Devgel Productions, LLCv.KDIM Entertainment, Inc.

Trademark Trial and Appeal Board

Oct 11, 2019

92065464 (T.T.A.B. Oct. 11, 2019)

This Opinion is not a
Precedent of the TTAB

Mailed: October 11, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Devgel Productions, LLC
v.
KDIM Entertainment, Inc.
_____

Cancellation No. 92065464
_____

Kimberly P. Stein of Holley Driggs Walch Fine Puzey Stein & Thompson
for Devgel Productions, LLC

Stephen L. Humphrey of Cameron LLP,
for KDIM Entertainment, Inc.
_____

Before Mermelstein, Goodman, and Heasley,
Administrative Trademark Judges.

Opinion by Heasley, Administrative Trademark Judge:
Petitioner Devgel Productions, LLC petitions to cancel Respondent KDIM
Entertainment, Inc.’s registration on the Principal Register of the mark ROCKPACK
(in standard characters) for “entertainment, namely, live music concerts” in
International Class 41.1

1 Reg. No. 5067961, issued on October 25, 2016.

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The parties’ dispute centers on ownership of the mark. The Petition for
Cancellation alleges, in essence, that Petitioner Devgel’s principal, John Payne—
former front man, lead singer, and bassist for the rock band Asia—conceived of a
concert series “of one classic hit song after another, each performed by one or more
artists originally affiliated with the song” under the name THE ROCK PACK, with
the slogan HIT AFTER HIT AFTER HIT.2 He and Respondent KDIM, the “promotor
and facilitator,” put on a live music concert in November 2015 in concert with each
other under the ROCKPACK mark.3 KIDM and Devgel each now claim ownership of
the mark, or a variation thereof. About four months after the concert, on March 17,
2016, each party filed an application with the USPTO: Respondent applied to register
ROCKPACK for “entertainment, namely, live music concerts” and Petitioner applied
to register THE ROCK PACK HIT AFTER HIT AFTER HIT for inter alia “concert
booking; arranging and conducting of concerts; entertainment, namely live music
concerts.”4 Respondent’s registration for ROCKPACK issued on October 25, 2016.
Petitioner alleges that Respondent fraudulently procured its registration by
falsely representing to the USPTO that it owned the ROCKPACK mark, and that no
other persons had the right to use the same or similar mark in connection with the
identified services.5 Petitioner also claims priority and likelihood of confusion with

References to the briefs, motions and orders on appeal are to the Board’s TTABVUE docket
system.
2 Petition for Cancellation ¶¶ 3-4, 1 TTABVUE 4.
3 Id. at ¶¶ 9-15, 1 TTABVUE 5-6.
4 Application Serial No. 86944583.
5 Petition for Cancellation ¶¶ 32-41, 45-49, 1 TTABVUE 8-10, 12.
Cancellation No. 92065464
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its marks THE ROCK PACK and HIT AFTER HIT AFTER HIT under Section 2(d).6
15 U.S.C. § 1052(d). Respondent denies that it committed fraud and denies that
Respondent has prior rights in a similar mark.7 Amplifying on its denials,
Respondent further answers inter alia that “Respondent KDIM was the first party to
use the mark ROCKPACK in connection with offering live music concerts,” and
“Neither Petitioner nor [its principal, John] Payne used or established any rights in
ROCKPACK, THE ROCK PACK or related marks prior to KDIM’s first commercial
use of the mark.”8
I. Standing

Standing is a threshold issue that must be proven by the plaintiff in every inter
partes case. Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014). Our primary reviewing court, the U.S. Court of
Appeals for the Federal Circuit, has enunciated a liberal threshold for determining
standing, namely that “[a] petitioner is authorized by statute to seek cancellation of
a mark where it has both a real interest in the proceeding as well as a reasonable
basis for its belief of damage.” Empresa Cubana, 111 USPQ2d at 1062 (citing Ritchie
v. Simpson, 170 F.3d 1902, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999)). Petitioner
claims prior ownership of THE ROCK PACK for identical services, “entertainment,

6 Id. ¶¶ 51-62, 1 TTABVUE 12-13.
7 Answer, 11 TTABVUE.
8 Answer, ¶¶ 67-68, 11 TTABVUE 9. The Answer also raises the affirmative defenses of
“fraud, unclean hands, laches, acquiescence, waiver, and/or estoppel,” id. at ¶ 73, which were
not pursued at trial, and are therefore waived. TiVo Brands LLC v. Tivoli, LLC, 129 USPQ2d
1097, 1100-01 (TTAB 2019).
Cancellation No. 92065464
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namely, live music concerts.” Based on this proprietary and commercial interest,
Petitioner has a personal stake in the outcome of this proceeding. UVeritech, Inc. v.
Amax Lighting, Inc., 115 USPQ2d 1242, 1245 (TTAB 2015). It therefore has standing
to petition to cancel Respondent’s registration. Empresa Cubana, 111 USPQ2d at
1061-62 (Cuban cigar manufacturer had standing to seek cancellation of competitor’s
trademark registrations).
II. The Record

The record consists of the pleadings and Respondent’s application file under
Trademark Rule 2.122(b), 37 CFR § 2.122(b). The parties introduced the following
testimony and evidence:
A. Petitioner’s Evidence
1. Testimony declaration of James Eicher, former tour manager for Asia
Featuring John Payne, and project coordinator or general manager for the
“Raiding the Rock Vault” show in Las Vegas, with exhibits;9
2. Testimony declaration of Mitchell Goldsmith, John Payne’s attorney, with
exhibits;10
3. Testimony declaration of John Payne, co-owner of Petitioner Devgel LLC, a
Nevada limited liability company, with exhibits;11

