IP Law Daily, TRADEMARK—TTAB: 1980s rock band The Plimsouls did not abandon mark despite no longer performing together, (May 15, 2024)

By Patricia K. Ruiz, J.D.

TTAB ordered cancellation of former band member’s registered mark.

The Trademark Trial and Appeal Board (TTAB) granted a rock band’s petition to cancel the registration of the mark THE PLIMSOULS, registered by one of the band’s members because the band was the actual owner of the mark. Although the rock band no longer performed together, they had formed a partnership in 1979 that was never disbanded. The TTAB cited non-ownership and likelihood of confusion as the grounds for granting the petition (Plimsouls v. Munoz , No. 92076883 (TTAB May 8, 2024)).

Procedural history. Edward David Munoz, a member of The Plimsouls, a new wave rock band formed in 1979, owns a registration for the mark THE PLIMSOULS, in standard characters, for “entertainment in the nature of live performances by a musical band” in International Class 41. The Plimsouls petitioned to cancel the registration based on its prior use of the same mark for identical services, as well as its use of THE PLIMSOULS for other goods and services such as musical sound recordings. The petitioner’s grounds for cancellation are non-ownership, as well as a likelihood of confusion and fraud. Munoz in his second amended answer denied the salient allegations in the petition for cancellation and asserted as an affirmative defense that the petitioner abandoned the mark THE PLIMSOULS.

The case was identified as suitable for participation in a final pretrial conference under the Final Pretrial Conference Pilot (FPCP) due to the breadth of the pleadings and the fact-intensive nature of the dispute. The parties participated in a FPCP orientation conference, but, rather than drafting a final pretrial conference order as discussed during the orientation, the parties decided to resolve the case through accelerated case resolution (ACR), electing a summary bench trial procedure through summary judgment briefs. The ACR stipulation stated that the TTAB may resolve on the papers any and all issues of material fact that may be presented. The parties also agreed that they may attach to declarations, affidavits, or briefs, (1) materials that, in a typical trial, could be submitted by notice of reliance; and (2) documents produced in discovery. The TTAB approved the ACR stipulation.

Record. According to the record, Peter Case, David Pahoa, and Louis Ramirez founded the Plimsouls in California in 1979, with Munoz joining the band after the others, though he is considered an original member. All four members view the band as a partnership and continue to receive royalties on the sales or streams of the Plimsouls’ recordings. With one exception, every Plimsouls release featured all four original members, including in cover photographs. In 1984, Case stepped away from the Plimsouls to focus on his solo career, telling his partners he had no objection to them continuing to perform as the Plimsouls. The band went on an extended hiatus before releasing a live album in 1988 and rereleasing some previous recordings. All four members collected royalties on the music during this period. The band released its third studio album in 1998 with Case but without Ramirez. In 1997, the band played its last show before another extended break. During breaks from performing, the band released recordings in new formats and collected royalties.

Munoz did not contact Case or Ramirez before applying to register THE PLIMSOULS. However, he discussed the matter with Pahoa, who told him he should not file the application because the name belonged to the partnership, not to any individual member. When asked why he applied for registration of the mark, Munoz testified he was frustrated because the band was being offered shows continuously but that Case had turned them down. Since the registration was issued, Munoz played Pimsouls songs as “The Plimsouls” with musicians other than Case, Pahoa, and Ramirez.

Entitlement to statutory cause of action. Entitlement to a statutory cause of action is a requirement in every inter partes case. To establish entitlement to a statutory cause of action, a plaintiff must demonstrate (1) an interest falling within the zone of interests protected by the statute; and (2) a reasonable belief in damage proximately caused by continued registration of the involved mark. The TTAB found no doubt that a band is entitled to seek cancellation of a registration for its own name, especially when the registration is owned by another performer that plays the same exact songs. Munoz argued, however, that the petitioner has not produced any evidence to show that it is a firm or corporation organized under the law of California or any other state or foreign country and has not produced evidence sufficient to prove that it is a subsisting partnership under California law.

The TTAB disagreed with Munoz’s argument, noting that, under California law, the association of two or more persons to carry on as co-owners of a business for profit forms a partnership, whether or not the persons intend to form a partnership; a person who receives a share of the profits of a business is presumed to be a partner in the business. All four persons, including Munoz, associated in California to carry on a for-profit business (the band), which profited form live musical performances and musical sound recordings. All four band members continue to receive shares of the band’s profits. Thus, the four of them are partners under California law, and the absence of a formal partnership agreement is immaterial. Additionally, Munoz’s argument that the partnership dissolved is unsupported by evidence, as none of the partners expressed the will to dissolve and wind up the partnership business, despite Case’s decision to step away from the band to focus on his solo career—an artistic decision but not a business decision. Notably, all four members discussed the possibility of performing live together in the future. Because there is no evidence that the Plimsouls partnership ever dissolved, the band is entitled to request cancellation of the involved registration for its name.

Abandonment. The TTAB found the petitioner has not abandoned the involved and pleaded ownership of the mark THE PLIMSOULS, noting that rights in a mark signifying a singing group are not abandoned by the owner upon the group’s disbandment, so long as the owner continues to receive royalties from the sale of the group’s previously recorded material.

Ownership of mark. The crux of the case is which party owns the mark THE PLIMSOULS, because only the owner of a mark may file an application to register it. An application filed by one who is not the owner of the mark sought to be registered is a void application. There are generally three main factors to be considered in ownership disputes surrounding service marks as between a departing member and the remnant group: (1) the parties’ objective intentions or expectations; (2) who the public associates with the mark; and (3) to whom the public looks to stand behind the quality of goods or services offered under the mark. The petitioner bears the burden of proving by a preponderance of the evidence that Munoz does not own THE PLIMSOULS.

The TTAB found it clear that the parties intended to form and jointly benefit from the partnership and that all of the members had an equal say, earned profits, and received equal billing on album covers. Munoz cannot reasonably dispute that he and his bandmates objectively intended and expected that the band would own the mark THE PLIMSOULS. The TTAB concluded that Munoz cannot continue to earn royalties from the band and exclusively own the band’s mark when the record reveals the parties’ joint intention and expectation since 1979 that they would own the mark THE PLIMSOULS together, in partnership. The record is also clear that the public associates the mark THE PLIMSOULS with the group, not just its lead guitarist, the TTAB found. Finally, the public will look to the petitioner to stand behind the quality of goods or services offered under THE PLIMSOULS. Thus, the petitioner owns the mark, and Munoz does not, making Munoz’s application to register THE PLIMSOULS void ab initio, the TTAB held.

Likelihood of confusion. Finally, the TTAB found that a likelihood of confusion exists because the parties are using the same mark for competing musical groups and because the petitioner’s sound recordings and Munoz’s performances draw upon the same source of consumer goodwill.

The Case is Cancellation No. 92076883.

Judge: Adlin, M.

Attorneys: Chris Paparella (Steptoe LLP) for The Plimsouls. Tareef Chamaa (Chamaa Law LLC) for Edward David Munoz.

Companies: The Plimsouls

Cases: Trademark USPTO