From June through August 2015, the Trademark Trial & Appeal Board issued eleven precedential decisions.  Over the course of the upcoming weeks, we are briefly summarizing each opinion and a “take away” for brand owners and practitioners.  We continue our series with a summary of Wonderbread 5 v. Gilles.

Wonderbread 5 v. Gilles – Whose Band Is It?

Petitioner – a partnership composed of the band members of Wonderbread 5, a Jackson Five cover band, and its manager – petitioned to cancel a former member’s registration of the band name in Class 41 on the grounds that Respondent’s registration is void ab initio for lack of ownership of the mark, fraud, and likelihood of confusion. The Board did not reach the final two claims, holding that “when both parties are relying upon activities the two conducted in concert with one another, each in an attempt to establish prior rights in a mark over the other, the dispute centers on ownership of the mark.” (emphasis added.)

The Board began its analysis with this fundamental tenet of U.S. trademark law: only the owner of a mark may file an application to register it. Noting that under his recitation of the facts, Respondent and another founding member of the band owned the mark, the Board held that Respondent admitted to not being the sole owner of the mark at the time he filed his application, thereby rendering it void ab initio. Furthermore, the Board identified many other facts reflecting that at or before the time Respondent filed the application, he had been terminated from the partnership.

The Board also considered the “legal framework courts and commentators have developed to deal with the special circumstances that tend to arise in ownership disputes regarding a service mark or name to identify a musical performing group in the absence of a written agreement or other legal formalities clearly delineating such rights.” Said framework begins with the question, “does the mark identify the group regardless of its members?,” or, put another way, “does the mark signify personalities, or style and quality regardless of personalities?” Here, the WONDERBREAD 5 mark was not personal to any of the band members individually but, instead, signified the collective style and quality of the group, i.e., five Caucasian men playing Jackson 5 songs. The evidence of record supported Petitioner’s claim that the partnership, not Respondent, monitored and controlled the style and quality of the band. In short, “the consuming public did not associate the mark WONDERBREAD 5 with Respondent, but rather with the style of a Jackson 5 tribute and costumed in exaggerated 1970s regalia.” Thus, on this basis, as well, Respondent could not establish ownership of the mark at the time he filed his application.

Take Away: When opposing or petitioning to cancel an application or registration, consider whether the applicant or registrant was the owner of the mark at the time of filing.