Cheryl Cooleyv.Bernadette Cooper and Joyce Irby

Trademark Trial and Appeal Board

Nov 4, 2013

No. 91189474 (T.T.A.B. Nov. 4, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Mailed:
November 4, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Cheryl Cooley

v.

Bernadette Cooper and Joyce Irby
___

Opposition No. 91189474
to Application Serial No. 77571759
___

Jack F. Scherer for Cheryl Cooley

Bernadette Cooper and Joyce Irby, pro se
______

Before Bucher, Greenbaum and Adlin, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:

Joint applicants Bernadette Cooper and Joyce Irby (“applicants”) seek
registration of the mark KLYMAXX, in standard characters, for “Entertainment,
namely, live performances by a musical band.”1 In her notice of opposition, Cheryl
Cooley (“opposer”) alleges that she “is, and for many years has been, performing as
Klymaxx, a live musical band.” Notice of Opposition (“NOO”) ¶ 1. More specifically,

1 Application Serial No. 77571759, filed September 17, 2008 based on alleged first use
dates of September 30, 2003.
Opposition No. 91189474

2

opposer alleges that in 1981 the band Klymaxx, then consisting of opposer and six
other individuals, including applicant Cooper, executed a recording agreement with
Solar Records, Inc., and in 1985 the band, then consisting of opposer, both
applicants and three other individuals, executed another recording agreement with
Solar Records. Id. ¶¶ 2, 3. Then, in 1988, “both Applicants abandoned Klymaxx to
pursue solo musical careers,” while the band Klymaxx, in a slightly different
configuration, continued, and in 1990 recorded an album. Id. ¶¶ 5-7. At some point
after 1990, “[f]or approximately 10 years, Klymaxx ceased performing.” Id. ¶ 8. In
2002, however, opposer “auditioned musicians” and “started rehearsing,” and
“Opposer [again] performed as Klymaxx on May 17, 2003.” Since that time, opposer
has performed under the name Klymaxx in at least two forms, including “Klymaxx
featuring original guitarist Cheryl Cooley.” Id. ¶¶ 9-11. In the meantime,
applicants’ “first performance as Klymaxx” since they left the band in 1988 “was on
or after November 21, 2003.” Id. ¶ 12. As grounds for opposition, opposer alleges
that “[a]pplicants are not now the owner of the alleged trademark sought to be
registered,” and that use of applicants’ mark would be likely to cause confusion with
opposer’s mark. Id. ¶ 15. Opposer further alleges that while they are not named
plaintiffs, current or former Klymaxx members Lorena Stewart, Lynn Malsby and
Robin Grider “join with Opposer in the within opposition.” Id.
In their answer, applicants deny the salient allegations in the notice of
opposition and assert several affirmative defenses. However, applicants did not
pursue or prove any of their defenses, which have accordingly been waived and will
Opposition No. 91189474

3

be given no further consideration. Miller v. Miller, 105 USPQ2d 1615, 1616 n.3
(TTAB 2013); Baroness Small Estates Inc. v. American Wine Trade Inc., 104
USPQ2d 1224, 1225 n.2 (TTAB 2012).
On June 20, 2013, ten days after opposer filed her rebuttal brief, applicant
Cooper filed a motion to amend the involved application to name Cooper “as the sole
applicant upon the absence and non-response of [joint applicant] Joyce Irby,”2 to
which opposer, but not applicant Irby, consented. On July 3, 2013, the Board issued
an order deferring consideration of the motion until final decision, because neither
an assignment of the application nor applicant Irby’s consent to the amendment are
of record. On August 1, 2013, applicant Cooper filed a letter with the Board
indicating that applicant Irby “has been non-responsive” and that as a result Cooper
has been unable to settle this opposition. In the letter, Cooper states that she
“would like to proceed with the Opposition and come to a settlement or be the sole
applicant and let the Board decide.”
The Record
The record consists of the pleadings, the file of the involved application and
opposer’s testimonial deposition of Ms. Cooley (“Cooley Tr.,” TTABVue Docket No.
19) and the exhibits thereto.

