Christopher Brooksv.Creative Arts by Calloway, LLC

Trademark Trial and Appeal Board

Oct 30, 2009

No. 91160266 (T.T.A.B. Oct. 30, 2009)

Mailed: Oral Hearing:
October 30, 2009 July 28, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
______

Trademark Trial and Appeal Board
______

Christopher Brooks
v.
Creative Arts By Calloway, LLC
______

Opposition No. 91160266
to application Serial No. 75761159
filed on July 23, 1999
______

Barbara Solomon and Evan Gourvitz of Fross Zelnick Lehrman &
Zissu, PC for Christopher Brooks

Marc A. Karlin of Karlin & Karlin, APLC for Creative Arts By
Calloway, LLC
______

Before Zervas, Kuhlke and Bergsman, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Applicant, Creative Arts By Calloway, LLC, seeks
registration of the mark for services
identified in the application as:
Retail stores, retail outlets and on-line retail
store services featuring compact discs, records,
video tapes, cassettes, digital video and audio
discs, and other home entertainment related
products; distribution of pre-recorded comedies,
musicals and dramas on video tapes, cassettes,
THIS OPINION IS A
PRECEDENT OF THE TTAB
Opposition No. 91160266
2
digital video and audio discs, CD-ROM;
distribution of pre-recorded theatrical musicals,
comedies and dramas on video tapes, cassettes,
digital video and audio discs, CD-ROM; and
distribution of pre-recorded music, drama, comedy
and variety shows on video tapes, cassettes,
digital video and audio discs and CD-ROM, in
International Class 35; and

Entertainment services in the nature of multimedia
entertainment software production services,
scheduling of programs on a global computer
network; production and distribution of live music
concerts, comedy, and dramatic series; production
of live music concerts and live theatrical plays;
production of radio and television programs;
production of videotapes and sound recordings,
namely, phonograph records, pre-recorded audio
tapes, compact discs, videotapes, digital audio
tapes, compact disc videos, and laser discs;
production and distribution of motion pictures;
production of comedies, musicals and dramas;
scheduling television and radio programming;
production of music, drama, comedy and variety
shows; theatrical production of musicals, comedies
and dramas in International Class 41.1

Opposer, Christopher Brooks, opposed registration of
applicant’s mark on the grounds that, as used in connection
with applicant’s services, the mark so resembles opposer’s
previously used mark THE CAB CALLOWAY ORCHESTRA for live
musical performances and audio and video recordings of these
performances as to be likely to cause confusion, to cause
mistake, or to deceive under Trademark Act Section 2(d), 15
U.S.C. §1052(d).

1 Serial No. 75761159, filed July 23, 1999. The application is
based on an allegation of a bona fide intention to use the mark
in commerce under Trademark Act Section 1(b), 15 U.S.C. §1051(b).

Opposition No. 91160266
3
Applicant filed an answer by which it denied the
salient allegations of the notice of opposition.
The evidence of record consists of the pleadings
herein; the file of the opposed application; the parties’
“Stipulation as to Facts and Agreement to Submit Opposer’s
Testimony by Affidavit” (Stipulation); testimony, with
exhibits, of Christopher Brooks, Kuni Mikami (professional
musician and orchestra member), Troy Burton (Executive
Director of the Eubie Blake National Jazz Institute and
Cultural Center) and Monty Zullo (Broadway producer and
performing arts manager), all submitted in affidavit or
declaration form by stipulation; opposer’s notice of
reliance on printed publications, papers filed by applicant
in support of applicant’s opposition to opposer’s prior
motion for summary judgment in this opposition proceeding,2
and third-party registrations; and applicant’s notice of
reliance on the Stipulation. Applicant also submitted under

2 These papers consist of Applicant’s Response to Opposer’s
Statement of Undisputed Material Facts and a declaration of
Cabella Calloway Langsam. The papers appear to be opposer’s file
copies and not copies from the Board file. A party’s file copies
of documents filed with the Board are not proper matter for
submission under notice of reliance. Osage Oil & Transportation,
Inc. v. Standard Oil Co., 226 USPQ 905, 906 n.5 (TTAB 1985). It
should also be noted that even if the Board’s file copies were
submitted as official records under notice of reliance they would
not be competent to prove the truth of the matter asserted in
those documents, and would merely show that the documents had
been filed. However, applicant has not objected to these
documents and, in its brief, applicant also relies on the Langsam
declaration. In view thereof, we have considered the documents
and accorded them appropriate probative value.
Opposition No. 91160266
4
notice of reliance legal memoranda filed in a prior civil
proceeding between the parties discussed below.
THE PARTIES
Opposer is the grandson of Cab Calloway, the well-known
musician who passed away in 1994. Opposer is also a
musician and performs with his own ensemble under the name
THE CAB CALLOWAY ORCHESTRA. Applicant was founded by Cab
Calloway’s widow, Zulme Calloway, and his daughters Chris
Calloway and Cabella Calloway Langsam. See infra.
EVIDENTIARY OBJECTIONS
By way of background, the parties were involved in the
prior civil action Creative Arts by Calloway, LLC v.
Christopher W. Brooks, No. 01 CIV. 3192 (BDP), aff’d, 48
Fed. Appx. 16, 2002 WL 31303241 (2nd Cir. 2002). In that
case, applicant brought a trademark infringement claim
against opposer for his use of the name Cab Calloway. The
U.S. District Court for the Southern District of New York
granted opposer’s motion for summary judgment on the
question of trademark infringement and denied applicant’s
motion for a preliminary injunction. In affirming that
decision, the Second Circuit stated the following:
Regardless of whether the name “Cab Calloway”
acquired secondary meaning during the performer’s
lifetime, Creative Arts cannot prevail because any
trademark assignment to Zulme Calloway would have
been invalid. A trademark is merely a symbol of
good will and cannot be sold or assigned apart
from the goodwill it symbolizes... In the instant
Opposition No. 91160266
5
case, Cab Calloway was not operating a going
concern at the time of his death, precluding the
transfer of a mark.