9 23 TTABVUE.
10 24 TTABVUE.
11 25 TTABVUE.
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4. Notice of Reliance on Petitioner’s application Serial No. 86944583 for THE
ROCK PACK HIT AFTER HIT AFTER HIT, as well as Respondent’s subject
Application Serial No. 86944684 (which is already in evidence);12
5. Notice of Reliance on discovery deposition of Kevin Demers, owner of
Respondent KDIM, Inc., with exhibits;13
6. Testimony declaration of Adam Steck, organizer and promoter of shows for
SPI Entertainment;14
7. Rebuttal declaration of John Payne, with exhibits;15
8. Cross-examination deposition of Robert Kimball, formerly of TOTO;16
9. Cross-examination deposition of Ignacio Magana, former co-owner of
KDIM, Inc..17
B. Respondent’s Evidence

1. Notice of Reliance on discovery deposition of John Payne, with exhibits;18
2. Notice of Reliance on discovery deposition of Lee Evans, co-owner of
Petitioner Devgel, LLC;19

12 26 TTABVUE.
13 27-28 TTABVUE.
14 47 TTABVUE.
15 48 TTABVUE.
16 49 TTABVUE.
17 50 TTABVUE. His full name is Ignacio Magana-Moran, but he is customarily referred to
as simply Ignacio (or “Iggy”) Magana.
18 37 TTABVUE.
19 37 TTABVUE 87 et seq.
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3. Testimony declaration of Robert Kimball, with exhibits;20
4. Testimony declaration of Kevin Demers, owner of Respondent KDIM, with
exhibits;21
5. Testimony declaration of Ignacio Magana, former co-owner of KDIM, Inc.,
with exhibits;22
6. Cross-examination deposition of James Eicher, with exhibits;23
7. Cross-examination deposition of John Payne, with exhibits;24
8. Cross-examination deposition of Mitchell Goldsmith, with exhibits;25
III. Discussion

Although Petitioner’s claims sound in fraud and likelihood of confusion, their
gravamen is Petitioner’s claim of prior ownership of the mark THE ROCK PACK.
Musical groups and concerts frequently give rise to trademark ownership disputes,
and this case is no exception. See, e.g., Wonderbread 5 v. Gilles, 115 USPQ2d 1296
(TTAB 2015). Ownership “must be determined on a case by case basis dependent on
the particular facts adduced in each case.” In re Briggs, 229 USPQ 76, 77 (TTAB
1986).
It is Petitioner’s burden as plaintiff in the proceeding to establish prior ownership
by a preponderance of the evidence. Wonderbread 5 v. Giles, 115 USPQ2d at 1302.

20 39 TTABVUE.
21 40 TTABVUE.
22 42 TTABVUE.
23 44 TTABVUE.
24 45 TTABVUE.
25 46 TTABVUE.
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“[S]ince service mark registrations are presumed valid, one seeking cancellation of
such a registration must rebut this presumption by a preponderance of the evidence
as in any other cancellation proceeding. See Cerveceria Centroamericana, 892 F.2d
[1021,] 1023, 13 USPQ2d [1307,] 1309 (Fed. Cir. 1989); Dan Robbins & Assocs., Inc.
v. Questor Corp., 599 F.2d 1009, 1014, 202 USPQ 100, 105 (CCPA 1979); 15 U.S.C. §
1057(b).” Martahus v. Video Duplication Servs., Inc., 3 F.3d 417, 27 USPQ2d 1846,
1850 (Fed. Cir. 1993) (citations edited). We therefore address Petitioner’s ownership
claim first.
A. Petitioner’s Ownership Claim

Petitioner claims that the musician John Payne “conceived the idea for The Rock
Pack and The Pock Pack Concert Series at least as early as April 2014.”26 “At this
time, Payne had created not less than four show concepts, which he intended to
advertise and promote to investors in order to fund production of such shows.”27
Payne used the names of the show concepts—including “Pissed Cooks,” “AC/DC
Experience,” “Rock Apocalypse,” and “Rock Pack”—in his email signature block.28
Payne registered the domain name www.therockpack.com, “registered the format for
The Rock Pack Concert Series with the Writers Guild of America (WGA),” and
“registered the copyright with the U.S. Copyright Office.”29 Throughout 2014, Payne
avers, he “approached various persons in the industry regarding the Rock Pack

26 Petitioner’s brief, 52 TTABVUE 8; Payne decl. ¶¶ 17, 31, 25 TTABVUE 4, 6.
27 Petitioner’s brief, 52 TTABVUE 8; Payne decl. ¶ 18, 25 TTABVUE 4.
28 Payne decl. ¶ 17, 25 TTABVUE 4; Payne dep. 23:13-24:2, 45 TTABVUE 24.
29 Petitioner’s brief, 52 TTABVUE 9; Payne decl. ¶¶ 21-23, 25 TTABVUE 4.
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Concert Series and promotion of THE ROCK PACK Mark.”30 For example in 2014-
15, he engaged in discussions of his various show concepts, including THE ROCK
PACK, with Skyline Music, LLC, with Steck Productions International, and with
representatives of the SLS Casino and Westgate Hotel in Las Vegas.31 In January
2015, Payne assigned his claimed ownership rights in THE ROCK PACK to Petitioner
Devgel Productions LLC, a Nevada limited liability company owned equally by Payne
and Lee Evans.32
In or around late 2014, Payne met Kevin Demers (who later formed Respondent
KDIM) via a friend, Ignacio Magana, who had worked at a Las Vegas show at which
Payne performed.33 Payne endeavored to persuade Demers to invest in a planned
company, Chrome Cross, that would put on Payne’s concept shows, but the proposal
fell through; the entity Chrome Cross was never created, and a draft operating
agreement and private placement memorandum relating thereto were never signed.34
After the investment proposal with Payne failed to come to fruition, Kevin Demers
and Ignacio Magana joined forces to form Respondent KDIM to produce live concert
shows, beginning with a show in Florida. The working title for the Florida show was
“Vegas Rocks Tampa,” which was to have musical performers and Las Vegas-style
circus performers. In a written agreement, KDIM engaged Payne’s services to

