Eric Asadoorian, et al., dba Wavelengthv.Frederic J. Martin III and Konrad Matthaei

Trademark Trial and Appeal Board

Jul 30, 1997

OPP (T.T.A.B. Jul. 30, 1997)

THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTAB JULY 30, 97
Paper No. 42
EJS
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Eric Asadoorian, Richard Arbaugh, Richard Cluelow, II and
Michael Daly d/b/a Wavelength
v.
Frederic J. Martin III and Konrad Matthaei
_____
Opposition No. 94,196
to application Serial No. 74/362,394
filed on February 26, 1993
_____
Roberta Jacobs-Meadway of Panitch Schwarze Jacobs & Nadel,
P.C. for Eric Asadoorian, Richard Arbaugh, Richard Cluelow,
II and Michael Daly d/b/a Wavelength
David A. Einhorn of Anderson Kill Olick & Oshinsky, P.C. for
Frederick J. Martin III and Konrad Matthaei
______
Before Cissel, Seeherman and Hanak, Administrative Trademark
Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Eric Asadoorian, Richard Arbaugh, Richard Cluelow, II
and Michael Daly, d/b/a Wavelength (hereafter "opposers")
have opposed the application of Frederick J. Martin, III and
Konrad Matthaei (hereafter "applicants") to register
WAVELENGTH as a mark for "prerecorded phonograph records,
Opposition No. 94,196
2
audio cassettes, compact discs, video cassettes and other
musical sound recording, all featuring musical
entertainment" and "entertainment in the nature of live
musical performances."1 As grounds for opposition, opposers
allege that since as early as 1984, which is prior to the
first use date asserted by applicants in their application,
opposers have continuously used the mark WAVELENGTH for
musical entertainment services; and that applicants' mark
WAVELENGTH, as applied to their identified goods and
services, so resembles opposers' mark WAVELENGTH for their
entertainment services, as to be likely to cause confusion
or mistake or to deceive.
In their answer applicants have admitted that they did
not use the mark WAVELENGTH in interstate commerce prior to
June 2, 1991; that the marks are identical; and that
opposers' use of WAVELENGTH for their services and
applicants' use of WAVELENGTH for their goods and services
are likely to cause confusion. Applicants also stated
affirmatively that opposers' alleged date of first use in
1984 relates to use in intrastate, rather than interstate
commerce, and that opposers did not use the mark WAVELENGTH
in interstate commerce prior to applicants' first use in
interstate commerce on June 2, 1991.
The record includes the pleadings; the file of the
opposed application; and the testimony, with exhibits, of

1 Application Serial No. 74/362,394, filed February 26, 1993,
asserting first use dates of June 2, 1991.
Opposition No. 94,196
3
Richard Arbaugh. Opposers have submitted, under a notice of
reliance, applicants' responses to certain of opposers'
interrogatories and requests for admission,2 while
applicants have relied on opposers' responses to certain of
applicants' interrogatories.
The parties have fully briefed the case3; an oral
hearing was not requested.

2 Opposers submitted, pursuant to Trademark Rule 2.120(j)(5),
portions of their own answer to one of applicant's
interrogatories, stating that this is necessary in order to make
not misleading the portion of their interrogatory response which
was relied on by applicant. Applicant moved to strike this
notice of reliance, and opposers opposed the motion. On May 16,
1996 the Board stated that the issue of the admissibility of
opposers' interrogatory response would be deferred until final
decision.
The interrogatory in question, No. 1 of applicant's amended
first set of interrogatories, asked the opposers, in part A(b),
to state the dates of the first three uses of opposers' mark on
each product and service, and in part A(c) to state the dates of
the first three uses in interstate commerce of opposers' mark on
each product and service. Applicant submitted with its notice
of reliance that portion of part A(c) of the interrogatory and
response relating to opposers' usage of the mark on products.
Opposers have submitted, with their notice of reliance, their
entire response to parts A(b) and A(c) of the interrogatory,
consisting of their first usage of the mark in intrastate
commerce, as well as their first use of the mark in interstate
commerce in connection with musical entertainment services.
They assert that without this portion of the response one could
erroneously conclude that opposers' use of the WAVELENGTH mark
does not predate applicants' claimed date of first use of
WAVELENGTH.
Applicant's objection is well taken. The portion of the
interrogatory response clearly refers to opposers' interstate
use of their mark on goods, and would not be read as indicating
their first use on goods anywhere, nor their first use in
connection with services. Thus, the additional portion is not
necessary to make not misleading the portion relied on by
applicants. We would also point out that our ruling has no
effect on the ultimate decision herein, since opposers have
provided evidence as to their first intrastate use of the mark
for goods, and their first use for services, through the
testimony of Richard Arbaugh.
3 Applicants moved to strike opposers' reply brief, asserting
that it was filed one week late, and that the Board does not
Opposition No. 94,196
4
There is no question that the use of WAVELENGTH for
applicants' identified goods and services is likely to cause
confusion with WAVELENGTH for musical entertainment services
performed by a band. Applicants have admitted as much in
their answer to the notice of opposition, and have not
disputed this in their brief.
The issue before us, thus, is whether opposers have
established rights in the mark WAVELENGTH prior to the
February 26, 1993 filing date of applicant's application
which, in the absence of evidence of use, is the earliest
date on which applicants can rely. E-Systems v.
Environmental Communications, 207 USPQ 443 (TTAB 1980).