Creative Arts, 48 Fed. Appx. at 17-18.

Applicant seeks to introduce certain legal memoranda
filed by opposer in that civil action and to rely on the
following statements made in opposer’s briefs:
If a name, regardless of how famous it is, refers
primarily to the individual, it is not and cannot
be protected as a mark. The only personal names
that are protected as valid marks are those that
have acquired “secondary meaning,” so that they
are synonymous in the minds of the public with a
specific ongoing business, or with the sole source
of origin for all goods and services offered under
that name. (Opposer’s brief as defendant in the
appeal before the Court of Appeals for the Second
Circuit attached as Exh. No. B to applicant’s
notice of reliance);

It is black letter law that personal names are
merely descriptive and are protected only if,
through usage, they have acquired distinctiveness
and secondary meaning. (Opposer’s brief on motion
for summary judgment as defendant in the
infringement case before the District Court for
the Southern District of New York attached as Exh.
No. C to applicant’s notice of reliance); and

In order for plaintiff to have a legally
protectable right in CAB CALLOWAY, Plaintiff must
first establish that the name has acquired
secondary meaning. (Opposer’s brief on motion for
summary judgment as defendant in the infringement
case before the District Court for the Southern
District of New York attached as Exh. No. D to
applicant’s notice of reliance).

Opposer objects to the introduction of his prior
statements in the legal memoranda “concerning whether
Applicant’s or its predecessors’ purported use of ‘Cab
Calloway’ to refer to the individual Cab Calloway or his
Opposition No. 91160266
6
works was protectable under the law of that circuit” in the
civil action as “irrelevant and immaterial” to this case.
Br. p. 9 (emphasis in original). Opposer also argues that
these “legal arguments” are not admissible by notice of
reliance under any of the provisions relied upon by
applicant. Applicant counters that these statements are
relevant because they serve as admissions against interest
“as Opposer admitted in a prior court proceeding with
Applicant that the name of an artist is presumptively a
personal name, and that to be protected as a trademark,
personal names must have secondary meaning.” Br. p. 7.
Applicant argues further that “pursuant to the doctrine of
judicial estoppel” opposer is estopped from “contending that
the mark CAB CALLOWAY is inherently distinctive.” Id.
We begin by noting that these briefs do not reflect
that they were received by the District Court or Court of
Appeals and, thus, may be merely applicant’s file copies of
the documents. As such, they are not properly introduced
under a notice of reliance as official records and opposer’s
objection on that basis is sustained. See Hard Rock Cafe
International (USA) Inc. v Elsea, 56 USPQ2d 1504, 1508 (TTAB
2000). See also Martahus v. Video Duplication Services
Inc., 3 F.3d 417, 27 USPQ2d 1846, 1849 (Fed. Cir. 1993)
(without documentation properly of record Court cannot
assess inconsistent positions).
Opposition No. 91160266
7
However, the issue of whether these are applicant’s
file copies or copies retrieved from the District Court and
Court of Appeals was not specifically addressed by applicant
and opposer in their briefing of this case. Therefore, to
the extent these briefs are from the court’s files and could
be considered official records, we address opposer’s further
objections.
We first consider opposer’s objection on the basis that
these are legal arguments. Prior statements of law are not
admissions of fact, and cannot serve as admissions against
interest. See Interstate Brands Corporation v. Celestial
Seasonings, Inc., 576 F.2d 926, 198 USPQ 151, 153-54 (CCPA
1978) (“But, because ‘that confusion is unlikely to occur’
is a legal conclusion, it cannot be an ‘admission.’ Facts
alone may be ‘admitted.’ In reaching the legal conclusion,
the decision maker may find that a fact, among those on
which the conclusion rests, has been admitted; he may not,
however, consider as ‘admitted’ a fact shown to be non-
existent by other evidence of record; nor may he consider a
party’s opinion relating to the ultimate conclusion an
‘admission.’”).
The arguments made by opposer concerning applicant’s
asserted mark CAB CALLOWAY in defense of an infringement
suit brought by applicant against him (i.e., that a personal
name must have acquired distinctiveness before it can be
Opposition No. 91160266
8
exclusively appropriated as a trademark) are opinions of law
and not admissions of fact and thus cannot serve in this
case as admissions against interest by opposer.
We next consider the objection on the basis that these
arguments are irrelevant and judicial estoppel is not
applicable. The doctrine of judicial estoppel serves to
prevent an unfair result by prohibiting a party from
asserting a position inconsistent from one taken in a prior
proceeding, and its application lies within the discretion
of the court. Boston Chicken Inc. v. Boston Pizza
International Inc., 53 USPQ2d 1053, 1055 (TTAB 1999) (citing
DataGeneral Corp. v. GSA, 78 F.3d 1556, 1565 (Fed. Cir.
1996)). The Board applies a seven factor test to determine
whether it is appropriate in a given circumstance: (1)
judicial acceptance of the previously asserted inconsistent