2 On June 21, 2013, Cooper supplemented the motion, stating that “[a]pplicant asserts
and parties consent that all papers served by Plaintiff in opposition and by Defendant party
to the Application are deemed effective upon amendment of the Application.”
Opposition No. 91189474

4

Applicants did not introduce any testimony or other evidence. Opposer and
applicant Cooper filed briefs.3
Evidence and the Parties’ Arguments
According to Ms. Cooley, her band Klymaxx’s first performance after its
hiatus was on May 17, 2003, under the name “Klymaxx featuring Cheryl Cooley,”
and the band has “continued to perform” under that name since that date. Cooley
Tr. at 10. Prior to the band’s May 17, 2003 performance, it received a cease and
desist letter from applicant Irby. Id. at 10-11 and Ex. 8. According to the letter,
“the name ‘Klymaxx’ is owned collectively by the original, individual members of
that musical group, including” applicant Irby, and therefore opposer is “not the sole
owner of the mark.” Id. Ex. 8.
As for applicants’ use of KLYMAXX, Ms. Cooley testified that in
approximately 1987 applicant Cooper “no longer performed with the band, went on
to do a solo career,” and in approximately 1988 applicant Irby “was no longer
performing with the band, had stopped performing with the band, going on –

3 Applicants were represented by counsel from the time they filed their answer
through the close of trial. After trial, applicants’ counsel filed a motion to withdraw, which
the Board granted on January 8, 2013, prior to the due date for applicants’ final brief. On
February 6, 2013, applicant Irby indicated that she would represent herself in this
proceeding, and on February 27, 2013, the Board reset the schedule for the parties’ final
briefs, sending a copy of its order to applicant Irby. On March 18, 2013, applicant Cooper
indicated that she would also represent herself in this proceeding, and provided her
(Cooper’s) address of record, without serving applicant Irby, and it is unclear whether the
Board thereafter sent its orders to both applicants or to Cooper only. In addition, applicant
Irby may not have received applicant Cooper’s final brief, motion to amend or other filings
after March 18, 2013 (which were apparently not served on applicant Irby). However, given
our disposition of the motion to amend, below, and because applicant Irby was aware of the
briefing schedule but did not file a brief on her own behalf, her receipt or non-receipt of the
post-March 18, 2013 filings and orders is not relevant.
Opposition No. 91189474

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traveling with the band, and had pursued her own solo career.” Id. at 9. Neither
applicant gave Cooley any indication that she wished to return to the band. Id. at
10.
Although Ms. Cooley did not testify regarding her or applicants’ use of
KLYMAXX prior to 2003, according to Ms. Cooley, “all the statements contained in”
her notice of opposition, as well as in her responses to applicants’ interrogatories
and requests for admission (copies of which are included as exhibits to Cooper’s
testimonial deposition) are “true.” Cooley Tr. at 5, 7, 8 and Exs. 5, 6.4 While
applicant’s interrogatories and requests for admission to which opposer responded
are not of record, and opposer’s responses are therefore out of context, according to
opposer’s response to applicant’s Request for Admission No. 1:
On or about January 1, 1981, the original members of
KLYMAXX (“Original Members”) consisting of Cheryl
Cooley, Bernadette Cooper, Denise Walk, Lorena Porter,
Cheryl Ann McLennan, Lynn Malsby, and Myrtle
Williams entered into an agreement with Solar Records,
Inc. in which the Original Members warranted,
represented and agreed that the Original Members had
the sole and exclusive ownership of all right in and to the
name KLYMAXX.

