This article first appeared in Entertainment Law Matters, a Frankfurt Kurnit legal blog.
Cab Calloway was a famous jazz singer and band leader responsible for several iconic hits in the 1930s and 40s, including Minnie the Moocher. Defendant Christopher W. Brooks, the eldest grandson of Calloway, and Plaintiff Creative Arts by Calloway, LLC, comprising of Calloway's daughters, son-in-law, and widow, have been involved in a trademark dispute over the mark CAB CALLOWAY since at least as early as 2009.
In 2009, Brooks opposed Plaintiff's United States Patent and Trademark Office application for the mark CAB CALLOWAY based on Brooks' prior use of THE CAB CALLOWAY ORCHESTRA. Although Plaintiff filed its "intent to use" ("ITU") trademark application in 1999, Brooks alleged he had been performing under THE CAB CALLOWAY ORCHESTRA, as a Cab Calloway tribute band, since 1998. The Trademark Trial and Appeal Board ("TTAB") found for Brooks based on his prior use of the mark and a likelihood of confusion between the marks.
Plaintiff appealed the TTAB decision to the Southern District. In Creative Arts by Calloway, LLC v. Brooks, No. 09-CV-10488 (CS) (S.D.N.Y. Dec. 27, 2012), Brooks raised new issues regarding the validity of Plaintiff's rights in its ITU CAB CALLOWAY application. In 2001, the ITU application for CAB CALLOWAY was assigned from Mrs. Calloway to the Plaintiff. The Lanham Act generally prohibits the transfer of an "intent to use" trademark application unless the assignment is accompanied by an amendment to allege use or a verified statement of use. However, an "intent to use" application can be assigned without use if it is assigned "to a successor to the business of the applicant, or portion thereof, to which the mark pertains, if that business is ongoing and existing." 15 U.S.C. § 1060(a)(1). This is referred to as the Lanham Act's "anti-trafficking" provision and it is in place to prevent individuals from filing and selling ITU applications when they have no intent to use the mark in commerce (much like a cyber-squatter).
Plaintiff argued their business was "ongoing and existing" as a result of several activities including: (1) authorizing a license to sell clothing bearing the mark CAB CALLOWAY, (2) founding the Cab Calloway Foundation, (3) commencing negotiations for a Broadway musical based on Calloway's music and life story, (4) licensing and receiving royalties from Calloway's musical compositions, and (5) retaining professionals to aid with management and enforcement of Calloway's rights. But the Court disagreed, ruling that those activities did not amount to an ongoing and existing business. Thus, the 2001 assignment of the ITU application from Mrs. Calloway to Plaintiff was invalid.
This decision is a reminder that it is critical to pay attention to chain of title issues during the trademark registration process and that there are various minefields that can be avoided when making a trademark assignment.
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