencing this appeal. See TTABVUE 1 March 19, 2018 Appeal to Board.
At the same time, Applicant filed a Request for Reconsideration of the refusal to register,
requesting suspension of this Application pending the disposition of yet another civil action
regarding The Drifters name. That dispute was an arbitration proceeding involved Larry Marshak on
the one hand, and Registrant and the Estate of William Pinkney, on the other. The dispute, Case
Number 01-16-000-3521, had been pending with the American Arbitration Association since
February of 2016. (“Arbitration Proceeding”) One of the issues raised in the Arbitration Proceeding
involved the question of what rights as between the parties, if any, Registrant had to the names and
marks Bill Pinkney’s Original Drifters and The Original Drifters and The Drifters. One of the
factors to be weighed involved the interpretation of a 1996 Consent Order giving Mr. Marshak the
right to use The Drifters name and giving Mr. Pinkney the right to use the names Bill Pinkney’s
Original Drifters and Original Drifters. See March 19, 2018 TEAS Request for Reconsideration
after FOA TSDR Pages 16-22 and TTABVUE 4 Request for Reconsideration.
On December 10, 2019, in response to a Suspension Inquiry, Applicant informed the
Examining Attorney that the Arbitration Proceeding had been terminated. See December 10, 2019
TEAS Response to Suspension Inquiry TSDR.
On January 28, 2020, the Examining Attorney issued an Order denying Applicant’s prior request for reconsideration. See January 28, 2020 Reconsideration Letter and TTABVUE 5
Reconsideration Denied.
On February 8, 2020 this Board issued an Order commencing the appeal proceeding. See
February 8, 2020 TTABVUE 6 Proceedings Resumed.
5 Argument
For the reasons set forth below, Applicant contends the marks THE DRIFTERS and BILL
PICKNEY’S ORIGINAL DRIFTERS can co-exist on the Principal Register of the United States
Trademark Register without consumer confusion. Applicant acknowledges this position is contrary to the position taken in prior proceedings involving Registrant or its predecessors in interest but
Applicant now believes it is the correct one. As noted, Applicant did not take a position with respect to the issue of likelihood of confusion in this application.
As the Examining Attorney noted, in referencing some information obtained from Wikipedia and other sources, The Drifters “has had many members and competing claims of rights to use the name.” No one can possibly dispute this conclusion.
The material relied on by the Examining Attorney includes Wikipedia pages indicating that
Mr. Pinkney left the group in approximately 1958 and, at some point continued to perform under the name Bill Pinkney’s Original Drifters or Original Drifters. They also note that the group The
Drifters – with a variety of different performers – continued as a group and went on to record some
of their biggest hits including “Save the Last Dance for Me”, “This Magic Moment”, “Under the
Boardwalk”, “Up on the Roof” and “On Broadway” after Mr. Pinkney’s departure
Applicant recognizes that material taken from Wikipedia and the like cannot be used to prove
the truth of the matter asserted. However, it can be used as evidence of how a term or mark may be
perceived by the public. TBMP 1208.01
In this case, Applicant submits, it is a well-known part of the legend of The Drifters.
Applicant submits the material relied on by the Examining Attorney suggests the relevant
public in the United States, is aware, just as the Examining Attorney is aware, that the music group
The Drifters has had many members and there have been many competing claims to the right to use
the name. Applicant further submits fans of the group and other members of the relevant public are
6 aware Mr. Pinkney left the group relatively early and The Drifters continued on without him to
record some of their better known songs. And Mr. Pinkney continued to perform under the name Bill
Pinkney’s Original Drifters or possibly Original Drifters to distinguish his group from The Drifters.
The very name Original Drifters suggests there is another group known as The Drifters.
As the information on the Arbitration Proceeding indicates, one of the issues raised involved the interpretation of a 1996 Consent Order giving Larry Marshak1 the right to use The Drifters name and Mr. Pinkney the right to use Bill Pinkney’s Original Drifters and Original Drifters names. The
Agreement envisioned the coexistence of The Drifters and Bill Pinkney’s Original Drifters without
confusion and, in fact, the two groups did co-exist.
Applicant submits any evaluation of likelihood of confusion in this particular case must be
viewed in the context of the history of The Drifters and the public perception of the history of The
Drifters. In that context, Mr. Pinkney wished to distinguish his new group from The Drifters and he
did so by adopting the name Bill Pinkney’s Original Drifters. Under these unusual circumstances, it
is respectfully submitted, the public in the United States, does recognize the difference.