4 Generally, under Trademark Rule 2.120(j)(5), a party may not introduce or rely upon
its own responses to an adversary’s written discovery requests. In this case, however, Ms.
Cooley testified that opposer’s discovery responses are true, and applicants had the
opportunity to cross-examine Ms. Cooley about the responses, which are attached as
exhibits to Ms. Cooley’s deposition transcript. Moreover, under Trademark Rule 2.120(j)(6),
nothing precludes the “reading or use” of interrogatory responses or admissions “as part of
the examination or cross-examination of any witness during the testimony period of any
party.”
Opposition No. 91189474

6

Id. Ex. 5; see also, id. Ex. 6 (Opposer’s Response to Interrogatory No. 2).5
Furthermore, “[t]o the best of Opposer’s knowledge, no corporation, limited liability
company or any other legal entity was formed pursuant to the laws of any
jurisdiction, in which Opposer and Applicants had or have any joint ownership
interest.” Id. Ex. 5 (Opposer’s Response to Request for Admission No. 3); see also id.
Ex. 6 (Opposer’s Response to Interrogatory No. 2) (“[o]ther than the Solar
Agreement, to the best of Opposer’s knowledge, there does not exist any written
agreement between Opposer, on the one hand and Applicants, on the other; to the
best of Opposer’s knowledge, Applicants and Opposer did not form any entity to be
utilized for their mutual benefit”).
During Ms. Cooley’s deposition, opposer also introduced as an exhibit a copy
of applicant’s responses to opposer’s interrogatories. Id. at 8-9 and Ex. 7. Therein,
applicants claim that their first live performance “using Klymaxx” was on
November 23, 2003. Id. (Applicants’ responses to Interrogatories Nos. 4 and 5).
In support of opposer’s claim that Klymaxx members Malsby, Grider and
Stewart “join with Opposer” in this proceeding, opposer introduced a February 26,
2009 letter which Ms. Malsby addressed to the Office, with copies apparently sent
to Grider and Stewart.6 The letter states that Stewart and Malsby “worked with,
rehearsed with, traveled with and financially supported the endeavors of Klymaxx”

5 As is often the case with bands, Klymaxx’s composition and number of members
changed over time.
6 Prior to its submission with the Cooley deposition transcript, the letter was not part
of the file of either the involved application or this proceeding, and Ms. Cooley did not
testify that Ms. Malsby actually sent the letter to the Office’s examining operation, the
Board or anywhere else.
Opposition No. 91189474

7

before applicants’ claimed date of first use. Id. at 6 and Ex. 3. According to the
letter, applicants “are free individuals and as they are no longer under contract
with Klymaxx … we question their proposed ‘ownership’ of this business name.” Id.
The letter argues that applicants “are free to either: Negotiate with the other
members of Klymaxx to have all six (6) original members once again trademark the
name or Tour as Ms. Cooper and/or Ms. Irby formerly of Klymaxx.” Id. The letter
concludes with a request that the Office refuse registration of applicants’ involved
mark “as it is an attempt to trade off the good name of Klymaxx, established by six
(6) people, not the lone two applicants.” Included with the letter are documents and
other materials related to Klymaxx and its members, all from 2003-2004,
including:7
• a November 13, 2003 invoice which the letter
alleges is for “rentals of stage clothing” for the taping of
the VH1 program “Bands Reunited,” and an illegible car
rental invoice which the letter alleges is dated November
16, 2003 and for “transportation in Atlanta for
rehearsals”;

• an advertisement from LA Weekly promoting a
November 23, 2003 performance by “Klymaxx The
Original Members,” at The Roxy in West Hollywood;

• an “Agency Statement” dated May 21, 2004 which,
according to the letter, relates to an “Atlanta GA Gig,
8/7/04”;

7 The letter indicates that it includes a DVD of an episode of VH1’s “Bands Reunited”
program, presumably about Klymaxx, which aired in February 2004. However, there is no
DVD in the record of this proceeding. In any event, given the state of the record in this
proceeding, as discussed herein, it appears highly unlikely that the DVD would impact our
ultimate decision.
Opposition No. 91189474

8

• an Artist Engagement Contract for an August 8,
2004 performance at the Baton Rouge, LA River Center;

• what the letter refers to as a “Load In docket” for
the Baton Rouge River Center performance as well as two
additional performances in Shreveport, LA and Jackson,
MS on August 5 and 6, 2004;

• an illegible document from TravelCenters of
America which the letter alleges is a “gas receipt for tour
bus – 8/9/04 – during return to Atlanta from Baton
Rouge”;

• a flyer promoting an August 6 concert at the
Mississippi Coliseum by a number of acts including “The
All Female Group Klymaxx,” which includes a picture of
the band comprised of six women, and which the letter
alleges was for a performance in 2004 (the flyer does not
include the year of the performance);

• a July 29, 2004 “Outgoing Wire Transfer Notice”
from Washington Mutual Bank reflecting a payment from
Ms. Malsby to applicant Irby, which the letter refers to as
an “advance;” and

• a copy of Ms. Malsby’s boarding pass for an August
9 flight from Atlanta to Los Angeles, which the letter
alleges is for a “return from Atlanta 8/9/04.”

