IP Law Daily, TRADEMARK—TTAB: Band manager cannot show prior use of SPLIT DECISION mark, (Feb 8, 2024)

By Donielle Tigay Stutland, J.D.

The Trademark Trial and Appeal Board dismissed the opposition to the registration of a band’s name by a former manager, finding the Opposer did not show prior ownership rights.

The Trademark Trial and Appeal Board (TTAB or the “Board”) dismissed an opposition to registration of the mark SPLIT DECISION, for “entertainment services in the nature of live visual and audio performances, namely, musical rock band,” in International Class 41. The Board found that the Opposer, Billy Stott, had failed to meet his burden of proving by a preponderance of the evidence that the Applicant does not own the registered mark SPLIT DECISION. The Board also concluded that the Opposer failed to establish that he had prior ownership rights in SPLIT DECISION, which is an essential predicate to a Section 2(d) claim (Stott v. Split Decision Music, LLC, January 31, 2024, Heasley, D.).

Background. Split Decision is the name of a cover song band that originated in Philadelphia around 1990. The band originally had two members, but grew to a five-member, full-time band and still performs in clubs and casinos, as well as at weddings, private parties, and corporate events. The two original members, the guitarist and the keyboard player, came up with the name for the band. After adding a drummer to the band, the drummer connected the band to the Opposer, Mr. Stott, who was known to be a manager of other local bands. Mr. Stott operated a sole proprietorship called Billy Stott productions, and somewhat later, another entity called Starfield Entertainment, through which he provided booking and management services.

Mr. Stott acknowledged that prior to his association with the group, the two founding members created the band name SPLIT DECISION, performed under that name about twice a month, for about $200 per performance, and recruited the three other band members. In 1991, Mr. Stott conferred with the band members about whether to change the band’s name, but he and the band members decided to retain the name SPLIT DECISION, as it was already in use and had garnered name recognition. Mr. Stott’s was involved in the band’s operations from 1991 until they parted ways in 2018.

In 2015, the band members authorized their leader, Douglas Moore, to form Split Decision Music, LLC (the Applicant), in the State of New Jersey in order to conduct the SPLIT DECISION band’s business affairs. After the business entity was formed, the Applicant paid the band members for their performances as independent contractors and paid Opposer Stott his commissions as an independent contractor.

The five remaining band members have continued performing as the cover band SPLIT DECISION and authorized Applicant Split Decision Music, LLC to file the subject Application to register the mark SPLIT DECISION. Stott filed an opposition to the application.

Priority Use. The Board noted that the parties' dispute centers on ownership of the SPLIT DECISION mark, which in turn depends upon priority of use in commerce. The TTAB began its analysis by noting that the Opposer has the burden to establish prior ownership by a preponderance of the evidence.

The Board rejected the Opposer’s comparison of this case to Rick v. Buchansky, in which a doo-wop group was formed by the manager. In that case, the manager was found to “not act simply as an agent for the group; he functioned more like the producer of a theater company.” Instead, the Board found the case similar to Bell v. Streetwise Records, Ltd., which related to the boy band New Edition, and also had an ownership dispute over the rights to the name with its first record company. In that case, the singing group began performing for nominal amounts of money in the Boston local entertainment market under the name New Edition, however, the record company contended that New Edition was a “concept group,” like The Monkees or Menudo, whose performers are cast to fill roles created by entities that conceived both the concept and name. In the Bell case, the court found that “they were not, as defendants contend, replaceable actors in a play….” Moreover, “[T]hey existed and performed as New Edition long before [Streetwise released their first album].” “The ‘goods’ therefore are the entertainment services they provide. They and no one else controlled the quality of those services. They own the mark.”

Here, the Board found the facts similar to Bell, as the group Split Decision performed publicly twice a month for a nominal amount—$200 per performance—before the members ever met the Opposer, Mr. Stott. The Opposer pointed to a “Management Agreement” he had certain members of The Rockets and Split Decision sign in or around 2010, which provided that he would own, “that the names of the bands and that the trade secrets and confidential information.” However, the Board disagreed with reliance on the Agreement. First, the band’s rights in SPLIT DECISION predate the Agreement by two decades. The Board also indicated that, “the norm in the music industry is that an artist or group generally owns its own name.” The Board concluded that the band was the “senior user,” and as such had vested priority rights in the name.

Primary member. The Board next considered Opposer’s portrayal of himself as the “primary, non-performing member” of the group. There are 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.

Here the Board looked at various evidence, including testimony from outsiders. For example, according to a Philadelphia nightclub manager who managed several venues at which SPLIT DECISION performed over the course of 20 years, “Billy Stott merely acted as a booking agent for the band.” Further, from 2015, on, band leader Doug Moore handled most of the bookings. It was also highlighted that the band’s promotional posters also listed Stott separately, as the band’s manager, not as a member. The Board concluded that Opposer Stott did not hold himself out to club owners or patrons as a member, much less a “primary, nonperforming member” of SPLIT DECISION.

The Board determined that looking at either perspective—manager versus group or departing member versus remaining group—the group, through its limited liability company, Applicant Split Decision Music, LLC, owns the service mark SPLIT DECISION.

The Case is Opposition No. 91249613.

Attorneys: Glenn C. Romano (Law Office of Glenn C. Romano) for Billy Stott. Carrie Ward (Earp Cohn, PC) for Split Decision Music, LLC.

Companies: Split Decision Music, LLC

Cases: Trademark USPTO