Michael Muirv.Infectious Records, Inc.

Trademark Trial and Appeal Board

Jul 23, 2002

No. 92030332 (T.T.A.B. Jul. 23, 2002)

7/23/02 Paper No.
8

GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

Michael Muir
v.
Infectious Records, Inc.
_____

Cancellation No. 30,332
_____

Jill M. Pietrini and Andrew Klungness of Manatt, Phelps &
Phillips, LLP for Michael Muir.

Steven Godsberg of Godsberg, Zankel & Golden P.C. for
Infectious Records, Inc.
_____

Before Quinn, Hohein and Drost, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

Michael Muir has petitioned to cancel the
registration owned by Infectious Records, Inc. for the mark
"INFECTIOUS RECORDS," which is registered in the stylized
format shown below

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Cancellation No. 30,332
2
for "compact discs, audio cassette tapes, video cassette
tapes, laser discs, LP, EP and single records."1
As his sole ground for cancellation, petitioner
alleges among other things that he "is in the music business
and has continuously used the mark INFECTIOUS GROOVES" since
January 1990, for musical sound recordings and pre-recorded
compact discs and audio cassettes featuring music"; that, more
particularly, he "has used the mark INFECTIOUS GROOVES for
musical sound recordings in the United States long prior to
any use, if at all, by Registrant of the mark INFECTIOUS
RECORDS for compact discs, audio cassette tapes, video
cassette tapes, laser discs, LP, EP and single records"; that
"[r]egistrant's mark INFECTIOUS RECORDS is nearly identical to
Petitioner's mark INFECTIOUS GROOVES and is used in connection
with the same goods that Petitioner uses his mark"; that,
"[o]n that basis, a likelihood of confusion exists between
Petitioner's mark and Registrant's mark"; and that petitioner
is the owner of an application, "Serial No. 75/429,145 filed
February 5, 1998 for registration of the mark INFECTIOUS
GROOVES for musical sound recordings," which "has been refused
registration ... on the grounds that Petitioner's mark

1 Reg. No. 2,018,909, issued on November 26, 1996 from an application
filed on July 31, 1995, which disclaims the word "RECORDS" and sets
forth a date of first use anywhere and in commerce of August 10,
1994.

Cancellation No. 30,332
3
INFECTIOUS GROOVES is likely to be confused with Registrant's
mark INFECTIOUS RECORDS."
Respondent, in its answer, has denied the salient
allegations of the petition to cancel.2
The record consists of the pleadings and
petitioner's notice of reliance on: (i) portions of the file
history for his pleaded application; (ii) respondent's
admission of petitioner's first set of requests for admission
by its failure to respond thereto; and (iii) excerpts of
various articles from newspapers, magazines and other printed
publications. Neither petitioner nor respondent took any
testimony or otherwise introduced any other evidence. Only
petitioner filed a brief and neither party requested an oral
hearing.
The copy of the portions of the file history of
petitioner's pleaded application is sufficient proof of

2 Although respondent has additionally asserted, as equitable
affirmative defenses, that "[p]etitioner's claims are barred by
laches and/or estoppel" and that "[p]etitioner's claims are barred by
unclean hands," such defenses not only have not been properly
pleaded, in that the facts constituting the defenses have not been
alleged, but in any event the defenses were not proven at trial.
Likewise, while respondent has also alleged as an affirmative defense
that "[p]etitioner's claims are barred as it has no rights in any
mark 'Infectious' that are superior to the rights of Registrant,"
such a defense is merely an amplification of respondent's denial of
petitioner's claim of priority of use and likelihood of confusion
rather than, properly speaking, an affirmative defense and, in any
event, no proof thereof was offered at trial. Accordingly, no
further consideration will be given to any of respondent's putative
affirmative defenses.
Cancellation No. 30,332
4
petitioner's standing to bring this proceeding inasmuch as it
establishes his real interest in this matter. See, e.g.,
Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025-27
(Fed. Cir. 1999); and Lipton Industries, Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).
Specifically, such evidence demonstrates that, as pleaded in
the petition for cancellation, petitioner filed application
Ser. No. 75/429,145 on February 5, 1998 to register the mark
"INFECTIOUS GROOVES" for "musical sound recordings; and pre-
recorded compact discs and audio cassettes in International
Class 9" which was rejected in light of respondent's involved
registration on the basis that contemporaneous use of
petitioner's mark for his goods is "likely to cause confusion"
with respondent's mark for its goods. (Exhibits 1 and 2,
respectively, of petitioner's notice of reliance.) Thus, and
inasmuch as it is plain that (i) the goods of the parties are
identical in part (namely, records, compact discs and audio
cassettes) and are otherwise closely related (as respondent
admitted by not responding to Request for Admission No. 22)3
and (ii) the respective marks are substantially similar (given
the suggestiveness of the term "GROOVES" and the genericness