Id.8
In her brief, opposer argues that her first use of KLYMAXX after the band’s
hiatus was on May 17, 2003, which predates applicants’ first use of the mark on
November 23, 2003. Opposer’s Brief at 2. Opposer also appears to argue, at least

8 While Ms. Malsby’s letter clearly states that she intended to “join with Opposer” in
this proceeding, some of the materials submitted with the letter raise certain questions.
For example, the LA Weekly advertisement is for a November 23, 2003 performance by
“Klymaxx The Original Members” at The Roxy in West Hollywood. This is the same date
on which applicants claim to have first used KLYMAXX after the band’s hiatus, and
applicants claim to have used the mark at the “Roxy Theater, Hollywood California.” Did
Cooper and/or Irby perform with opposer at the Roxy on that date? And why did Irby
receive a wire transfer from Ms. Malsby the following year?
Opposition No. 91189474

9

implicitly, that there is a likelihood of confusion between the parties’ KLYMAXX
marks. Furthermore, opposer argues that “[a]pplicants cannot establish sole
ownership” of the mark in the involved application. Id. at 3-4.
Applicant Cooper filed applicants’ brief on her own, given applicant Irby’s
purported nonresponsiveness, as explained in applicants’ motion to amend the
involved application. In the brief, applicant Cooper explains that she and opposer
discussed and were amenable to a settlement agreement under which, inter alia,
the involved application would be withdrawn, and applicants and opposer would
agree that none of them could register KLYMAXX alone, but could register, as
applicable, KLYMAXX FEATURING BERNADETTE COOPER, KLYMAXX
FEATURING JOYCE IRBY or KLYMAXX FEATURING CHERYL COOLEY.9
Applicants’ brief concludes as follows: “At the present time, applicant Bernadette
Cooper, individually, agrees to the Stipulation of Settlement with Opposer,
however, Co-Applicant Joyce Irby, individually, has refused the Stipulation of
Settlement. Therefore, Applicants’, (sic) collectively, can no longer represent their
application for the Mark, KLYMAXX, under Serial Number 77/571,759.”10

9 Applicant Cooper attached to her brief an unsigned document entitled “Stipulation
of Settlement” which is untimely and has accordingly been given no consideration.
Trademark Rule 2.123(l) (“Evidence not obtained and filed in compliance with [the
Trademark Rules] will not be considered.”).
10 It is unclear from the record whether applicant Irby in fact considered and then
“refused” the Stipulation of Settlement, or whether she never considered it, because she
became “nonresponsive” prior to applicant Cooper and opposer agreeing to the proposed
settlement.

Opposition No. 91189474

10

Opposer argues in her reply brief that applicants have “no objection” to
withdrawal of the application, by virtue of applicant Cooper’s willingness to enter
into the settlement agreement and applicant Irby’s “default.”
Standing
Opposer has established her use of the mark KLYMAXX for live musical
performances. Cooley Tr. at 10. Applicant seeks registration of that mark for the
same services. Accordingly, opposer has standing. Automedx, Inc. v. Artivent Corp.,
95 USPQ2d 1976, 1978 (TTAB 2010); Giersch v. Scripps Networks, Inc., 90 USPQ2d
1020, 1022 (TTAB 2009) (“Petitioner has established his common-law rights in the
mark DESIGNED2SELL, and has thereby established his standing to bring this
proceeding.”); Syngenta Crop Prot. Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1118
(TTAB 2009) (testimony that opposer uses its mark “is sufficient to support
opposer’s allegations of a reasonable belief that it would be damaged …” where
opposer alleged likelihood of confusion).
Ownership
The record in this proceeding is replete with crucial evidentiary gaps, and, as
a result, it is impossible to answer many of the questions commonly posed to
determine which competing party is the owner of a disputed trademark. See e.g.,
Rick v. Buchansky, 609 F.Supp. 1522, 226 USPQ 449 (S.D.N.Y.), appeal dismissed,
770 F.2d 157 (2d Cir. 1985) (assessing competing claims to the mark VITO AND
THE SALUTATIONS for a musical group); Wrist-Rocket Manufacturing Co. v.
Saunders, 379 F.Supp. 902, 183 USPQ 17 (D. Neb. 1974), aff’d in part and rev’d in
Opposition No. 91189474