30 Petitioner’s brief, 52 TTABVUE 9; Payne decl. ¶ 24, 25 TTABVUE 5.
31 Petitioner’s brief, 52 TTABVUE 9-10; Payne decl. ¶¶ 25-27, 25 TTABVUE 5.
32 Payne decl. ¶¶34-35, ex. 13, 25 TTABVUE 6-7, 55-61.
33 Payne decl. ¶ 40, 25 TTABVUE 7.
34 Payne decl. ¶ 49, 25 TTABVUE 8.
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perform in the show with his band, and to act as musical director.35 The date and
venue for the show changed to November 19, 2015 at the Germain Arena in Estero,
Florida. At Payne’s recommendation, KDIM changed the name of the show to The
Rock Pack and dropped the proposed circus performer acts.36
Payne takes the position that his written agreement with KDIM extended only to
the Vegas Rocks Tampa show, and that he had no written agreement with KDIM
regarding the November 19, 2015 The Rock Pack show at the Germain Arena.37
Nonetheless, he continued to act as musical director and performer for the show.
Petitioner tends to maximize Payne’s role in the show and minimize Respondent’s,
stating: “Thereafter, Respondent began to work as the concert promoter for Payne’s
The Rock Pack show….”38 As Payne puts it:
I made the creative selections of the songs and artists for the events, and I
used my exclusive connections with the name artists to ensure their
presence. I supplied all musicians, all my copyrighted The Rock Pack logos,
artwork and video footage for screens. I also agreed to perform at each
event. In exchange, as promoter, Respondent paid me a flat fee per
concert.39

He adds, “Respondent also agreed to provide the venues, accommodations,
equipment, and other materials needed to put on my shows.”40
In February 2016, Payne terminated his relationship with Respondent KDIM.41

35 Payne decl. ¶¶ 52-53, 25 TTABVUE 9.
36 Payne decl. ¶ 53, 25 TTABVUE 9.
37 Payne decl. ¶¶ 53, 55-56, 25 TTABVUE 9.
38 Petitioner’s brief, 52 TTABVUE 14; Payne decl. ¶¶ 53, 71, 25 TTABVUE 9, 11.
39 Payne decl. ¶ 63, 25 TTABVUE 10.
40 Payne decl. ¶ 60, 25 TTABVUE 10.
41 Petitioner’s brief, 52 TTABVUE 16, Payne decl. ¶ 68, 25 TTABVUE 11.
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Since then, both Petitioner and Respondent have continued to put on musical concerts
as the ROCKPACK, THE ROCK PACK, or variations thereof, Petitioner notes.42 This
has caused confusion among concertgoers, artists, and venue owners, resulting in
problems booking shows and even cancellations.43 For instance, at a show in Phoenix
that was organized by Petitioner but eventually postponed, people called Respondent
for ticket refunds.44
In sum, as the basis for its ownership claim, Petitioner emphasizes that Payne
conceived of THE ROCK PACK and assigned it to his limited liability company,
Petitioner Devgel, not to Respondent KDIM:
Payne is the sole creator of THE ROCK PACK Mark, The Rock Pack, and
all intellectual property associated therewith. Neither Kevin Demers …,
Ignacio Magana …, or any other representative of Respondent had any
involvement in the creation of The Rock Pack, The Rock Pack logo and THE
ROCK PACK Mark used in connection with The Rock Pack Concert Series.
…
Respondent not only admits that it was not the creator of The Rock Pack,
but also admits that it was never assigned any of the rights in The Rock
Pack. …
As such, Respondent does not have any ownership rights in The Rock Pack
name, The Rock Pack Concert Series, and any trademarks associated
therewith.45

B. Respondent’s Ownership Basis

Respondent does not dispute that Payne came up with the name THE ROCK
PACK.46 It maintains, however, that Payne’s creation of a concept for a show (as one

42 Petitioner’s brief, 52 TTABVUE 18, Payne decl. ¶¶ 73-74, 78, 25 TTABVUE 11-12.
43 Payne decl. ¶ 79, 25 TTABVUE 12.
44 Petitioner’s brief, 52 TTABVUE 20, citing Demers dep. 462:9-16, 27 TTABVUE 545.
45 Petitioner’s brief, 52 TTABVUE 10-12, citing Payne decl. ¶¶ 31-32, 25 TTABVUE 6.
46 Respondent’s brief, 53 TTABVUE 11.
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of various show concepts) did not constitute use of its name as a trademark,
conferring ownership of the trademark upon him. Respondent notes that Payne
registered the domain name therockpack.com to reserve a website “for future use”;47
that a Writers Guild of America registration does not confer any legal rights;48 and
that Payne’s efforts to find investors and producers to put on one of his concept shows
did not come to fruition.49 Payne signed an assignment dated January 7, 2015
purporting to assign to his yet-to-be-formed limited liability company, Petitioner
Devgel, LLC, “entertainment concepts” listed as:
1. DEVGEL PRODUCTIONS
2. PISSED COOKS
3. STAIRWAY A CLASSIC ROCK STORY
4. THE ROCK PACK
5. VEGAS ROCK APOCALYPSE
6. EMD ROCK APOCALYPSE
7. THE AC/DC EXPERIENCE
And all goodwill associated with the same.50
But Payne, “who had no more than a concept for a show entitled ‘THE ROCK
PACK,’ had no trademark rights to assign” to Petitioner Devgel, Respondent states.51