have discretion to accept a late-filed brief because the time
for filing reply trial briefs is specifically set forth in the
Trademark Rules. Opposers argue that the brief was timely filed
and, in any case, should be considered.
The confusion over the deadline for filing the reply brief
stems from a stipulation which allowed applicants to make of
record opposers' supplemented response, which further provided
for additional testimony and extensions of briefing dates.
Given the confusing provisions of the stipulation, and
opposers explanation as to their belief that that their reply
brief was not due until August 29, 1996, (15 days after the
brief was actually filed), we will consider the reply brief.
Further, contrary to applicants' assertion, the Board does have
authority to consider briefs which are untimely filed. See TBMP
§ 540, "if a brief on the case is not timely filed ... it may be
stricken" (emphasis added). The use of the word "may" indicates
that the Board has discretion to consider untimely filed briefs.
See also, Ariola-Eurodisc Gesellschaft v. Eurtone International
Ltd., 175 USPQ 250 (TTAB 1972)(Implicit in the Board's granting
of a motion to strike applicants' brief because applicant did
not file a response to the motion and did not offer an
explanation for the late filing of its brief is the authority of
the Board to consider untimely filed trial briefs.)
Applicants' motion to strike the brief is denied.
Opposition No. 94,196
5
Opposers Arbaugh, Cluelow and Daly formed a band in
1982, when they were in high school. They chose the name
WAVELENGTH for this band in either 1983 or 1984. According
to the testimony of Mr. Arbaugh, the group began performing
publicly under the mark WAVELENGTH in 1984, appearing at a
"battle of the bands" school concert and at a fair held
annually in a Philadelphia suburb. During the mid-to-late
80's the group played in nightclubs, college and fraternity
parties, high school concerts and proms, and private
parties. These performances primarily took place in the
greater Philadelphia area, but on occasion extended to New
Jersey (Princeton University), Delaware (Delaware
University) and the Poconos. Although Mr. Arbaugh could
not, in general, remember the dates and some details of
these performances, he did provide documentary proof to
substantiate his testimony. For example, WAVELENGTH is
listed as one of the bands performing at a radio station-
sponsored event held at Temple University on April 24, 1987.
At the band's performances the name WAVELENGTH was
prominently displayed, appearing on a banner, poster and
drumhead.
Performances by the WAVELENGTH band were advertised
through fliers. In addition, the sponsors of the events
(for example, the schools where concerts were held)
sometimes advertised the group's appearance in local
newspapers and on local radio stations. The band itself
also promoted their entertainment services by giving
Opposition No. 94,196
6
WAVELENGTH T-shirts to people in the music business, such as
disc jockeys and bar owners. They produced a demo tape in
1984, and, in addition to giving and selling the cassettes
to family, friends and fans, they sent them to radio
stations in Philadelphia as well as one New Jersey station.
Mr. Arbaugh testified that these cassettes, which bore the
name WAVELENGTH, were distributed from 1984 until 1989,
although it is not clear from Mr. Arbaugh's testimony
whether they continued to be distributed to radio stations
throughout this period.
The band prepared a publicity picture sometime between
1989 and 1991 in which the name WAVELENGTH is displayed, and
it was sent out to people in the music business throughout
the United States.
In 1993 the group released an album which was
distributed nationally and overseas, including to record
stores such as Tower Records. This album, in which the
band's name WAVELENGTH is prominently displayed, is still
available. A number of promotional activities were
undertaken in connection with the album, including the
distribution of a poster, featuring the mark WAVELENGTH,
which was designed to be displayed by the record stores;
advertisements for the CD on radio stations; promotional
materials sent to record companies and promoters and music
agents; and an advertisement in a trade magazine.
Mr. Arbaugh testified that the band performed publicly
under the mark WAVELENGTH every year from 1984 through 1989.
Opposition No. 94,196
7
In the 90's, he described the performances as having more
activity, in terms of promotion, and that the focus of the
group has been on its CD. He also said that the group is
playing more at nightclubs and concert-type venues, and less
at fraternity parties. Mr. Arbaugh provided a ticket
showing WAVELENGTH appearing at the Barbary, a Philadelphia
nightclub, on April 30, 1993, in connection with the annual
Philadelphia Music Conference. The band also performed
there the following year.
Section 2(d) of the Trademark Act prohibits the
registration of a mark which so resembles a mark or trade
name previously used in the United States by another and not
abandoned as to be likely, when used on or in connection
with the goods [or services] of the applicant, to cause
confusion.
It is clear from the evidence of record that opposers
began using WAVELENGTH as a mark for their musical
entertainment services in the 1980's, well prior to the
February 26, 1993 filing date of applicants' application
(and even, we would note, applicants' claimed June 1991 use
date). Moreover, this use was "open and notorious,"
reaching the purchasers or prospective purchasers of
opposers' services. See E. I. du Pont de Nemours and
Company v. G. C. Murphy Co., 199 USPQ 807 (TTAB 1978). The
fact that some of opposers' performances were "benefits"
(i.e., they received no compensation), does not detract from
their service mark usage. The concerts at which they
Opposition No. 94,196
8
appeared without charge were events open to and attended by
the public and were, in effect, promotional activities which
made the WAVELENGTH band known and which could lead to
future bookings. Moreover, opposers have provided evidence
that they received payment for some of their performances.
Although applicants are correct that opposers did not
provide documentary proof of such payment, we find Mr.
Arbaugh's testimony that they had paid engagements to be
credible.
Although opposers have had a relatively limited number
of bookings, during the relevant period they have been
engaged in an on-going commercial enterprise, actively
promoting their entertainment services to those in the music
business and to the public at large. The fact situation
presented here, therefore, differs from those cases cited by
applicants in which parties were found to be attempting to
merely reserve rights in a mark by sporadic, casual and
transitory use, or through what amounted to arranged sales
where products never reached the actual consuming public.
Cf. Block Drug Company, Inc. v. Morton-Norwich Products,
Inc., 202 USPQ 157 (TTAB 1979).
Applicants assert that in order to succeed in this
opposition, opposers must show use in interstate, rather
than solely intrastate, commerce. Brief, p. 20. This is an
incorrect statement of the law. While technical trademark
or service mark use in commerce is a requisite for federal
registration, the prior use to establish rights in and to a
Opposition No. 94,196
9
trade designation need only be in intrastate commerce, and
such use need not be in a technical trademark or service
mark sense. Liqwacon Corp. v. Browning-Ferris Industries,
Inc., 203 USPQ 305, 308 (TTAB 1979).4
Finally, applicants argue that "in order to succeed in
an opposition action, the senior user of an unregistered
mark must show continuous use in commerce." Brief, p. 17.
Applicants assert that opposers have not shown use between
1988 and 1993; that this constitutes an abandonment of the
mark; and that their resumption of use in 1993, after
applicants' commenced use, does not cure the period of non-
use.
First, we would point out that the evidence does not
support applicants' assertion of non-use during this period.
Applicants make this claim because "opposers have presented
no evidence of any specific performances in the years 1988,
1989, 1990, 1991 and 1992." Brief, p. 11. Although
opposers have not provided evidence as to any specific
performances during these years, Mr. Arbaugh testified,
inter alia, that the WAVELENGTH band performed every year
from 1984 to 1989 (p. 26); that opposer Asadoorian joined
the group in 1989 or 1990 (p. 27); that publicity
photographs of the band which displayed the mark were taken