A determination of likelihood of confusion under Section 2(d) is made on a case-by-case
basis. In what has been referred to as the “seminal” decision of In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (“DuPont”), the Court listed the
principal factors to be considered when determining whether there is a likelihood of
confusion. Among these factors are the similarity of the marks as to appearance, sound,
1 Mr. Marshak claimed ownership rights in The Drifters name and Mr. Pinkney may have believed Mr. Marshak owned The Drifters name at the time. As indicated, however, a predecessor in interest to Applicant subsequently established superior rights in The Drifters mark to Mr. Marshak. See Marshak v. Treadwell, 58 F. Supp. 2d 551 (D.N.J. 1999), aff’d, 240 F.3d 184 (3d Cir. 2001). See April 13, 2015 “Response to Office Action” TSDR Page 4
7 connotation, and overall commercial impression, the relatedness of the goods and/or services, and
the similarity of trade channels of the goods and/or services. In re Viterra Inc., 671 F.3d 1358,
1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012). See TMEP §1207.01 et seq.
Here there is no question both marks incorporate the term Drifters and are used for similar
services. However, that does not end the analysis.
To the contrary, not all the DuPont factors are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record. Citigroup
Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 1355, 1356, 98 USPQ2d 1253, 1260 1261 (Fed.
Cir. 2011); see DuPont, 476 F.2d at 1361-62, 177 USPQ at 567.
As the DuPont Court cautioned, "[t]here is no litmus rule which can provide a ready guide to all cases." 476 F.2d at 1361, 177 USPQ at 567. See TMEP 1207.01
Furthermore, the significance of a particular factor may differ from case to case. See DuPont,
476 F.2d at 1361-62, 177 USPQ at 567-68; In re Dixie Rests., Inc., 105 F.3d 1405, 1406-07, 41
USPQ2d 1531, 1533 (Fed. Cir. 1997) (noting that "any one of the factors may control a particular
case"). As has been recognized, there is no mechanical test for determining likelihood of confusion
and "each case must be decided on its own facts." Du Pont, 476 F.2d at 1361, 177 USPQ at 567. See
TMEP 1207.01
In some cases, a determination there is no likelihood of confusion may be appropriate, even
where the marks are similar and the goods/services are related, because these factors are outweighed
by other factors, such as differences in the relevant trade channels of the goods/services, the
presence in the marketplace of a significant number of similar marks in use on similar
8 goods/services, the existence of a valid consent agreement between the parties, or another
established fact probative of the effect of use. Italics added. See TMEP 1207.01.
The last factor –another established fact probative of the effect of use - is sometimes referred to as the thirteenth DuPont factor.
For example, in In re Strategic Partners, Inc., 102 USPQ2d 1397 (TTAB 2012) , the TTAB
reversed a refusal to register the mark ANYWEAR (in stylized text), for "footwear," finding no
likelihood of confusion with the registered mark ANYWEAR BY JOSIE NATORI (and design), for
"jackets, shirts, pants, stretch T-tops and stoles." Given the similarity in the marks and the
relatedness of the goods, the Board stated "under usual circumstances" it would conclude confusion
is likely to occur; however, an "unusual situation" compelled the Board "to balance the similarities
between the marks and goods against the facts that applicant already owns a registration for a
substantially similar mark for the identical goods, and applicant’s registration and the cited
registration have coexisted for over five years." Id. at 1399. Applicant’s prior registration of
ANYWEARS for goods including footwear was substantially similar to the applied-for mark
ANYWEAR for the same goods, and the registration had achieved incontestable status. Id. Basing
its decision on the thirteenth DuPont factor, which relates to “any other established fact probative of
the effect of use," the TTAB determined this factor outweighed the others and confusion was
unlikely. Id. at 1399-1400 (quoting DuPont, 476 F.2d at 1361, 177 USPQ at 567). See TMEP
1207.01.
This is analogous to the situation here.
Here the parties did co-exist under the names The Drifters and Bill Pinkney’s Original
Drifters and Mr. Pinkney can be assumed to have believed the addition of “Bill Pinkney’s Original”
9 was sufficient, under these circumstances to distinguish his mark from The Drifters. Indeed, as the
Examining Attorney has noted there is some reason to believe Mr. Pinkney’s name is known to fans
of The Drifters and possibly the public at large – a factor that further distinguishes the two marks.
For these reasons, Applicant submits that in these unusual circumstances and in the context
of the history of The Drifters and Mr. Pinkney, the application of the thirteenth DuPont factor
warrants a finding of no likelihood of confusion.
In addition, as the Examining Attorney also has noted, the overriding concern in refusing an
application based on likelihood of confusion, is not only to prevent buyer confusion as to the source
of the goods and/or services, but to protect the registrant from adverse commercial impact due to use
of a similar mark by a newcomer. See September 15, 2017 Office Action Outgoing TDRS Page 1
(Italics Added) In this case, however, Applicant is by no means a newcomer. To contrary,
Applicant’s heritage dates back to the very early days of The Drifters. Therefore, this concern is not
at issue here.
Conclusion
For all the foregoing reasons, Applicant submits the Examining Attorney's refusal should
be reversed and the Application to register the mark THE DRIFTERS should be passed to publication.
/dmd/ Dickerson M. Downing Law Offices of Dickerson M. Downing 243 Tresser Boulevard, 17th Floor Stamford, CT 06901 [email protected] (203) 355-3620 (203) 249-8064 (Cell)
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