11

part, 516 F.2d 846, 186 USPQ 5 (8th Cir. 1975) (considering various facts in
determining ownership dispute over WRIST ROCKET trademark); Pamela S.
Chestek, “Who Owns the Mark? A Single Framework for Resolving Trademark
Ownership Disputes,” 96 Trademark Rptr. 681 (2006) (proposing a framework for
resolving trademark ownership disputes based in large part on the factors
considered in Wrist-Rocket). For example:
• because neither the Solar Agreement nor any other
agreement between the parties is of record, it is unclear
whether there are any contractual rights relating to the
ownership, use or registration of the KLYMAXX
trademark and service mark;

• while opposer is not aware of any “corporation,
limited liability company or other legal entity … in which
Opposer and Applicants had or have any joint ownership
interest,” that does not mean that there is no such entity
which owns or has the right to control the use of the
KLYMAXX mark; cf. Rare Earth, Inc. v. Hoorelbeke, 401
F.Supp. 26, 187 USPQ 291 (S.D.N.Y. 1975) (assessing
which faction of Rare Earth, a broken-up band, controlled
the band’s corporation, Rare Earth, Inc.);11

• the record is devoid of any evidence regarding
which, if any, of the parties has or had the right to control
the parties’ band(s) or any band’s use of the KLYMAXX
mark; cf. Marshak v. Treadwell, 240 F.3d 184, 57
USPQ2d 1764 (3d Cir. 2001) (addressing ownership of the
mark THE DRIFTERS for a musical group, which had
been assigned to the group’s manager, following which
former members of the group began using the mark in

11 In Rare Earth, the Court noted “that trademarks and trade names associated with
musical performing groups present potentially difficult legal problems. Imagine, for
example, a group which lawfully acquires the ‘Beatles’ trademark and performs without one
or more of John, Paul, George or Ringo or ‘Jimmy Dorsey’s Orchestra’ without Jimmy
Dorsey. Could the corporate owner of the ‘Rolling Stones’ mark replace the present
members of the group and continue to sell out Madison Square Garden? In short, can the
public consciousness of and secondary meaning acquire[d] by a performing group’s trade
name survive personnel changes?” Rare Earth, 187 USPQ at 299 n.19.
Opposition No. 91189474

12

competition with the manager’s band) and Rick v.
Buchansky, 226 USPQ at 451, 454-55 (finding that
group’s manager owned VITO AND THE SALUTATIONS
mark because, inter alia, he handled promotional and
financial matters for the group, made personnel decisions,
selected its songs, taught vocal and dance technique, paid
group’s expenses, and “functioned much like the producer
of a theater company or owner of a sports team”);

• there is no evidence regarding who “conceived” of
the KLYMAXX mark or paid for the band’s advertising
and promotion, or which, if any, of the group’s members’
names or likenesses were featured in KLYMAXX’s
promotional materials; cf. Rick v. Buchansky, 226 USPQ
at 449; and

• there is no evidence regarding whether the relevant
public associates the mark KLYMAXX with one or more of
its current or former members, or whether the relevant
public instead associates the mark with a style of music or
performance, regardless of which individuals make up the
band at any particular time; cf. The Five Platters, Inc. v.
Purdie, 419 F.Supp. 372, 193 USPQ 411, 421, 424 (D. Md.,
1976) (plaintiff not guilty of unclean hands “by presenting
its group as the original Platters when in fact none of the
persons now performing in the group were members in
the 1950’s,” and finding that THE PLATTERS “has been
and continues to be known as the hallmark identifying
and distinguishing plaintiff’s style and rendition of music”
rather than a group comprised of particular or original
members).