47 Respondent’s brief, 53 TTABVUE 26, quoting Respondent’s Answer to Interrogatory no. 7,
45 TTABVUE 214.
48 Answer ¶ 8, 11 TTABVUE 3.
49 Respondent’s brief, 53 TTABVUE 27.
50 Payne Decl. ex. 13, 25 TTABVUE 55-61.
51 Respondent’s brief, 53 TTABVUE 30.
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In consequence, Respondent maintains, Petitioner Devgel did not acquire
trademark rights in THE ROCK PACK prior to KDIM’s acquisition of rights in
ROCKPACK through the Germain Arena Show.52 According to Kevin Demers,
Respondent’s principal, in March or April 2015 he and Iggy Magana began to discuss
the possibility of developing a live show to present in Florida, where Demers lives.53
To this end, they formed Respondent KDIM, Inc., a Florida corporation, in July
2015.54 Magana was staying at Payne’s house in Las Vegas, and Payne, learning of
the show, “expressed interest in performing in our show and offered his band as a
house band. He said he could help line up other singers because he knew them from
touring and so forth over the years,” said Demers.55
Respondent KDIM (as “Presenter”) and Payne (as “Artist/Talent”) entered into a
contract on August 3, 2015 providing in pertinent part that he would perform at the
show with his band, “Asia Featuring John Payne” acting as the “house band,” and
that he would act as musical director, helping to line up musical performers for the
show and designing the list of songs to be performed.56 Under the terms of the
contract, Payne would be an independent contractor with Respondent KDIM, the
Presenter, which agreed to pay him a total of $20,000—$5,000 upon signing, $5,000
upon signing four or more singers/artists from known bands, and the rest following

52 Respondent’s brief, 53 TTABVUE 37.
53 Demers decl. ¶ 20, 40 TTABVUE 6.
54 Demers decl. ¶ 20, ex. 40 TTABVUE 6, 170; Magana decl. ¶ 15, 42 TTABVUE 4.
55 Demers decl. ¶ 24, 40 TTABVUE 6-7; see also Magana decl. ¶ 18, 42 TTABVUE 4.
56 Demers decl. ¶¶ 25-27, 40 TTABVUE 7, 343-346.
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the show.57 The contract further provided that the date of the show would be
November 21, 2015, at “the Tampa Amphitheater or other venues.”58
Respondent KDIM paid Payne $5,000 upon execution of the contract.59 This was
followed by another $5,000 check on August 17, 2015, after he had started inviting
current and former lead singers of famous rock bands to perform in the show.60 If the
singers expressed interest, Payne would refer them to Respondent KDIM to work out
their contracts for performing in the show. Respondent KDIM contracted with the
performers individually; as provided in their contracts, KDIM paid their performance
fees and covered their expenses, including airfare, hotels, and meals in connection
with the show.61
The artists with whom KDIM contracted were: Bobby Kimball, original lead singer
of the band TOTO;62 Steve Walsh, former member of the band KANSAS;63 Fee
Waybill, current member of the band THE TUBES;64 Robin Zander, current member
of the band CHEAP TRICK;65 and Mickey Thomas, lead vocalist of STARSHIP.66
Respondent’s contracts with the artists provided in pertinent part that “the ARTIST

57 40 TTABVUE 344.
58 40 TTABVUE 344.
59 Demers decl. ¶ 28, 40 TTABVUE 7.
60 Id.; 40 TTABVUE 161.
61 Demers decl. ¶ 44, 40 TTABVUE 10.
62 Respondent’s brief, 53 TTABVUE 18, 40 TTABVUE 126-128.
63 40 TTABVUE 131-135.
64 40 TTABVUE 119-121.
65 40 TTABVUE 136-138.
66 40 TTABVUE 123.
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hereby agrees to perform the engagement, Vegas Rocks Florida OR similar name,
hereafter provided” and stated that the first show would be “at the Germaine Arena
11000 Everglades Parkway, Estero Florida 33928” at “11/19/2015,” among other
possible dates.67
The change of date and venue were attributable to KDIM’s negotiations with Scott
Bryant, Senior Vice President of the Germain Arena, who was responsible for
overseeing event booking for that venue. Beginning in July or early August 2015,
Demers of KDIM met with Mr. Bryant on a weekly basis; on or about August 25,
KDIM contracted with and paid KTB Florida Sports Arena, LLC, the company that
operates the Germain Arena, to present the November 19, 2015 show.68 KDIM also
paid for a $2,000,000 liability insurance policy for the show, naming KTB, not Payne,
as an additional insured.69
In or about mid-August, after Payne had signed the contract with KDIM, Demers
avers, “Payne suggested that the name of the show be changed from Vegas Rocks
Florida to ROCK PACK. Magana and I discussed the suggestion and I decided to
make the change.”70 According to Demers, Payne gave no indication at that time that
he claimed to own the name, or that changing the show’s name would render the show
“his show” or change his role with respect to the show.71 Furthermore, Demers

67 Waybill contract, 40 TTABVUE 119, Kimball contract, 40 TTABVUE 126, Walsh contract,
40 TTABVUE 131, Zander contract, 40 TTABVUE 136.
68 Demers decl. ¶¶ 37, 39, 42, 40 TTABVUE 9.
69 Demers decl. ¶¶ 40-41, 40 TTABVUE 9.
70 Demers decl. ¶ 32, 40 TTABVUE 8.
71 Demers decl. ¶¶ 33-34, 40 TTABVUE 8.
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maintains, Payne gave him no reason to believe that the changes in the name, date,
and venue of the show would in any way alter KDIM’s rights in owning and
presenting the show: “No other contract with Payne was signed or drafted between
Payne and KDIM. Payne never asked that a new contract be drawn up; he never
offered a new contract nor did he request or propose amending the Payne Contract
dated August 3, 2015.”72 Respondent KDIM paid all that was promised to Payne in
the August 3 contract.73
In sum, as Respondent sees it:

KDIM planned, organized, promoted, presented and paid for the
ROCK PACK show that was held on November 19, 2015 at the
Germain Arena. KDIM began to actively promote the show under the
name ROCK PACK beginning in August 2015. Insofar as I am aware,
no one else used the name or trademark in connection with a live
music concert prior to that date.74

Respondent concludes: “It was KDIM which, in good faith and without any idea
that Payne or Devgel would claim rights in ‘ROCK PACK’, actually adopted and used
‘ROCK PACK’ as a mark in commerce, gaining public recognition and good will in the
mark.”75
Respondent agrees with Petitioner in one respect: “KDIM agrees that there is a
likelihood of confusion resulting from the use of THE ROCK PACK by Devgel
following KDIM’s Germain Arena show.”76

72 Demers decl. ¶ 34, 40 TTABVUE 8.
73 Demers decl. ¶ 28, 40 TTABVUE 7.
74 Demers decl. ¶ 70, 40 TTABVUE 15.
75 Respondent’s brief, 53 TTABVUE 37.
76 Respondent’s brief, 53 TTABVUE 31.
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C. Analysis

When, as here, the parties lay claim to essentially the same mark77 for essentially
the same services, based in part on actions taken in concert, a likelihood of confusion
is inevitable, and the dispute centers on ownership. See Wonderbread 5 v. Gilles, 115
USPQ2d at 1301-02; Nahshin v. Prod. Source Int’l LLC, 107 USPQ2d 1257, 1258
(TTAB 2013).
We find that Payne’s actions prior to the Germain Arena show of November 19,
2015—that is, conceiving of THE ROCK PACK and endeavoring to obtain investment
in and production of the show—failed to establish prior rights in the claimed mark.
Even if Payne was the first to conceive of the name, “it is not the act of inventing a
trademark which creates prior rights.” Reflange Inc. v. R-Con Int’l, 17 USPQ2d 1125,
1130 (TTAB 1990). “The aphorism ‘No trade, no trademark’ is well established in the
law. … That is, trademark rights are not secured by the mere conception of an idea
of using a word, name or design on a product [or service].” Hamilton Burr Publ’g Co.
v. E.W. Commc’ns, Inc., 216 USPQ 802, 805 (TTAB 1982), cited in Norris v. PAVE:
Promoting Awareness, Victim Empowerment, 2019 USPQ2d 370880, *3, n. 35 (TTAB
2019). “Mere invention, creation, or discussion of a trademark does not create priority
rights.” Hydro-Dynamics Inc. v. George Putnam & Co., Inc., 811 F.2d 1470, 1 USPQ2d
1772, 1774 (Fed. Cir. 1987) (quoting Gilson, TRADEMARK PROTECTION AND PRACTICE §

77 Respondent’s mark, ROCKPACK, is virtually identical to Petitioner’s claimed mark, THE
ROCK PACK. The article “THE” and the space between ROCK and PACK do not
meaningfully distinguish them. See In re The Place Inc., 76 USPQ2d 1467, 1468 (TTAB 2005)
(definite article THE is a non-distinctive term that adds no source-indicating significance to
the mark as a whole); In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010) (finding
ACTIVECARE and ACTIVE CARE similar). And the parties agree that they are confusingly
similar. We shall therefore treat the two terms interchangeably.
Cancellation No. 92065464
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3.03, at 3-46.5) cited in Conolty v. Conolty O’Connor NYC LLC, 111 USPQ2d 1302,
1304 n.4 (TTAB 2014). “[T]he right to a particular mark grows out of its use, not its
mere adoption ….” Couture v. Playdom, Inc., 778 F.3d 1379, 113 USPQ2d 2042, 2043-
44 (Fed. Cir. 2015) (quoting United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90,
97 (1918)). “The fact that a party first conceived the mark and discussed it with others
in the organization in anticipation of and in preparation for a subsequent use in trade
does not constitute an ‘open’ use and therefore does not establish priority as of the
date of these discussions.” La Maur Inc. v. Int’l Pharmaceutical Corp., 199 USPQ 612,
616-17 (TTAB 1978). See also 2 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION
§ 16:11 (5th ed. Sept. 2019 update) (“Trademark priority is not granted to the person
who was first to conceive of the idea of using a given symbol as a mark.”).
Payne’s preparations to use the mark also fail to establish prior ownership. As the
Federal Circuit Court of Appeals has stated:
[W]e have held that mere preparation and publication of future plans do
not constitute use in commerce. See, e.g., Aycock Eng’g [v. Airflite, Inc., 560
F.3d 1350, 90 USPQ2d 1301, 1308 (Fed. Cir. 2009)] (“[M]ere preparations
to use [the] mark sometime in the future will not do . . . .”); id. at [1306]
(“[T]he advertising or publicizing must relate to an existing service which
has already been offered to the public.” (internal quotation marks
omitted)); see also Intermed Communs., Inc. v. Chaney, 197 USPQ 501, 507
(TTAB 1977) (“Mere adoption (selection) of a mark accompanied by
preparations to begin its use are insufficient . . . for claiming ownership of
. . . the mark.”).

Lyons v. Am. Coll. of Veterinary Sports Med. & Rehab., 859 F.3d 1023, 123 USPQ2d
1024, 1030-31 (Fed. Cir. 2017) (citations edited), cert. denied 138 S. Ct. 366 (2017).
Id. at 1027 (“It is axiomatic in trademark law that ownership of a mark is predicated
on priority of use in commerce.”).
Cancellation No. 92065464
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The Federal Circuit has noted the statutory definition of use in commerce of a
service mark:
For service marks, the “use in commerce” requirement is met when: (1) a
mark is “used or displayed in the sale or advertising of services”; and (2)
either (i) the services are “rendered in commerce” or (ii) the services are
“rendered in more than one State or in the United States and a foreign
country and the person rendering those services is engaged in commerce
in connection with the services.” 15 U.S.C. § 1127. Therefore, to meet the
use requirement for a service mark, an applicant must use the mark in
advertising or sale of a service, and show that the service was actually
rendered in interstate commerce or in more than one state, or in this and
a foreign country, by a person engaged in commerce.