3 Specifically, such request states: "Petitioner's sound recordings
bearing INFECTIOUS GROOVES are related to Respondent's compact discs,
audio cassette tapes, video cassette tapes, laser discs, LP, EP and
single records bearing the mark INFECTIOUS RECORDS."
Cancellation No. 30,332
5
of the word "RECORDS")4 when considered in their entireties,
the focus of our inquiry is on which party has priority of use
of the marks at issue as a trademark.
With respect thereto, it is clear that because
respondent did not take testimony or introduce any other
evidence in its behalf, the earliest date upon which it could
otherwise rely for purposes of priority of use of its mark as
a trademark for its goods would ordinarily be the July 31,
1995 filing date of the use-based application which matured
into its involved registration. See, e.g., Lone Star Mfg.
Co., Inc. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368,
369 (CCPA 1974); Columbia Steel Tank Co. v. Union Tank &
Supply Co., 277 F.2d 192, 125 USPQ 406, 407 (CCPA 1960);
Hilson Research Inc. v. Society for Human Resource Management,
27 USPQ2d 1423, 1428-29 at n. 13 (TTAB 1993); and American
Standard Inc. v. AQM Corp., 208 USPQ 840, 841-42 (TTAB 1980).
Petitioner, however, concedes in his brief that respondent
"first used INFECTIOUS RECORDS on August 10, 1994," the date
of first use and first use in commerce stated in the involved
registration. Accordingly, in order to prevail in this
proceeding, petitioner must establish that he has priority of

4 As petitioner notes in his brief: "The term GROOVES in
Petitioner's mark suggests record grooves, while Registrant's mark
contains the term RECORDS. Thus, both marks share a similar meaning,
records that are 'infectious.'"
Cancellation No. 30,332
6
use in that he has continuously used the mark "INFECTIOUS
GROOVES" as a trademark for musical sound recordings since on
or before August 10, 1994.
Petitioner maintains in his brief that his "priority
of use has ... been established" because:
Petitioner first used the mark
INFECTIOUS GROOVES in January of 1990 and
has continuously used INFECTIOUS GROOVES
ever since. (Notice of Reliance, Exhibits
5-45). .... Moreover, Registrant has
admitted that Petitioner's use of
INFECTIOUS GROOVES predated Registrant's
use of INFECTIOUS RECORDS. (RFA Nos. 3-6
and 15). Therefore, no issue exists as to
the priority of use relative to
Registrant's use of INFECTIOUS RECORDS
versus Petitioner's use of INDECTIUOUS
GROOVES.

The evidence cited by petitioner, however, fails to
demonstrate that he has continuously used the mark "INFECTIOUS
GROOVES" as a trademark for musical sound recordings prior to
or at least as early as August 10, 1994.
Specifically, the articles from newspaper, magazine
and other printed publications which constitute Exhibits 5-45
of petitioner's notice of reliance show on their face that the
term "INFECTIOUS GROOVES" is invariably used in reference to
the name of a band or musical group rather than, as pleaded in
the petition for cancellation, a trademark for or brand name
of musical sound recordings. For example, Exhibit No. 44 to
Cancellation No. 30,332
7
petitioner's notice of reliance explicitly indicates in
pertinent part that:
"Excel guitarist Adam Seigel has been
playing recently with Infectious Grooves, a
band that includes two members of Suicidal
Tendencies ...." -- L.A. Times, December
16, 1991.

