UMG Recordings, Inc. v. Siggy Music, Inc.

• Decision Date: 19 July 2018
• Docket Number: Cancellation 92053622,Opposition 91200616
• Court: United States Patent and Trademark Office. United States Patent and Trademark Office, Trademark Trial and Appeal Board
• Parties: UMG Recordings, Inc. v. Siggy Music, Inc. Mark Reg. No. Goods

UMG Recordings, Inc. v. Siggy Music, Inc.

Opposition No. 91200616

Cancellation No. 92053622

United States Patent and Trademark Office, Trademark Trial and Appeal Board

July 19, 2018

This Opinion is Not a Precedent of the TTAB

Hearing: July 12, 2018

David Donahue and Jason D. Jones of Fross Zelnick Lehrman &amp Zissu, P.C, for UMG Recordings, Inc.

Charles W. Grimes and Luca L. Hickman of Grimes LLC, for Siggy Music, Inc.

Before Bergsman, Greenbaum and Coggins, Administrative Trademark Judges.

OPINION

BERGSMAN, ADMINISTRATIVE TRADEMARK JUDGE.

Siggy Music, Inc. ("Defendant") has registered on the Principal Register the mark J5 (typed drawing) for "clothing, namely, footwear, shoes, hats, caps, shirts and jackets," in Class 25.^[1]

Defendant also filed an application to register on the Principal Register the mark J5 (standard characters)^[2] for the goods listed below:

Colognes, perfumes and cosmetics, in Class 3;

Jewelry, in Class 14;

Books in the field of entertainment and musical performances; Calendars; Comic books; Gift cards; Musical greeting cards; Posters; Printed music books; Story books; Talking children's books, in Class 16;

Canvas shopping bags; Carrying cases; Gentlemen's handbags; Handbags; Handbags, purses and wallets; Keycases; Leather bags and wallets; Luggage; Purses, in Class 18;

Cups and mugs, in Class 21; and

Card games; Musical toys; Parlor games; Party games; Plush toys; Positionable toy figures; Toy action figures and accessories therefor; Toy cars; Toy furniture; Toy houses; Toy model guitars; Toy pianos; Toy record players; Toy watches, in Class 28.^[3]

UMG Recordings, Inc. ("Plaintiff") filed a petition to cancel Defendant's registration and a notice of opposition to the registration of Defendant's application. Plaintiff claims ownership of Registration No. 2881064 for the mark JACKSON 5 (typed drawing) for "musical sound recordings," in Class 9, ^[4] as well common law rights in the marks JACKSON 5, JACKSON 5IVE and J5 "in connection with musical sound recordings, among other related goods and services."^[5]

In the cancellation proceeding, Plaintiff petitioned to cancel Defendant's registration on the following grounds:

• Defendant's mark for clothing so resembles Plaintiff's mark for musical sound recordings and other goods and services as to be likely to cause confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d);^[6]

• Defendant's mark is likely to dilute the distinctiveness of Plaintiff's marks under Section 43(c) of the Trademark Act, 15 U.S.C. § 1125(c); and

• Defendant has abandoned the use of its mark in connection with clothing.

• Defendant had not used the mark in commerce on any of the identified goods prior to filing the statement of use. ^[7]

Defendant, in its Answer, denied the salient allegations in the Petition for Cancellation. As affirmative defenses, Defendant alleges the following:

• Plaintiff's claims are barred by laches, estoppel and acquiescence;

• Plaintiff has abandoned the use of JACKSON 5, JACKSON 5IVE and J5 in connection with any goods or services other that musical sound recordings;

• Plaintiff is contractually estopped from using JACKSON 5, JACKSON 5IVE and J5 in connection with any goods or services other than musical sound recordings; and

• Plaintiff has abandoned use of JACKSON 5IVE and J5 in connection with musical sound recordings.^[8]

In the opposition proceeding, Plaintiff opposed the registration of Defendant's mark on the following grounds:

• Defendant's mark for the goods identified in the application so resembles Plaintiff's mark for musical sound recordings and other goods and services as to be likely to cause confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d); and

• Defendant's mark is likely to dilute the distinctiveness of Plaintiff's marks under Section 43(c) of the Trademark Act, 15 U.S.C. § 1125(c).^[9]

Defendant, in its Answer, denied the salient allegations in the Notice of Opposition. As affirmative defenses, Defendant alleges the following:

• Plaintiff has abandoned the marks JACKSON 5, JACKSON 5IVE and J5 in connection with any goods or services other than musical sound recordings;

• Plaintiff is contractually estopped from using THE JACKSON-FIVE in connection with any goods or services other than musical sound recordings; and

• Plaintiff abandoned the marks JACKSON 5IVE and J5 in connection with musical sound recordings.

Proceedings were consolidated in the Board's May 9, 2012 order.^[10]

I. The Record

The record includes the pleadings and, by operation of Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), Defendant's application and registration files.