position; 2) risk of inconsistent results; 3) effect of the
party’s actions on the integrity of the judicial process; 4)
perception that the tribunal has been misled; 5) reliance by
the opposing party; 6) prejudice to the opposing party’s
case as a result of the inconsistent position; and 7) the
party against whom estoppel is invoked must have received
some benefit from the previously taken position. Boston
Chicken, 53 USPQ2d at 1055 (citing Harley v. Meonto Corp.,
869 F.2d 1469, 10 USPQ2d 1138 (Fed. Cir. 1989) and Water
Opposition No. 91160266
9
Technologies Corp. v. Calco Ltd., 850 F.2d 660, 7 USPQ2d
1097 (Fed. Cir. 1988)).
Under the circumstances here, however, judicial
estoppel is not applicable because the parties are before a
different tribunal (court v. board), applying different
legal standards (secondary meaning required for personal
names v. no secondary meaning required for personal names),
to determine different rights (use v. registration). Thus,
because of the distinction between the proceedings there
will not be an improper effect on the integrity of judicial
proceedings and there is no perception that the tribunal has
been misled. Accordingly, opposer’s objections to Exhibits
B, C and D attached to applicant’s notice of reliance are
sustained.
We turn next to applicant’s objections to certain
evidence. Applicant objects to Exhibit No. 1 submitted
under Mr. Brooks’ testimony and Exhibits Nos. 3-11 submitted
under the notice of reliance as “not relevant to Opposer’s
Section 2(d) opposition based upon his pre-July 23, 1999
activities.” In addition, applicant objects to Exhibit No.
3 attached to Mr. Brooks’ testimony as “inadmissible
hearsay” and to Exhibits Nos. 14 and 15 under the Notice of
Reliance as not relevant “as the document[s] concern
registered, not common law, trademark[s].”
Opposition No. 91160266
10
Applicant has already stipulated “to the admission into
evidence without objection of the affidavit attached hereto
as Exhibit B [Brooks’ affidavit] and the exhibits thereto as
part of Opposer’s testimony in these proceedings.” Stip. p.
1. Thus, applicant has waived its right to object to the
admissibility of the exhibits attached to Mr. Brooks’
testimony affidavit and its objections are overruled. We
note, however, that Exh. No. 3 consists of a letter from a
third party, and the probative value of this letter is
limited to the extent that we cannot consider the statements
therein for the truth of the matters asserted.
As to the exhibits submitted under the notice of
reliance, the documents in Exhibits Nos. 3-11, which
comprise printed publications dated after July 23, 1999,
have limited probative value in that we cannot take the
statements contained in the publications as establishing the
truth of the matters asserted therein. Nonetheless, they
are relevant, at a minimum, to show continued consumer
exposure to opposer’s asserted mark THE CAB CALLOWAY
ORCHESTRA in connection with his name. With regard to
Exhibits Nos. 14 and 15, third-party registrations for band
names, e.g., COUNT BASIE ORCHESTRA, these documents have
some relevance regarding the standard to be applied to
personal name marks and the United States Patent and
Trademark Office (USPTO) practice in determining
Opposition No. 91160266
11
registrability of certain types of marks. As opposer
states, “these exhibits are relevant, as they provide
evidence of the distinctiveness of marks that include both
the name of a famous historical band leader and the word
ORCHESTRA.” Br. p. 3. In view thereof, applicant’s
objections to these exhibits submitted under notice of
reliance are also overruled.
STANDING
As discussed below, opposer has shown that he has used
the phrase THE CAB CALLOWAY ORCHESTRA in connection with
live musical performances and as such has demonstrated a
real interest in opposing registration of the mark CAB
CALLOWAY for the identified services. See Ritchie v.
Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999);
Jewelers Vigilance Committee, Inc. v. Ullenberg Corp., 823
F.2d 490, 2 USPQ2d 2021 (Fed. Cir. 1987); Lipton Industries,
Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185
(CCPA 1982). Thus, opposer has established his standing.
LIKELIHOOD OF CONFUSION/PRIORITY
As noted above, the parties submitted a stipulation as
to certain facts and as to the remaining issue to be
resolved. In particular, the parties stipulated that “the
sole issue before the Board in this opposition is whether
Opposer can establish rights in THE CAB CALLOWAY ORCHESTRA
prior to the filing date of the opposed application, which
Opposition No. 91160266
12
is July 23, 1999.” Stip. p. 1. As to the issue of
likelihood of confusion the parties stipulated that:
THE CAB CALLOWAY ORCHESTRA and CAB CALLOWAY,
considered in their entirety, are nearly identical
in appearance, sound, connotation, and commercial
impression. Stip. ¶11;

Opposer’s goods and services and the services set
forth in the Application are identical or closely
related. Stip. ¶12; and

Should Opposer establish that its use of THE CAB
CALLOWAY ORCHESTRA created rights that existed
prior to July 23, 1999, then any application
granted to Applicant for CAB CALLOWAY for the
services set forth in its application would cause
a likelihood of confusion with THE CAB CALLOWAY
ORCHESTRA for the goods and services he offers for
sale or sells in connection with that term. Stip.
¶14.