Likewise, for instance, Exhibit Nos. 21, 24, 26, 27, 31 and 34
to petitioner's notice of reliance each specifically refer, as
respectively set forth below, to "INFECTIOUS GROOVES" as the
name of a "band":
"Suicidal tendencies' leader Mike Muir
leads Infectious Grooves, the band that
opens for Suicidal at 8 p.m. Saturday at
Mesa Amphitheatre." -- Arizona Republic,
February 28, 1993;

"One reason for the unmet promise of
menace was the dubious inclusion of
Infectious Grooves, S.T. vocalist Mike
Muir's spin-off band (which also includes
S.T. bassist Robert Trujillo), in the
opening slot for an over-generous 60-minute
set." -- St. Louis Post-Dispatch, March 13,
1993;

"IT'S FINE that the hardcore-turned-
speedcore quartet Suicidal Tendencies
decided to create a funky alter ego,
Infectious Grooves, and that the former
have hired the latter to open for it on its
current tour. The problem is that the
Grooves are as offensive as they are
infectious, due to the band's dubious sense
of humor." -- Washington Post, March 19,
1993; .

"Tonight, if you're in a Mike Muir
kind of mood, you can catch the
hyperkinetic one twice at Avalon with his
well-known hard rock/punk band Suicidal
Cancellation No. 30,332
8
Tendencies, which follows up a set by his
funkier new outfit Infectious Grooves
band." -- Boston Globe, March 19, 1993;

"When not playing with Suicidal
Tendencies, singer Mike Muir and bassist
Robert Trujillo moonlight in the groove-
metal band Infectious Grooves ...." --
Phoenix Gazette, April 21, 1994; and

"Minstrelsy is alive and louder than
ever with Infectious Grooves, a band from
Los Angeles that performed at the Academy
on Tuesday night. Infectious Grooves is a
side project of Mike Muir and Robert
Trujillo, the lead singer and bassist from
Suicidal Tendencies." -- N.Y. Times, May
20, 1994.

None of the articles establishes, moreover, that as
implicitly asserted in the petition for cancellation,
petitioner is also the owner of such mark5 inasmuch as the
articles are admissible only for what they show on their face
and constitute inadmissible hearsay if offered for the truth
of the matter(s) set forth therein. Furthermore, it is noted
that the earliest of the articles, although dated September
29, 1991 (and not January 1990 as petitioner asserts in his
brief), refers to "INFECTIOUS GROOVES" as a service mark for a
band or musical group which is perhaps co-owned by another
person--Robert Trujillo--instead of just petitioner alone. In

5 Section 1(a)(1) of the Trademark Act, 15 U.S.C. §1051(a)(1),
provides that only "[t]he owner of a trademark used in commerce may
request registration of its trademark ... by paying the prescribed
fee and filing ... an application ...." (Emphasis added.)
Cancellation No. 30,332
9
particular, Exhibit No. 45 to petitioner's notice of reliance
states in relevant part that:
"And Jane's [Addiction's] drummer
Stephen Perkins has turned up on the new
debut album by Infectious Grooves, a side
project of Mike Muir and Robert Trujillo
from Suicidal Tendencies." -- L.A. Times,
September 29, 1991.

Similarly, Exhibit No. 40 to petitioner's notice of reliance,
while likewise dated before August 10, 1994, appears to
indicate that another entity--Epic Records--owns the service
mark rights to "INFECTIOUS GROOVES" instead of petitioner, as
alleged in the cancellation petition. Specifically, such
article states that:
"Epic Records' Infectious Grooves, a
five piece [band] that features the talent
of Suicidal Tendencies' Mike Muir and
Robert Trujillo, started off strong but
slowly lost momentum as time ticked away."
-- Hollywood Reporter, April 21, 1992.

