Estta1047965 04/08/2020 in the United States Patent And
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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.