Thus, there is no dispute that the marks are nearly
identical and the goods and services are identical or
closely related. We, therefore, conclude that there is a
likelihood of confusion between the phrase THE CAB CALLOWAY
ORCHESTRA and applicant’s proposed mark CAB CALLOWAY.
We turn then to the question of priority. The parties
have stipulated to the following facts:
Opposer Chris Brooks is the eldest grandson of the
internationally famous jazz musician Cab Calloway,
who died in 1994. Stip. ¶1;

Opposer performs and has performed with his
musical ensemble THE CAB CALLOWAY ORCHESTRA (the
“Orchestra”) in the United States. Stip. ¶2;

Opposer is the sole proprietor, musical director,
and lead performer of the Orchestra. Stip. ¶3;

Opposer uses THE CAB CALLOWAY ORCHESTRA in
connection with the Orchestra’s live musical
Opposition No. 91160266
13
performances in the United States and has used it
continuously from the date of adoption. Stip. ¶4;

Opposer uses THE CAB CALLOWAY ORCHESTRA in
connection with the sale of compact discs and
videotapes in the United States and has used it
continuously from the date of adoption. Stip. ¶5.

Applicant Creative Arts by Calloway, LLC
(“Creative Arts”) is a Delaware limited liability
company founded by its predecessor, Cab Calloway’s
widow, Zulme Calloway, and Cab Calloway’s
daughters Chris Calloway and Cabella Calloway
Langsam. Stip. ¶6;

On July 23, 1999, Applicant’s predecessor filed
intent-to-use application Serial No. 75/761,159
(the “Application”) to register CAB CALLOWAY.
Stip. ¶7; and

The earliest priority date upon which Applicant
can and does rely for the services set forth in
the Application, and for purposes of this
opposition, is the date it filed the Application,
July 23, 1999. Stip. ¶9.

Thus, what remains for our determination is the
question of when opposer first began use of THE CAB CALLOWAY
ORCHESTRA and if any use by opposer prior to July 23, 1999
was of a nature to establish prior rights sufficient to
preclude registration of the applied-for mark by applicant.
The record shows that opposer first used THE CAB
CALLOWAY ORCHESTRA in connection with a live musical
performance on December 19, 1998. Opposer performed under
the name THE CAB CALLOWAY ORCHESTRA on at least three other
occasions prior to July 23, 1999: February, 1999 (Zullo
Decl. ¶3); March 20, 1999; and May 19, 1999 (Mikami Decl.
¶¶4-5, Burton Decl. ¶4, Brooks Aff. ¶6). At these
Opposition No. 91160266
14
performances the orchestra’s name was prominently displayed
and opposer repeatedly referred to the orchestra as THE CAB
CALLOWAY ORCHESTRA. See generally Mikami Decl. and Brooks
Aff. In addition, at some of these performances opposer
advertised and sold compact discs and videotapes of the
band’s performance bearing the name THE CAB CALLOWAY
ORCHESTRA. Id.; Burton Decl. In March of 1999, opposer
engaged a marketing consultant who distributed a press
packet in that month, advertising and promoting opposer’s
band under the name THE CAB CALLOWAY ORCHESTRA to industry
contacts, including Time Warner, William Morris and ICM.
Zullo Decl. Since 1999, opposer has averaged “about twenty-
four to forty concerts per year in the United States” and
continues to sell his CDs and videotapes. Brooks Aff. ¶10.
Opposer asserts that the evidence of record establishes
his prior service mark use or, in the alternative, trade
name use or use analogous to trademark use.
There is no dispute that opposer used the phrase THE
CAB CALLOWAY ORCHESTRA in connection with live musical
performances, CDs and videotapes prior to July 23, 1999.
Applicant argues, however, that these uses are not
sufficient to establish rights in the name THE CAB CALLOWAY
ORCHESTRA. More specifically, applicant argues that under
common law “to be protected as a trademark, personal names
must have secondary meaning.” Br. p. 18. Applicant
Opposition No. 91160266
15
contends that the evidence of record is not sufficient to
find secondary meaning in opposer’s alleged mark prior to
applicant’s filing date. In making this argument, applicant
recognizes that “personal names which are not primarily
merely surnames will be accepted for registration,
published, and if not opposed and used, registered.” Br. p.
19. Applicant further contends that “that departure from
the common law benefits applicants, not opposers. Under
Section 2(d), Opposer [sic] chosen weapon in this
proceeding, he must assert a prior registration or common
law right. He has no prior registration, so he is bound by
the common law which, as Opposer pointed out repeatedly in
prior litigation between the parties, demands secondary
meaning before personal names may be asserted as
trademarks.” Br. p. 19.
As to trade name use, applicant argues that the
evidence is insufficient to show that “he used the name THE
CAB CALLOWAY ORCHESTRA in a manner which identified his
services to the public.” Br. p. 23.
A personal name mark, unless it is primarily merely a
surname, is registrable on the Principal Register without a
showing of secondary meaning, and thus is deemed to be
inherently distinctive under the Lanham Act if the record
shows that it is used in a manner that would be perceived by
purchasers as identifying the services in addition to the
Opposition No. 91160266
16
person. Compare In re Carson, 197 USPQ 554 (TTAB 1977)
(JOHNNY CARSON registrable as a service mark where name
featured in advertisements for services) and In re Ames, 160
USPQ 214 (TTAB 1968) (NEAL FORD & THE FANATICS registrable
as a service mark where name was used on advertisements that
prominently featured a photograph of the group and gave the
name, address and telephone number of the group’s booking
agent), with In re Mancino, 219 USPQ 1047 (TTAB 1983) (BOOM
BOOM would be viewed by the public solely as applicant’s
professional boxing nickname and not as an identifier of the
service of conducting professional boxing exhibitions) and
In re Lee Trevino Enterprises, Inc., 182 USPQ 253 (TTAB
1974) (LEE TREVINO not registrable where specimens of use
only identify a famous golfer not services). See also TMEP
Section 1301.02(b). Indeed, applicant’s own application for
the mark CAB CALLOWAY, which is a personal name, was not
refused registration as merely descriptive, and was
forwarded to publication by the USPTO without any
requirement for a showing of acquired distinctiveness.
The requirement that pertains to personal names under
the Lanham Act is found in Section 2(c) which requires
written consent from living individuals.3 In those cases