There is also no way to determine whether the parties’ bands’ apparent
hiatus from performing constituted an abandonment of the mark prior to opposer
and applicants performing in 2003. Cf. The Kingsmen v. K-Tel International Ltd.,
557 F.Supp. 178, 220 USPQ 1045 (S.D.N.Y. 1983) (“Even though plaintiffs
disbanded their group in 1967 and ceased recording new material, there is no
evidence suggesting that they failed to use the name Kingsmen during the period
Opposition No. 91189474

13

from 1967 to the present to promote their previously recorded albums. Moreover,
the fact that these individuals continue to receive royalties for Kingsmen recordings
flies in the face of any suggestions of intent to abandon use of the name
Kingsmen.”).
Despite all of these evidentiary infirmities (and others),12 applicant has not
contradicted opposer’s assertion in a response to a request for admission, affirmed
as “true” by Ms. Cooley during her deposition, that “the Original Members
warranted, represented and agreed that the Original Members had the sole and
exclusive ownership of all right in and to the name KLYMAXX.” To the contrary,
applicants (and Ms. Malsby in her letter) appear to take the same position. In fact,
applicant Irby’s cease and desist letter to opposer prior to opposer’s May 17, 2003
performance states that the mark “is owned collectively by the original, individual
members of that musical group.”13 For her part, applicant Cooper’s desire to settle
with opposer on the terms set out in applicant Cooper’s trial brief is consistent with
the apparently undisputed position of all concerned that the band’s original
members jointly owned the KLYMAXX mark. Furthermore, even if the KLYMAXX
mark was abandoned prior to opposer and applicants performing under the mark in
2003, there is no dispute that as between the parties, opposer was the first to use
the mark in that year (opposer performed on May 17, 2003 while applicants

12 While applicants did not object to any of opposer’s evidence, some of it is arguably
hearsay, and certain documents have not been authenticated. We base our decision herein
only on admissible evidence which we find to be credible.
13 Even if portions of the cease and desist letter are considered hearsay, Irby’s
statement about the ownership of the KLYMAXX mark is not. Fed. R. Evid. 801(d)(2).
Opposition No. 91189474

14

performed on November 23, 2003). Cooley Tr. at 8-10 and Ex. 7. Accordingly, as
between the parties, whether or not the mark was abandoned prior to 2003,
applicants are not the first users or sole owners of the mark.
“In a use-based application under Trademark Act Section 1(a), only the owner
of the mark may file the application for registration of the mark; if the entity filing
the application is not the owner of the mark as of the filing date, the application is
void ab initio.” Great Seats, Ltd. v. Great Seats, Inc., 84 USPQ2d 1235, 1239 (TTAB
2007); see also, 15 U.S.C. § 1051(a); Huang v. Tzu Wei Chen Food Co., Ltd., 849 F.2d
1458, 7 USPQ2d 1335 (Fed. Cir. 1988); Trademark Rule 2.71(d). Here, because
applicants were not the sole owners of the KLYMAXX mark as of the filing date of
the involved use-based application, but were instead, at most, co-owners of the
mark with other band members, who have not provided their consent to applicants’
registration of the mark, the involved application is void ab initio, and we need not
reach opposer’s claim of priority and likelihood of confusion.14
Decision: The opposition is sustained and registration of applicant’s mark
is refused under Section 1(a) of the Trademark Act.
A copy of this decision has been mailed to the following:
Jack F. Scherer
Jack F. Scherer PC
225 West 108th Street,
Suite 7E
New York, NY 10025
Bernadette Cooper
8306 Wilshire Boulevard,
# 8072
Beverly Hills, CA 90211

Joyce Irby
9189 Snipe Lane
Jonesboro, GA 30236

***

14 Applicant Cooper’s motion to amend the application is therefore moot.