Lyons v. Am. Coll. of Veterinary Sports Med. & Rehab., 123 USPQ2d at 1027-28.
Payne’s preparations fall far short of this mark. His registration of the domain
name www.therockpack.com does not constitute use in commerce. As Petitioner
admitted in response to an interrogatory, “The Website was reserved for future use
once Payne had identified musicians of a sufficient caliber to ensure the show would
be a success.”78 See Couture v. Playdom, 113 USPQ2d at 2042-43 (website that did
not provide services fell short of use of service mark); Stawski v. Lawson, 129 USPQ2d
1036, 1045 (TTAB 2018) (citing Brookfield Comms., Inc. v. W. Coast Ent. Corp., 174
F.3d 1036, 50 USPQ2d 1545, 1555 (9th Cir. 1999) (mere registration of domain name
does not constitute use of trademark in commerce)), appeal docketed, No. 19-1617
(Fed. Cir. Feb. 19, 2019). Nor does his listing of THE ROCK PACK among other
“entertainment concepts” in his email signature block. Couture v. Playdom, 113
USPQ2d at 2043 (“‘Without question, advertising or publicizing a service that the

78 Answer to Interrogatory no. 7, 45 TTABVUE 213-214.

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applicant intends to perform in the future will not support registration’; the
advertising must instead ‘relate to an existing service which has already been
offered to the public.’”) (quoting Aycock Eng’g v. Airflite, 90 USPQ2d at 1306). As for
his copyright registration, “it is the prevailing law that ownership of a copyright
confers no trademark rights on the copyright owner and therefore provides no proper
basis for contesting the right of another to register a trademark. That is to say,
petitioner owns no trademark rights in the term … simply by virtue of his ownership
of a copyright….” Clamage Indus. Ltd. v. Glendinning Cos., Inc., 175 USPQ 362, 363
(TTAB 1972); see also Penetred Corp. v. Uniroyal, Inc., 162 USPQ 620, 622 (TTAB
1969) (copyright registration is incompetent as evidence of use) (citing Rap-in-Wax
Paper Co. v. Foilrapp, Inc., 122 USPQ 534, 535 (TTAB 1959) (same)). A fortiori,
Payne’s registration with the Writer’s Guild of America did not constitute use as a
trademark, and conferred no trademark rights upon him.
Furthermore, Payne’s attempts to cultivate interest in the THE ROCK PACK
show among prospective investors and producers failed to yield fruit. However
earnest those efforts may have been:
The language of the statute, by requiring that the mark be “used or
displayed in the sale or advertising of services, and the services are
rendered in commerce,” makes plain that advertisement and actual use of
the mark in commerce are required; mere preparations to use that mark
sometime in the future will not do. Thus, we hold that an applicant's
preparations to use a mark in commerce are insufficient to constitute use
in commerce. Rather, the mark must be actually used in conjunction with
the services described in the application for the mark.
Aycock Eng’g Inc. v. Airflite Inc., 90 USPQ2d at 1308.
Cancellation No. 92065464
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Hence, even though Payne purported to assign to Petitioner Devgel his rights in
THE ROCK PACK, he had no cognizable trademark rights to assign. This is
reminiscent of Brooks v. Creative Arts by Calloway, in which the applicant claimed
that the musician Cab Calloway bequeathed his intellectual property rights in the
name CAB CALLOWAY to his widow, who in turn assigned those rights to the
applicant. The Board found, however, that the evidence adduced by that applicant
was insufficient to establish assignable trademark rights: “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.” Brooks v. Creative Arts by Calloway LLC, 93
USPQ2d 1823, 1833 (TTAB 2009).
Similarly, in Renaissance Rialto Inc. v. Boyd, the Board found:
It is clear from the terms of the Transfer Agreement that Lakeside Cinema
intended to transfer to opposer its “right, title or interest” including
“accompanying goodwill,” if any, to the mark RIALTO CINEMAS. It is not
clear, however, that Lakeside Cinema ever possessed any rights in the
mark for it to transfer. … [I]t is not at all clear from the Transfer
Agreement that Lakeside Cinema ever used the mark or had any goodwill
therein to transfer to opposer. Without evidence of any actual use of the
mark, Lakeside Cinema had no goodwill to give, regardless of what the
Transfer Agreement may say or suggest was intended to be transferred.
Renaissance Rialto Inc. v. Boyd, 107 USPQ2d 1083, 1085-86 (TTAB 2013).
Here, as in the Calloway and Renaissance Rialto cases, Petitioner has failed to
demonstrate that Payne had trademark rights to assign. We thus find that Petitioner
has failed to prove ownership of trademark rights in THE ROCK PACK prior to
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Respondent’s production and presentation of the ROCKPACK show at the Germain
Arena on November 19, 2015.
We further find that Respondent, not Petitioner, derived trademark rights from
the Germain Arena show. Respondent organized, produced, and presented the show
under the mark. Respondent negotiated with Mr. Bryant, the Senior Vice President
responsible for booking the Germain Arena; Respondent contracted with and paid
KTB, the company that operates the Germain Arena, to present the November 19,
2015 show; Respondent paid for a $2,000,000 liability insurance policy for the show,
naming KTB as an additional insured; and Respondent contracted with all of the
performing artists, and paid them all. As in Lyons, “all indicia of ownership” point to
Respondent, not Petitioner. Lyons v. Am. Coll. of Veterinary Sports Med. & Rehab.,
123 USPQ2d at 1027.
In Lyons, “[t]he Board analyzed three factors to determine ownership of the mark:
(1) the parties’ objective intentions or expectations; (2) who the public associates with
the mark; and (3) to whom the public looks to stand behind the quality of goods or
services offered under the mark.” Id. at 1026. In that case, Sheila Lyons was
temporarily a member of the organizing committee formed to seek accreditation of
the “American College of Veterinary Sports Medicine and Rehabilitation”—a name
she conceived of. After she was dismissed from the organizing committee, that
committee obtained accreditation as THE AMERICAN COLLEGE OF VETERINARY
SPORTS MEDICINE AND REHABILITATION, provided services under that mark,
and was ultimately deemed the owner of the mark. As the Federal Circuit explained,
“Her involvement with the committee may have been the very reason that the
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committee adopted the mark; nevertheless, it is clear from the record that the College
used the mark in commerce before Lyons, and Lyons cannot in effect appropriate it.”
Id. at 1030.
In this case, Payne, like Lyons, conceived of the THE ROCK PACK mark, but his
claim of ownership (from which Petitioner derives its claim) is even weaker than
Lyons’. Under the first Lyons factor—the parties’ objective intentions or
expectations—Payne was simply an independent contractor with Respondent, which
put on the show under the mark. Respondent, as “Presenter” of the show, contracted
with Payne and his band as “Artist/Talent,” on August 3, 2015.79 Payne was paid
$5,000 upon signing the contract.80 He began recruiting artists to perform in the show
that month,81 and received another $5,000 payment therefor.82 And he or his band
received final payment sometime around the date of the show.83
Even though there were changes in the show’s venue, date, and name, we find
that the contract remained in force, that the parties to the contract complied with
and performed its material terms, and that Respondent paid Payne according to its
terms. Petitioner’s contention that the August 3 contract was terminated, and that
Payne sought a new written contract for the November 19, 2015 Germain Arena
show, is inconsistent with the parties’ performance, inconsistent with Respondent’s

