The Trademark Blues: TTAB Proceedings Do Not Preclude Subsequent Infringement Lawsuits

• Published date: 04 November 2021
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Stark & Stark
• Author: Mr Gene Markin

Beasley. v. Howard is a tale of two musicians fighting over the rights to their band name. 14 F.4th 226 (3d Cir. 2021). In 1969, David Beasley ("Beasley") founded the Camden, New Jersey-based band "The Ebonys." Throughout the 1970s, the Ebonys achieved some commercial success and have continued to perform through the decades. In the mid-1990s, William Howard ("Howard") joined the band, and, in 1997, Beasley obtained a New Jersey state service mark registration for THE EBONYS. After several years of performing together as The Ebonys, Beasley and Howard parted ways, and in 2012, Howard applied for and obtained a federal trademark registration for THE EBONYS. Afterward, Beasley claimed that Howard used the registered trademark to interfere with Beasley's band and business by preventing him from registering a website domain name containing the words "the Ebonys," convincing concert venues not to book Beasley, attempting to collect royalties from Beasley's music, and claiming to be the true founder of The Ebonys.

Fed up, Beasley filed a petition to cancel Howard's federal trademark registration with the Trademark Trial and Appeal Board (the "TTAB") in 2013. Beasley claimed Howard defrauded the trademark office; however, the TTAB found the evidence unpersuasive and dismissed the petition. Four years later, Beasley filed another petition to cancel, and this time argued that Howard's mark should be canceled because it was confusingly similar to Beasley's THE EBONYS mark, which had priority over Howard's mark. Not so fast, said the TTAB, which dismissed Beasley's second petition based on claim preclusion after finding that Beasley could have, and should have, raised the issue of consumer confusion in his first petition. As a legal theory, claim preclusion protects Defendants from "the risk of repetitious suits involving the same cause of action once a court of competent jurisdiction has entered a final judgment on the merits." United States v. Tohono O'Odham Nation, 563 U.S. 307, 315 (2011). Essentially, claim preclusion will enforce a prior judgment precluding a plaintiff from bringing forth claims that were fully litigated, but also extends to claims that the plaintiff could have asserted in the initial action

Striking out at the TTAB, Beasley brought a trademark infringement lawsuit pursuant to the Lanham...