3 Personal names are also addressed in Section 2(a) of the Lanham
Act which provides: No trademark by which the goods of the
applicant may be distinguished from the goods of others shall be
refused registration on the principal register on account of its
nature unless it - (a) Consists of or comprises ... matter which
Opposition No. 91160266
17
where the name does not identify a living individual it is
USPTO practice to require a statement to that effect. For
example, the subject application includes the statement “The
name Cab Calloway does not identify a living individual.”
Applicant cites to various authorities that personal
name marks are merely descriptive and not entitled to
protection absent a showing of secondary meaning. However,
applicant has not cited to any prior decisions of the Board
or of its primary reviewing court in which this proposition
has been stated or followed, and we are aware of no such
decisions.4 For the reasons discussed below, we are not

may disparage or falsely suggest a connection with persons,
living or dead...or bring them into contempt, or disrepute.
However, that issue is not before us.

4 We note that the Seventh Circuit recognizes some limitation to
the general requirement that secondary meaning be shown for a
personal name, for such name to be protectible in an infringement
case focusing on use, rather than registration of the mark. In
Peaceable Planet Inc. v. Ty Inc., 363 F.3d 986, 70 USPQ2d 1386,
1389-90 (7th Cir. 2004), the court stated:

The “rule” that personal names are not protected as
trademarks until they acquire secondary meaning is a
generalization, and its application is to be guided by
the purposes that we have extracted from the case law.
When none of the purposes that animate the “personal
name” rule is present, and application of the “rule”
would impede rather than promote competition and
consumer welfare, an exception should be recognized.
And will be; for we find cases holding, very sensibly
– and with inescapable implications for the present
case – that the “rule” does not apply if the public is
unlikely to understand the personal name as a personal
name. [citations omitted] The personal-name “rule,” it
is worth noting, is a common law rather than statutory
doctrine. All that the Lanham Act says about personal
names is that a mark that is “primarily merely a
surname” is not registrable in the absence of
secondary meaning. There is no reference to first
names... The extension of the rule to first names is
Opposition No. 91160266
18
persuaded that we should follow the authorities cited by
applicant on this issue.
The early cases interpreting the Lanham Act reviewed
the differences between the Trade Mark Act of 1905 and the
Lanham Act, concluding that while surnames continue to
require a showing of secondary meaning under the Lanham Act,
personal or full names do not. In finding “Andre Dallioux”
registrable for traveling bags and ladies’ hand bags
because it comprised an entire name of an individual, the
Commissioner stated:
Under the provisions of the Trade Mark Act of
1905, “registration of a mark which ... consists
merely of the name of an individual” was
prohibited unless it was printed in such a manner
as to comply with certain exceptions set out in
section 5 of that Act. The Act was further
construed to prohibit registration of marks
consisting of surnames, refusal being based upon
the construction that a surname constituted the
major portion of an individual name, and
accordingly was within the prohibition as to the
“name of an individual” above quoted...Thus under
the Act of 1905, registration of marks consisting
of names of individuals, including surnames, was
prohibited. In the corresponding section of the
Trade Mark Act of 1946, section 2(e), there is no
reference to “merely the name of an individual” in
specifying the types of marks which shall be
refused registration on account of their nature
and, in place thereof, section 2 provides that “no

a judicial innovation and so needn’t be pressed
further than its rationale, as might have to be done
if the rule were codified in inflexible statutory
language. Notice too the limitation implicit in the
statutory term “primarily.”... Treating the personal-
name rule as a prohibition against ever using a
personal name as a trademark (in the absence of
secondary meaning) would lead to absurd results, which
is a good reason for hesitating to press a rule to its
logical limit, its semantic outer bounds.
Opposition No. 91160266
19
trade mark ... (3) is primarily merely a surname.”
It thus continued to require refusal of
registration of marks which consisted merely of
surnames, which the court referred to as “the
significant portion of the name,” in The American
Tobacco Co. v. Wix, supra, but eliminated the
requirement of refusal of one consisting of “the
name of an individual.” To refuse registration of
the mark as shown in the drawing would be in
effect to continue the rule of the Act of 1905,
even though the prohibition against registration
of a mark consisting of the name of an individual
(which included surnames but was not restricted
thereto), no longer remains in the law.... It is
to be noted that the mark presented is used as a
trade mark. A different situation might well be
presented in the event an individual name was not
used as a trade mark, as for example, if it were
used merely as a part of the name and address of
the manufacturer rather than as a trade mark.