The parties have stipulated to the following:

• Documents Defendant produced in response to Plaintiff's request for production of documents are Defendant's authentic business records;^[11]

• Documents produced by third parties Bioworld Merchandising, Inc. and Remrylie Licensing, Inc. pursuant to subpoenas are authentic business records of those companies;^[12]

• Defendant "gave an exclusive license to J5 Enterprises, LLC … to exploit the J5 trademark in connection with clothing, footwear, and caps (the 'Licensed Rights');^[13]

• "J5 Enterprises engaged Remrylie Licensing, Inc. … to act on J5 Enterprises' behalf to arrange for the exploitation of the Licensed Rights;^[14]

• Remrylie acting on behalf of J5 Enterprises, added Licensed Rights to an overall merchandising and distribution agreement which Remrylie has with Bioworld Merchandising, Inc.;^[15]

• Bioworld, acting on behalf of Remrylie, exercised the Licensed Rights by, among other things, causing the manufacture of clothing bearing the J5 trademark and distributing such clothing to retailers in the United States;^[16]

• Documents produced by third party retailers Urban Outfitters, Inc., Macy's Inc., Target Corporation, Forever 21, Inc., Hot Topic, Inc., and Pacific Sunwear of California, Inc. pursuant to subpoenas are authentic business records of those companies.^[17]

A. Plaintiff's testimony and evidence.

1. Testimony declaration of Brent LaBarge, Plaintiff's "Head of the Trademark Group in the Business and Legal Affairs Department";^[18]

2. Testimony declaration of Harry Weinger, Vice President of A & R (Artists and Repertoire) for Universal Music Enterprises, an unincorporated division of Plaintiff;^[19]

3. Notice of reliance on Plaintiff's pleaded registration printed from the USPTO electronic database showing the current status of and title to the registration;^[20]

4. Notice of reliance on third-party registrations purportedly to show that the goods and services of the parties are related;^[21]

5. Notice of reliance on a copy from the USPTO Assignment Branch of the assignment of the application that became Registration No. 3059241 involved herein to Scruse Investments, Inc. from Futurist Entertainment, Inc.;^[22]

6. Notice of reliance on a copy from the USPTO Assignment Branch of the assignment of Registration No. 3059241 involved herein to Defendant from Scruse Investments, Inc.;^[23]

7. Notice of reliance on excerpts from the discovery deposition of Sigmund Jackson, Defendant's President;^[24]

8. Notice of reliance on Defendant's supplemental responses to Document Request No. 87 stating that "there are no responsive, non-privileged documents";^[25]

9. Notice of reliance on Defendant's supplemental response to Interrogatory No. 28;^[26]

10.Notice of reliance on documents produced by Defendant and stipulated as authentic;^[27]

11. Notice of reliance on documents produced in response to subpoenas duces tecum by third parties Bioworld Merchandising, Inc., Remyrlie Licensing, Inc., Urban Outfitters, Inc., Macy's Inc., Forever, Inc., Hot Topic, Inc. and Pacific Sunwear of California, Inc. that have been stipulated as authentic business records;^[28]

12. Notice of reliance on documents printed from the Internet purportedly to show the fame of Plaintiff's marks;^[29]

13. Notice of reliance on printed publications purportedly to show the fame of Plaintiff's marks;^[30] and

14. Rebuttal testimony declaration of Brent LaBarge, "Head of the Trademark Group in the Business and Legal Affairs Department" of Plaintiff.^[31]

B. Defendant's testimony and evidence.

1. Notice of reliance on excerpts from the discovery deposition of Sigmund Jackson purportedly which should in fairness be considered so as to not make misleading what was offered by Plaintiff;^[32]

2. Testimony declaration of Sigmund Jackson;^[33] and

3. The cross-examination testimony of Sigmund Jackson.^[34]

II. Background

In the 1960's, the Jackson brothers Michael, Jermaine, Toriano Marlon and Sigmund Jackson began performing together as a musical group under the name the JACKSON 5.^[35] Plaintiff's predecessor-in-interest (jointly referred to as "Plaintiff") signed the Jackson brothers to a contract on March 11, 1969.^[36] The March 1969 recording contract, as well as the 1980 Settlement Agreement and Mutual Release, discussed more fully below, include provisions regarding the ownership of the marks at issue herein. Both documents were designated as confidential in their entirety. Fed.R.Civ.P. 26(c)(7) protects confidential, trade secret and commercially sensitive information by allowing a party to limit the access to trade secret or other confidential information or by permitting the information to be revealed only in a designated way. The Advisory Committee Notes to the 1970 Amendment explain that the Rule does not provide complete immunity against disclosure; rather, in each case, the need for privacy must be weighed against the need for disclosure. Therefore, in rendering our decision, we will not be bound by the parties' designation. See Trademark Rule 2.116(g), 37 C.F.R. § 2.116(g) ("The Board may treat as not...