79 Artist, Talent Contract, 40 TTABVUE 343-346.
80 Demers dep. 502:16-18, 27 TTABVUE 585.
81 Payne dep. 107:6-14, 37 TTABVUE 48.
82 Demers decl. ¶ 28, 40 TTABVUE 7, 161.
83 Payne dep. 36:14-24, 37 TTABVUE 18.
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testimony that Payne did not seek a new contract, and unsupported by
documentation. See Tao Licensing LLC v. Bender Consulting Ltd., 125 USPQ2d 1043,
1053 (TTAB 2017) (the presence of corroborating business documentation would
strengthen a party’s testimony, “and the absence of such records does the opposite.”).
At some point after signing the contract on August 3, Payne suggested changing
the name of the show to “THE ROCK PACK.” When he made this suggestion, Demers
and Magana testify, he did not claim that he owned the name, that he had rights in
the name or the show, or that the contract had been changed.84 When Demers decided
to change the name to ROCKPACK, and so informed the Germain Arena contact, Mr.
Bryant, Payne was present in Mr. Bryant’s office and “made no claim to owning the
name and made no mention of Devgel or Lee Evans.”85
Payne was asked at his deposition:
Q. But did you ever say to Mr. Demers that you
claimed trademark rights in the name The Rock Pack and
that you would own the trademark for that show if it were
used at the Germain Arena?
A. Not at that time. But -- obviously, later, he
became aware of that when it was registered. But he knew
it was -- it was my creation.86
On September 1, 2015, about a month after signing the contract with Respondent
KDIM, Payne sent Magana an email with what Payne termed “The Rock Pack show
format”:

84 Magana decl. ¶ 24, 42 TTABVUE 5; Demers dep. 563:10-25, 27 TTABVUE 646.
85 Demers decl. ¶ 38, 40 TTABVUE 9.
86 Payne dep. 139:9-15, 37 TTABVUE 60.
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87
On September 13, 2015, Payne sent Demers an email complaining about the
marketing of the upcoming Germain Arena show. The email states in pertinent part:
Dear Kevin
I am getting concerned as to the marketing of this show.
…
I was perturbed to see in the press release from the Germain Arena that
it is titled KDIM Entertainment from Punta Gorda Presents Classic
Rock Series. It should be KDIM Entertainment Presents The Rock Pack
as part of their Classic Rock Series.
…
I have worked on The Rock Pack for over a year now. It is copyrighted
with the U.S. Copyrights office, I have the URL, and the show format is
registered with the Writers Guild of America. As you know especially
since Rock Vault I am very protective and diligent over my Intellectual
Property and Copyrights.

87 Payne decl. ¶ 58, ex. 14, 25 TTABVUE 9, 63-65.
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…
Regards
John88

As Payne later acknowledged during the course of discovery, his application to
register a text work bearing the title “THE ROCK PACK: Hit after hit after hit!” was
received by the U.S. Copyright Office on September 8, 2015.89
Several days before the show, Payne objected to a press release to a Florida
newspaper that failed to acknowledge his status as the creator of THE ROCK PACK:
90
Magana responded to Payne:

88 Demers dep. ex. 28, 28 TTABVUE 84.
89 “Q. So do you believe it’s accurate to say that you filed, or your attorney filed, the copyright
registration application on or about September 8, 2015? A. … That seems to be correct.”
Payne dep. 30:13-17, 37 TTABVUE 14.
90 Demers dep., 28 TTABVUE 223.
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91
As these communications make clear, Payne asserted his objective intention or
expectation that he would receive recognition as the person who conceived of and
created THE ROCK PACK, and relied upon his copyright, domain name registration,
and WGA registration, not to mention his email signature block dubbing himself the
“creator” of many show concepts. Respondent does not dispute that Payne conceived
of the concept. But as we have seen, none of this constitutes service mark use,
sufficient to accord Payne or his limited liability company rights in the THE ROCK
PACK mark. See, e.g., Couture v. Playdom, 113 USPQ2d at 2043-44 (right to mark
grows out of use, not adoption); Clamage Indus. v. Glendinning, 175 USPQ at 363
(ownership of copyright not ownership of trademark); Stawski v. Lawson, 129
USPQ2d at 1045 (registration of domain name not use in commerce). Indeed, Payne
contemplated that Respondent KDIM would present the show to the public. As he

91 Demers dep., 28 TTABVUE 222.
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stated in his September 13, 2015 email to Demers, the press release “should be KDIM
Entertainment Presents The Rock Pack as part of their Classic Rock Series.”92
Consequently, under the second Lyons factor, that is how it was presented to the
public:
93
Also, Respondent KDIM, not Payne or Petitioner Devgel, sold ROCK PACK
merchandise to the public at the Germain arena show.94

92 Demers dep. ex. 28, 28 TTABVUE 84.
93 Demers dep. ex. 39, 28 TTABVUE 147.
94 Demers dep. Demers dep. 169:4-6, 320:8-12, Payne dep. 19:6-9, 27 TTABVUE 185, 336, 45
TTABVUE 20.
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Petitioner argues that Respondent KDIM’s actions in arranging for the Germain
Arena show—such as booking the venue, paying the insurance, and contracting with
the artists—are consistent with the role of a promoter, who arranges for a concert,
but does not own intellectual property in the acts he promotes.95 This position is
corroborated by two promoters, James Eicher and Adam Steck, who opine that they
would not own intellectual property in the acts they promote.96 Their opinions,
however, relate to preexisting intellectual property, such as ownership of a
performing artist’s copyright.97 In this case, we find that Respondent did more than
that. The very mark, ROCKPACK, suggests that the performers will be a variety of
musical performers, not just one. Respondent put together the performers and put on
the show under the mark, creating its rights in the mark. Magana testified: “If I’m a
promoter, I buy the show that’s ready to go. … Which this was not a show ready to
go. We did everything. … [W]e put it all together.”98 Demers testified, “Basically a
promoter hires the band, all of the people as a package; and then those people pay
their people, a promoter, because typically a promoter does not own a show. I own
The Rock Pack.”99
Their efforts were effective in creating an association between Respondent KDIM
and the ROCKPACK mark. Bobby Kimball, the original lead singer for the band

95 Payne rebuttal decl. ¶ 8, 48 TTABVUE 3-4.
96 Eicher dep. 38:1-15, 44 TTABVUE 39; Steck decl. ¶¶ 9-11, 47 TTABVUE 3.
97 Eicher dep. 44 TTABVUE 39.
98 Magana dep. 76:25-77:5, 50 TTABVUE 77-78.
99 Demers dep. 178:3-6, 27 TTABVUE 194.
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TOTO, contracted with KDIM, performed at the Germain Arena, and was paid in
accordance with the contract.100 Following the Germain Arena show, he contracted to
perform in other ROCKPACK shows organized by Respondent KDIM and by
Petitioner Devgel. “In performing in ROCK PACK shows presented by Devgel I
assumed that Devgel was licensing the ROCK PACK trademark for use with the
shows from KDIM,” he testified.101 In fact, “[d]uring the ‘meet and greet’ period with
fans following the ROCK PACK shows, when fans have asked me who as the show
organizer I have always said that it was KDIM.”102
The third factor indicating ownership of a mark—the party to whom the public
looks to stand behind the consistency and quality of services offered under the mark—
also favors Respondent. As noted, Respondent KDIM presented the first ROCKPACK
show to the public at the Germain Arena, where it sold ROCKPACK merchandise to
the public. It was responsible for booking the venue, purchasing insurance, booking
the artists, and paying all concerned. One of those artists, Bobby Kimball of TOTO,
thought Petitioner Devgel was using the ROCK PACK mark under license from
Respondent KDIM, and told fans that Respondent was the show organizer. When
Petitioner Devgel organized and then postponed a ROCK PACK show in Phoenix,
Demers testified, “several people called me for tickets refunds. It was confusing. It
was not my show, but people calling me for ticket refunds.”103 This indicates that the

100 Kimball decl. ¶¶ 3, 8, 11, 39 TTABVUE 2-5.
101 Kimball decl. ¶ 19, 39 TTABVUE 6-7.
102 Kimball decl. ¶ 20, 39 TTABVUE 7.
103 Demers dep. 462:9-16, 27 TTABVUE 545.
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public looks to Respondent to stand behind the quality and consistency of services
offered under the mark.
Thus, all three factors indicating ownership point to Respondent, not Petitioner.
Lyons v. Am. Coll. of Veterinary Sports Med. & Rehab., 123 USPQ2d at 1027.
IV. Conclusion
Based on the record before us, we find that Petitioner has failed to meet its burden
of proving by a preponderance of the evidence: that Respondent does not own the
registered mark ROCKPACK; that Respondent committed fraud in the course of
applying for and acquiring its registration for ROCKPACK;104 or that Petitioner has
a prior use of ROCKPACK or any similar mark. In view thereof, we deny Petitioner’s
claims for failure to meet the requisite burden of proof.
Decision: The petition to cancel Registration No. 5067961 for ROCKPACK is
denied.

104 A party alleging fraud in the procurement of a registration bears the burden of proving
fraud with clear and convincing evidence. Nationstar Mortgage LLC v. Ahmad, 112 USPQ2d
1361, 1365 (TTAB 2014). In this case, even the lower standard, preponderance of the
evidence, has not been met.