Ex Parte Dallioux, 83 USPQ 262, 263 (Comm’r 1949). See also
Ex Parte Rivera Watch Corp., 106 USPQ 145 n. 9 (Comm’r 1955)
(“The discussions also indicate an intent to permit an
applicant to register his own full name, but the language
finally adopted in Sec. 2(e) does not necessarily permit
such a broad interpretation. When read in conjunction with
Sec. 2(c), however, such intent probably was expressed,
although in a somewhat negative manner.”)
The USPTO continues to view personal names as
inherently distinctive and registrable on the Principal
Register. See In re J.J. Yeley, 85 USPQ2d 1150 (TTAB 2007)
(J. J. Yeley identifies an individual and, therefore, is not
primarily merely a surname).
We see no logical basis for holding that a personal
name mark which is inherently distinctive for registration
Opposition No. 91160266
20
purposes must nonetheless be shown to have acquired
secondary meaning before it can be relied upon by an opposer
in an opposition proceeding. Thus, we reject applicant’s
argument regarding opposer’s alleged failure to establish
secondary meaning in his mark because we consider the mark
to be inherently distinctive.
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. If we applied two
different standards it would judicially create a first to
file system for personal names. Thus, what cannot be
reconciled is the application of different standards to the
plaintiff and defendant in these circumstances. Either
personal name marks require secondary meaning, in which case
we must remand the application for examination under that
standard, or they do not, in which case opposer need not
show secondary meaning. It is a settled interpretation of
the statute, followed by the USPTO for over 50 years, that
personal name marks are inherently distinctive under the
Lanham Act and we continue to follow that interpretation.
We hold that when a plaintiff is asserting prior rights
Opposition No. 91160266
21
based on a personal name, not a surname, the personal name
trademark is inherently distinctive.5
In view thereof, opposer’s mark THE CAB CALLOWAY
ORCHESTRA, taken in its entirety, is inherently distinctive;
and the record demonstrates opposer’s use of this phrase as
a service mark in connection with live musical performances
prior to applicant’s filing date.6
In addition, we find that the record also supports use
as a trade name and, again, opposer’s use as a trade name is
prior to applicant’s filing date.7 “An organization need
only to have used a name or acronym in a manner that
identifies the company by that name or acronym to the
public.” National Cable Television Association Inc. v.
American Cinema Editors Inc., 937 F.2d 1572, 19 USPQ2d 1424,
1428 (Fed. Cir. 1991). See also West Florida Seafood Inc.
v. Jet Restaurants Inc., 31 F.3d 1122, 31 USPQ2d 1122, 1665

5 In view of the above, we do not reach opposer’s argument that
CAB CALLOWAY is an historical name.

6 In view of our decision regarding opposer’s service mark use we
do not address the issue of whether the use in connection with
opposer’s CDs and videotapes was sufficient to establish
trademark rights prior to applicant’s filing date. See generally
TMEP Section 1202.08 (Title of a Single Work). See also Herbko
International Inc. v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d
1375 (Fed. Cir. 2002).

7 Although opposer did not specifically plead trade name rights
in the phrase THE CAB CALLOWAY ORCHESTRA, both parties proceeded
as if opposer had done so. We deem the pleadings amended to
conform to the evidence under Fed. R. Civ. P. 15(b), that is, to
specifically include a claim of trade name rights in the phrase
THE CAB CALLOWAY ORCHESTRA.

Opposition No. 91160266
22
(Fed. Cir. 1994) (“In this case, the fact that a public
health food inspector believed that the restaurant he was
inspecting went by the name ‘Fast Eddie’s’ is overwhelming
evidence that West was identifying its restaurant to the
public as ‘FAST EDDIE’S.’”) The evidence of record clearly
shows opposer identifying his band as THE CAB CALLOWAY
ORCHESTRA to the public. See Mikami, Burton and Zullo
declarations; see also Brooks Aff. Exh. No. 2 (contracts
between the venues and Chris Brooks and The Cab Calloway
Orchestra).
As part of our finding above, we have determined that
opposer “developed a trade identity,” in THE CAB CALLOWAY
ORCHESTRA through his use of this phrase as a trade name.
Otto Roth & Company, Inc. v. Universal Foods Corporation,
640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981). However,
opposer asserts that “to serve as a bar to registration, a
trade name need not be inherently distinctive, nor must it
have acquired any secondary meaning.” Reply Br. p. 9. In
support of this proposition opposer relies on Alfred
Electronics v. Alford Mfg. Co., 142 USPQ 168, 172 (CCPA
1964). Alfred Electronics involved an interference where
the Board found prior use of a trade name that consisted of
a surname sufficient to establish prior use. In affirming
the Board’s determination, the Court of Customs and Patent
Opposition No. 91160266
23
Appeals (CCPA), the predecessor to the Court of Appeals for
the Federal Circuit (Court), stated:
Under Section 2(d), a trademark is not entitled to
registration where it so resembles a mark or trade
name previously used by another as to be likely to
cause confusion, or to cause mistake, or to
deceive. That section does not specify that a
trade name must be inherently distinctive or that
it must have acquired a secondary meaning to be
effective as a bar to registration and we find no
basis for adopting an interpretation imposing such
a requirement.

