Personal names are inherently distinctive, says TTAB

United States of America
In Brooks v Creative Arts By Calloway LLC (Opposition 91169266, October 30 2009), in a precedential decision, the Trademark Trial and Appeal Board (TTAB) has ruled that personal names are inherently distinctive. 

Christopher Brooks, the grandson of the late band leader Cab Calloway, opposed the registration of the mark CAB CALLOWAY by Creative Arts By Calloway LLC, a corporation formed by Calloway's widow and daughter. Prior to the opposition, the parties were involved in a civil action in which Creative Arts sued Brooks for trademark infringement over the latter's use of the name Cab Calloway. The Second Circuit ruled that any trademark assignment to Creative Arts would not prevail because "Cab Calloway was not operating a going concern at the time of his death, precluding the transfer of a mark". In the civil suit, Brooks argued that Creative Arts had to establish that the name Cab Calloway had acquired secondary meaning in order to have a legally protectable right in the name. 

In view of Brooks's contention, Creative Arts argued before the TTAB that Brooks should be judicially estopped from claiming that the mark CAB CALLOWAY was inherently distinctive. The TTAB determined that judicial estoppel was not applicable because the parties were before a different tribunal, which applies different legal standards to determine different rights. Notably, the TTAB advised that the statements made by Brooks in the civil action were prior statements of law and not admissions of fact. Therefore, these statements could not serve as admissions against interest in the opposition.

The parties made various stipulations in this opposition, one of which was that the sole issue before the TTAB was whether Brooks could establish rights in the mark THE CAB CALLOWAY ORCHESTRA prior to the July 23 1999 filing date of Creative Arts's application for the mark CAB CALLOWAY. According to the record, Brooks first used his mark in connection with a live musical performance on December 19 1998, followed by at least three other performances under the name The Cab Calloway Orchestra and use on CDs and videotapes, all prior to July 23 1999. Despite this evidence of use, Creative Arts argued that:
  • under common law, "to be protected as a trademark, personal names must have secondary meaning"; and
  • Brooks had failed to provide sufficient evidence of secondary meaning prior to Creative Arts's filing date.
Despite Creative Arts's attempts to convince the TTAB that personal names are merely descriptive and not entitled to protection absent secondary meaning, the TTAB advised that it is not aware of any prior decisions by the TTAB or its primary reviewing court in which this proposition is stated. The TTAB noted that while surnames continue to require a showing of secondary meaning under the Lanham Act, personal or full names do not. As such, the TTAB held that when a plaintiff asserts prior rights based on a personal name, not a surname, the personal name is inherently distinctive and registrable on the Principal Register. 

The TTAB thus found a likelihood of confusion under Section 2(d) of the Lanham Act and sustained the opposition. It held that Brooks had established that he was the prior user of not only his service mark, but also the trade name The Cab Calloway Orchestra, since Brooks had developed a trade identity in the name. Brooks thus had "superior rights" through prior trade name use. In rejecting Creative Arts's argument that Brooks had failed to establish secondary meaning, the TTAB explained that:
 
"to rule otherwise would be in direct conflict with the basic underpinning of trademark law in the United States, which is that rights are obtained through use, and not by being the first to file an application."
 
Emily B Brown, King & Spalding LLP, New York

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