4 We do not mean to imply by our setting forth the correct
statement of law that opposers have failed to prove use in
interstate commerce. We merely point out that such proof is not
necessary in order for an opposer to succeed in a Section 2(d)
claim.
Opposition No. 94,196
10
in either 1989, 1990 or 1991, and were distributed to people
in the music business (p. 32); and that the WAVELENGTH name
has been used continuously since at least 1984 in connection
with the band (p. 46). We also note that opposers' CD
states that the songs were recorded in the spring, summer
and fall of 1992.
More importantly, it is not necessary for opposers to
prove continuous use of the mark WAVELENGTH in order to
succeed in this opposition. Thus, even if opposers have not
presented proof that they held performances in the early
1990's, this does not necessarily affect their claim of
rights. As the Court of Appeals for the Federal Circuit
pointed out in West Florida Seafood, Inc. v. Jet
Restaurants, Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1665 (Fed.
Cir. 1994), Section 2(d) "does not speak of 'continuous
use,' but rather of whether the mark or trade name has been
'previously used in the United States by another and not
abandoned.'
In that case, which involved a situation very like the
present one, with the defendant asserting that the plaintiff
had abandoned its rights in its asserted mark, the Court
pointed out that the case differed from the typical case in
that it was the plaintiff against whom the abandonment
allegation had been lodged. The abandonment allegation was,
in effect, in the stance of a defense to a prior use
assertion. In the present case, as in West Florida Seafood,
Inc., the issue of abandonment was never raised by
Opposition No. 94,196
11
applicants until their brief. Thus, opposers were never put
on notice that they were faced with an abandonment
allegation. As the Court said in West Florida Seafood,
Inc., it would be unfair and prejudicial to the opposers to
consider the issue of abandonment in such circumstances.
Because opposers have established prior rights in the
mark WAVELENGTH for musical entertainment services, and
because applicants' use of WAVELENGTH for their identified
goods and services is likely to cause confusion with
opposers' use of WAVELENGTH for musical entertainment
services, the opposition is sustained.
R. F. Cissel
E. J. Seeherman
E. W. Hanak
Administrative Trademark Judges
Trademark Trial and Appeal Board