The CCPA earlier articulated this idea in In re Lyndale
Farm, 186 F.2d 723, 726, 38 CCPA 825 (CCPA 1951):
A trade name may be descriptive, generic,
geographic, common in a trade sense, personal,
firm or corporate. A trade-mark’s function is to
identify and distinguish a product, whereas a
trade name’s function is to identify and
distinguish a business.

The Lanham Act defines “trade name” as follows:
The terms “trade name” and “commercial name” mean
any name used by a person to identify his or her
business or vocation. Trademark Act § 45, 15
U.S.C. §1127 (emphasis added).

This definition is distinct from the definition for
trademark which includes the phrasing “identify and
distinguish” and “to indicate the source.”
Since Alfred Electronics, the Federal Circuit issued
its decision in Otto Roth, wherein the Court stated:
[T]he opposer must prove he has proprietary rights
in the term he relies upon to demonstrate
likelihood of confusion as to source, whether by
ownership of a registration, prior use of a trade
name, or whatever other type of use may have
developed a trade identity.

Opposition No. 91160266
24
Id. at 43.

In its decision, the Court specifically
“exlud[ed]...other means of trade identification” and
“focus[ed] on trademarks.” Id. at 44. However, the Court
stated that:
[the] proper focus of §2(d) is not on “mark” or
“trade name,” but upon the phrase, “likely *** to
cause confusion, or to cause mistake, or to
deceive” [and] confusion, or a likelihood thereof,
is not recognized where one claiming to be
aggrieved by that confusion does not have a right
superior to his opponent’s, or where he has not
proved that that which he claims identifies him as
the source of goods or services actually does so.

Id. at 44.
Shortly after the Otto Roth decision issued, the Board
had occasion to address this issue in the context of trade
name use. In Fluid Energy Processing & Equipment Co. v.
Fluid Energy, Inc., 212 USPQ 28 (TTAB 1981) the applicant
sought to register “FLUID ENERGY” and opposer brought a
claim of likelihood of confusion under Section 2(d) and
asserted prior trade name use of “Fluid Energy” to establish
its priority. In citing Otto Roth, the Board stated:
In those situations on which a party relies upon
trade name use in support of its claim of damage,
as in the case of reliance on a trademark or
service mark, the trade name, per se, or the
salient feature of the trade name must be of such
a nature that the use thereof by the opposer would
have been sufficient to create a proprietary right
therein, namely, an association by the applicable
trade of the name or term exclusively with opposer
and its products. As previously indicated,
without such an association, the likelihood of
Opposition No. 91160266
25
confusion would appear to be remote, if not
nonexistent.

Id. at 35.

The Board then proceeded to find that “Fluid Energy”
was an “apt or common descriptive term” and, thus, opposer
failed to establish trade identity rights in “Fluid Energy,”
and, therefore, failed to establish any legal basis for its
claim of damage or demonstrate any likelihood of confusion
as to source. Id. at 36. See also Antillian Cigar Corp. v.
Benedit Cigar Corp., 218 USPQ 187, 188 (TTAB 1983) wherein
the Board stated:
With the above concession, the question is raised
whether the previous use in the United States of
an admittedly descriptive trade name provides an
opposer with standing to claim damage based on
Section 2(d) of the Trademark Act from
registration of a confusingly similar mark for
identical goods. In our opinion, trade name
rights cannot in our law stand on a higher
pedestal of protection than that which has been
erected for marks. In Otto Roth, at 209 USPQ 45
the Court above mandated that a secondary meaning
showing was required in the case of the admittedly
descriptive term ‘BRIE NOUVEA’ used in the nature
of a mark in the circumstances of that case.
Accordingly, use of a term as the salient part of
a trade name which is primarily geographically
descriptive of the products in connection with
which it is used cannot endow its user with
standing to oppose registration of a mark believed
to be confusingly similar thereto, absent a
showing that such term has acquired a secondary
meaning indicating the source of those goods.

More recently the Court in Hoover Co. v. Royal
Appliance Mfg. Co., 238 F.3d 1357, 57 USPQ2d 1720 (Fed. Cir.
2001) stated:
Opposition No. 91160266
26
Hoover, as the party opposing registration on the
basis of likelihood of confusion with its own
mark, must establish that “Number One in
Floorcare” is distinctive of its goods either
inherently or through the acquisition of secondary
meaning. See Towers v. Advent Software, Inc., 913
F.2d 942, 16 USPQ2d 1039, 1041 (Fed. Cir. 1990).
Hoover’s attempt on appeal to characterize its
slogan as a trade identity does not relieve it of
the burden of establishing distinctiveness. See
id. at 946, 16 USPQ2d at 1041. “[T]rade identity
rights arise when the term is distinctive, either
inherently or through the acquisition of secondary
meaning.”