With respect to the admissions by registrant which
are referred to in petitioner's brief as also showing that his
use of the mark "INFECTIOUS GROOVES" predates registrant's use
of the mark "INFECTIOUS RECORDS," a careful reading thereof
discloses that there is no admission by respondent that
petitioner, although admittedly the prior user, used the mark
"INFECTIOUS GROOVES" as a trademark for musical sound
recordings. The record, instead, reveals that Request for
Admission Nos. 3 and 4 state only that, "at the time it
Cancellation No. 30,332
10
selected the mark INFECTIOUS RECORDS for use with compact
discs, audio cassette tapes, video cassette tapes, laser
discs, LP, EP and single records," respondent respectively
"was aware of Petitioner" and "was aware of Petitioner's use
of INFECTIOUS GROOVES." Requests for Admission Nos. 5 and 6
similarly state that, "at the time Respondent filed its U.S.
application to register INFECTIOUS RECORDS for use with
compact discs, audio cassette tapes, video cassette tapes,
laser discs, LP, EP and single records," respondent
respectively "was aware of Petitioner" and "was aware of
Petitioner's use of INFECTIOUS GROOVES."
Request for Admission No. 15, which indicates that
"[t]he mark INFECTIOUS RECORDS is used in advertisements for
Respondent's compact discs, audio cassette tapes, video
cassette tapes, laser discs, LP, EP and single records," fails
to provide any proof of petitioner's alleged priority of use
of the mark "INFECTIOUS GROOVES." While it appears that the
reference thereto in petitioner's brief is a typographical
error and that petitioner meant, instead, to cite Request for
Admission Nos. 13 and/or 14, the admissions set forth therein,
like those in Request for Admission Nos. 3-6, fail to
demonstrate petitioner's claimed priority of use. This is
because Request for Admission Nos. 13 and 14 merely provide
that, "at the time Respondent first used the mark INFECTIOUS
Cancellation No. 30,332
11
RECORDS for Respondent's compact discs, audio cassette tapes,
video cassette tapes, laser discs, LP, EP and single records,"
respondent respectively "was aware of Petitioner" and "was
aware of Petitioner's use of INFECTIOUS GROOVES." There is no
indication, however, that respondent's awareness of petitioner
and his use of the mark "INFECTIOUS GROOVES" was in connection
with the use of such mark as a trademark for musical sound
recordings.
Finally, while it is noted in particular that
Request for Admission No. 21 states that petitioner and
respondent "both sell musical sound recordings under their
respective marks INFECTIOUS GROOVES and INFECTIOUS RECORDS,"
the sole example of such use by petitioner which is of record
demonstrates that the use of the mark "INFECTIOUS GROOVES" is
as a service mark, that is, as the name of a band or musical
group, and not as a trademark for musical sound recordings.
Specifically, the copy of the specimens of use submitted by
petitioner in connection with his application to register the
mark "INFECTIOUS GROOVES" for musical sound recordings, pre-
recorded compact discs and audio cassettes shows such mark
used as (i) the name of the band or musical group whose
recordings comprise a single audio cassette tape entitled
"GROOVE FAMILY CYCO" and (ii) as part of the name of the
band(s) or musical group(s) "SUICIDAL TENDENCIES & INFECTIOUS
Cancellation No. 30,332
12
GROOVES" whose recordings (along with those by such artists as
"CYCO MIKE," "THE FUNERAL PARTY," "CREEPER" and "MUSICAL
HEROIN") make up the compilation of performances listed on a
single pre-recorded compact disc. (Exhibit 1 of petitioner's
notice of reliance.) Such manner of use does not, by itself,
constitute a showing of use of the mark "INFECTIOUS GROOVES"
as a trademark for musical sound recordings, including pre-
recorded compact discs and audio cassettes. See In re Peter
Spirer, 225 USPQ 693, 695 (TTAB 1985). Even if it did, such
use in any event is subsequent to respondent's August 10, 1994
date of first use inasmuch as the recordings bear the
indefinite dates of "©1997" in the case of the compact disc
and, while nearly illegible, what appears to be "©1994" for
the audio cassette. Absent testimony or other evidence,
however, such dates are respectively treated as being December
31, 1997 and December 31, 1994. See TMEP Section 903.07,
which provides that "[w]hen only a year is given, the date
presumed is the last day of the year."
Accordingly, because petitioner, as the party with
the burden of proof in this proceeding, has not established a
necessary element of his pleaded claim of priority of use and
likelihood of confusion in that he has not proven that he
first and continuously used the mark "INFECTIOUS GROOVES" as a
trademark for musical sound recordings and pre-recorded
Cancellation No. 30,332
13
compact discs and audio cassettes featuring music since on or
before the August 10, 1994 date of first use which petitioner
has conceded that respondent is entitled to rely, the petition
for cancellation must fail.6
Decision: The petition to cancel is denied.

6 Whether petitioner is entitled to relief under an additional or
alternative claim of priority of use and likelihood of confusion with
respect to his prior rights in the service mark "INFECTIOUS GROOVES"
for musical entertainment services and respondent's mark "INFECTIOUS
RECORDS" for its compact discs, audio cassette tapes, video cassette
tapes, laser discs, LP, EP and single records is an issue which,
since it has not been pleaded nor tried by the express or implied
consent of the parties, we do not determine. Respondent need only
defend a claim of which it has been given fair notice. If, however,
such a claim has not been proven by petitioner, respondent was under
no obligation to take testimony or submit other evidence in order to
prevail nor, unlike petitioner, was it required to file a brief
herein.