IP Law Daily, TRADEMARK—TTAB: Entity formed by two former members of The Rascals 1960’s rock band lacked authority to register trademark, (Apr 16, 2024)

By Kevin M. Finson

The applicant could not have validly received trademark ownership rights from only two of the four band members when a contract among the four required a majority vote for such a decision.

An entity formed by two members of the popular 1960s rock band The Rascals could not register the band’s name as a mark without the remaining members, Trademark Trial and Appeal Board has held. A prior settlement agreement between the band members prohibited the assignment of trademark rights without a majority vote. Therefore, the applicant have validly received those rights from only two of the four band members when a contract among the four required a majority vote for such a decision (Danelli v. Beata Music LLC , March 29, 2024, per curiam).

Beata Music, LLC (Beata) an entity owned by Felix Caliere and Gene Cornish, two of the former members of the band “The Rascals,” sought registration on an intent-to-use basis of the standard character mark THE RASCALS for “jackets, jerseys, shirts, shorts, sweatshirts, t-shirts and headware” in International Class 25, and “entertainment services in the nature of live performances by a vocal and instrumental group” in International Class 41. The other two founding members of the band, Dino Danelli and Edward Brigati opposed the registration. The case was suspended during the pendency of a district court proceeding on the rights of the various individuals to the Rascals name. Upon resumption of proceedings the opposition was dismissed as to Danelli, who was deceased and whose estate had not shown an interest in the proceeding, and the Board turned to cross motions to dismiss filed based upon the district court’s ruling. The Board construed the motions to dismiss as motions for summary judgment because they relied on matters outside the pleadings.

AI-written brief. The Board began by noting “with extreme disfavor” the almost incomprehensible brief filed by Beata, which was “rife” with misspellings, incomplete or non-sensical sentences, and references to a document which could not be identified. The Board believed this to have been written at least in part by an artificial intelligence (AI) program. Due to the unintelligibility of much of the brief, the Board held that it would consider only those portions that were clearly discernable.

Striking of claims and defenses. The Board reviewed each of the claims and affirmative defenses in the and found several, including likelihood of confusion, estoppel, and acquiescence were simply not applicable to a claim based on disputed ownership of a mark in an intent-to-use registration. These claims and defenses were stricken. The surviving claims were for partial summary judgment on claim preclusion and lack of bona fide intent to use the mark, and the surviving affirmative defense was issue preclusion in connection with the statutory cause of action and contractual estoppel.

Entitlement to a statutory cause of action. The Board held that it was bound by the district court’s ruling that Brigati, the remaining opposer, was one of the joint owners of the prior registrations for the RASCALS and YOUNG RASCALS marks, and therefore was entitled to a statutory cause of action. However, the Board did not find that it was bound by the district court’s ruling that Brigati had lost all interest in this mark by abandonment because that finding was ambiguous, was not necessary for the court’s holding, and because the court had expressly limited its holding to the issue of live performances, not to the apparel at issue in the present case.

Contractual estoppel. The Board found that a 1992 settlement of prior litigation between the parties prohibited the registration. The agreement required that “major decisions” about the exploitation of the band’s assets required the consent of the majority of the members, and the Board found that an exclusive license of the band’s name was clearly a major decision.

The Board sustained the opposition.

The case is Opposition No. 91249965.

Attorneys: Michael B. Kramer (Michael B. Kramer & Associates) for Dino Danelli and Edward Brigati. Eric Bjorgum (Karish & Bjorgum PC) for Beata Music LLC.

Companies: Beata Music LLC

Cases: Trademark USPTO