Thus, while Lyndale Farm and Alfred Electronics have
not been overruled, we must read them in conjunction with
subsequent case law that clearly requires opposer to have at
least a “superior” right. In view of our finding that
personal names are inherently distinctive, opposer has
established its “superior right” through prior trade name
use.
Finally, applicant’s attempt to tack on purported prior
use to establish prior common law rights is in direct
contradiction to the stipulation it signed whereby applicant
stipulated, as fact, that the earliest date upon which it
may rely is July 23, 1999. Applicant has not shown good
cause to be relieved of this stipulation and such withdrawal
made at briefing, after trial, would unfairly prejudice
opposer. See American Honda Motor Co., Inc. v. Richard
Lundgren, Inc., 314 F.3d 17 (1st Cir. 2002) (citing New
Hampshire v. Maine, 532 U.S. 742 (2001)). In view thereof,
we hold applicant to that stipulated fact.
Opposition No. 91160266
27
We note, however, even if we were to allow applicant to
withdraw that stipulation, the evidence of record is not
sufficient to find that there was prior use, not abandoned,
which applicant could tack on to its filing date. Proof of
a date of use earlier than that asserted in the application
must be established by clear and convincing evidence,
because of the change of position from one “considered to
have been made against interest at the time of filing of the
application.” Hydro-Dynamics Inc. v. George Putnam & Co.,
811 F.2d 1470, 1 USPQ2d 1772, 1773 (Fed. Cir. 1987).
Applicant states that it “holds common law rights in
the trademark CAB CALLOWAY for sound recordings.” The only
evidence of record pertaining to any possible prior rights
or use is in the form of Ms. Cabella Langsam’s declaration
submitted in support of an earlier summary judgment motion
that opposer included in its notice of reliance during its
testimony period. The declaration includes the following
statements:8
3. Over the course of my father’s 60-year career,
he authored or co-authored over one hundred
compositions including the hit Minnie the Moocher,
which features the popular “hi-de-hi-de-hi-de-
hi/ho-de-ho-de-ho-de-ho” refrain. My father also
released numerous records and record albums of his
recorded music, many of which are still in
circulation today...

15. When Cab Calloway passed away in 1994, he
bequeathed to my mother, Zulme, all his property,

8 We note the declaration was entered under opposer’s notice of
reliance without any of the referenced exhibits.
Opposition No. 91160266
28
real personal and mixed, of whatever kind
“including all royalties and residuals or other
payments or rights to payment for the reproduction
of my performances or any songs or lyrics or both
in which I have any ownership or other rights” as
well as all intellectual property rights he
possessed.

17. In December 2000, my mother, my sister Chris
Calloway, my husband and I formed Creative Arts by
Calloway, LLC (hereinafter “CABC”) to manage,
promote, license and otherwise deal with the
rights associated with the name, likeness, voice,
and intellectual property rights belonging to Cab
Calloway. I am the Managing Partner of CABC. My
mother assigned all of her interests in my
father’s intellectual property, including all
trademarks and service marks and associated
goodwill, to CABC.

18. One of CABC’s predecessor[s] in interest,
Calloway Entertainment, granted a trademark
license to Gear Ink to manufacture and sell T-
shirts bearing the CAB CALLOWAY trademark. Gear
Ink currently submits royalty checks to CABC as
consideration for this license, and it has been
sending such checks to my mother since at least
1996.

19. As set forth above, CABC by and with its
predecessors in interest and affiliated entities,
has used the CAB CALLOWAY mark in connection with
a variety of goods (e.g., sound recordings,
clothing, and school supplies) and services (e.g.,
production and presentation of musical and
theatrical performances, educational services, and
scholarship awards) since long prior to Opposer’s
first use of THE CAB CALLOWAY ORCHESTRA.

Opposer’s Notice of Reliance, Exh. No. 13.

These statements are not sufficient to establish by
clear and convincing evidence any trademark rights in the
name CAB CALLOWAY for sound recordings that predate
applicant’s filing date. Applicant contends that “[a]s the
person responsible for the quality of the sound for the
Opposition No. 91160266
29
songs being recorded, Mr. Calloway owned the trademark right
in the CAB CALLOWAY designation in connection with sound
recordings.” Br. p. 26. However, it is not clear what, if
any, trademark rights Mr. Calloway owned to bequeath. There
is simply no evidence from which to make any conclusions on
this issue. There is no evidence that at the time of his
death Mr. Calloway owned the rights to those recordings or
exercised control over those recordings or use of the name
CAB CALLOWAY in connection with those recordings. In
addition, we note the following statement from the decision
in the parties’ civil action:
Creative Arts argues that Cab Calloway transferred
his entertainment business to Zulme Calloway,
because retailers continue to sell his music and
audiences can watch his television and movie
appearances. However, it is undisputed that
various record companies own the rights to the
masters of Cab Calloway’s songs, and there is no
evidence that Creative Arts owns the rights to any
of Cab Calloway’s public appearances.

Creative Arts, 48 Fed. Appx. at 18).

At a minimum, this statement serves to undermine any
possible inference of trademark rights in sound recordings
that could be drawn from the Langsam Declaration.9

9 In view of our finding above, we do not reach the question of
whether sound recordings are sufficiently related to production
of sound recordings for purposes of tacking. See In re Baroid
Drilling Fluids Inc. v. Sun Drilling Products, 24 USPQ2d 1048
(TTAB 1992); Big Blue Products Inc. v. International Business
Machines Corp., 19 USPQ2d 1072 (TTAB 1991). Tacking is permitted
only in “rare instances.” Van Dyne-Crotty Inc. v. Wear-Guard
Corp., 926 F.2d 1156, 17 USPQ2d 1866, 1868 (Fed. Cir. 1991).
Opposition No. 91160266
30
In view of the above, opposer has established that he
is the prior user of the service mark and trade name THE CAB
CALLOWAY ORCHESTRA.
Accordingly, because there is a likelihood of confusion
and opposer has established prior use, opposer has proven
his claim under Section 2(d).
Decision: The opposition is sustained.