(The) Blues Foundation, Inc.v.Daniel S. Marolt

Trademark Trial and Appeal Board

Apr 5, 2016

No. 92057288 (T.T.A.B. Apr. 5, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: April 5, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

(The) Blues Foundation, Inc.

v.

Daniel S. Marolt
_____

Cancellation Nos. 92057288 and 92058292
of Registration Nos. 2392429 and 4398094
_____

Adam J. Eckstein of Martin, Tate, Morrow & Marston PC,
for (The) Blues Foundation, Inc.
T.C. Johnston of Internet Law, for Daniel S. Marolt.
_____

Before Quinn, Kuczma and Adlin,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
(The) Blues Foundation, Inc. (“Petitioner”) filed petitions for cancellation of
Registration Nos. 23924291 for the typed mark BLUES HALL OF FAME and

1 Registration No. 2392429 was registered on the Supplemental Register on October 3, 2000,
for: “On line retail store services in the field of books, cd’s, shirts, hats, posters and musical
equipment concerning blues musicians,” claiming first use and use in commerce on March
31, 1999. This Registration has been renewed.
Cancellation Nos. 92057288 and 92058292

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43980942 for the standard character mark CHICAGO BLUES HALL OF FAME, both
of which are owned by Respondent, Daniel Marolt (“Respondent”).3
Pursuant to Section 24 of the Trademark Act, 15 U.S.C. § 1092, Petitioner alleges
priority of use and likelihood of confusion under Section 2(d) of the Trademark Act,
15 U.S.C. § 1052(d), between its unregistered mark BLUES HALL OF FAME for
providing recognition in the form of awards to individuals who have had a significant
impact on or made a major contribution to the blues music industry, and
Respondent’s marks BLUES HALL OF FAME and CHICAGO BLUES HALL OF
FAME.
Respondent denies the salient allegations in the Petitions for Cancellation and
asserts several Affirmative Defenses including that Petitioner uses BLUES HALL
OF FAME in a non-trademark manner, the term lacks secondary meaning, and
Petitioner therefore does not have priority, and laches.4

2 Registration No. 4398094 was registered on the Supplemental Register on September 3,
2013, for: “On-line retail store services featuring books, CDs, shirts, hats, posters and musical
equipment concerning blues musicians all related to an open organization dedicated to
honoring and inducting blues musicians and organizing induction ceremonies at live blues
shows,” based on claimed first use and use in commerce on June 29, 2009.
3 On March 3, 2014, the Board granted Petitioner’s unopposed Motion to Consolidate
Cancellation Nos. 92057288 and 92058292 as the parties to the respective proceedings are
the same and the proceedings involve common questions of law or fact.
4 Applicant’s “defenses” of lack of likelihood of confusion, different classification of goods and
services, bad faith, unclean hands, estoppel and waiver were either not raised, or just
summarily mentioned, in his brief (Defendant Dan Marolt’s Final Brief p. 27 (55 TTABVUE
28)), so they are deemed waived. Corporacion Habanos S.A. v. Guantanamera Cigars Co., 86
USPQ2d 1473, 1474 n.2 (TTAB 2008) remanded Guantanamera Cigars Co. v. Corporacion
Habanos, S.A., 729 F.Supp.2d 246, 98 USPQ2d 1078 (D.D.C. 2010).
Cancellation Nos. 92057288 and 92058292

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I. Evidentiary Issues
Before turning to the merits, we first address Petitioner’s evidentiary objections.
Petitioner objects to various corrections to Mr. Marolt’s testimony deposition set forth
in Mr. Marolt’s Errata sheet.5
We agree with Petitioner that most of the alterations to Mr. Marolt’s testimony
set forth on the Errata sheet (53 TTABVUE 183-185) are substantive in nature and
therefore will not be considered.6 “[M]aterial changes in the text are not permitted --
the transcript may not be altered to change the testimony of the witness after the
fact.” TBMP § 703.01(n). Additionally, Petitioner had no opportunity to cross-examine
Mr. Marolt regarding the alterations. See Entex Industries, Inc. v. Milton Bradley Co.,
213 USPQ 1116, 1117 n.2 (TTAB 1982) (change in testimony from “...designing that
type of game...” to “...designing that Simon Says type of game...” was substantive in
nature and not permitted).

5 The corrections to Mr. Marolt’s testimony deposition were set forth in a list of corrections
attached to the end of his transcript. This is not an effective method of correction as “the list
of corrections is likely to be overlooked and/or disregarded.” Trademark Board Manual of
Procedure (TBMP) §703.01(p) (2015).
Moreover, the July 15th, 2015 date written above Mr. Marolt’s signature on the deposition
transcript (53 TTABVUE 157) appears to be erroneous as Mr. Marolt and his counsel signed
the Errata sheet and its certificate of service on July 14, 2015 (53 TTABVUE 185-186). While
the submission of Mr. Marolt’s signatures on two different dates is puzzling, it does not affect
the substance of Petitioner’s objections.
6 For example, Mr. Marolt’s attempted alteration of his testimony to note that the t-shirts do
not appear on Exhibit 2 (53 TTABVUE 184), is not admissible. Moreover, Respondent’s
contention that the Notice of Reliance for Exhibit 2 “is really the website itself, not the
screenshots,” (55 TTABVUE 10), means that it was Respondent’s responsibility to ensure
that the evidence submitted in Exhibit 2 reflected the content of his website.
Cancellation Nos. 92057288 and 92058292

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However, Respondent’s alteration requested with respect to his testimony found
at page 57, lns. 14-15, of his testimony deposition, is permissible as Mr. Marolt states
under oath that this alteration is requested due to a transcription error. (53
TTABVUE 185).
Petitioner also objected to Respondent’s Trial Exhibit No. 11 introduced during
Mr. Marolt’s testimony deposition.7 To the extent Petitioner admitted that
Respondent could have introduced by notice of reliance the parts of Trial Exhibit No.
11 that were screen shots of websites and a newspaper article, containing information
sufficient to identify their source and date of the publication, pages 13-16 and 19 of
Exhibit 11 are admitted. (53 TTABVUE 237-240, 243). However, such pages are
considered to be printed publications which “are admissible and probative only for
what they show on their face, not for the truth of the matters contained therein.”
TBMP §704.08(a). The remaining pages of Exhibit 11 are not admissible.8 Mr. Marolt
did not take the screen shots of the webpages shown (notably, the webpages did not
bear dates of publication and/or the location from which they were obtained), did not
know who took the photographs offered in the exhibit, and testified that he received
the citation letter sent by Kentucky State Representative W. Keith Hall from either
the third-party shown as the addressee or the third-party’s wife.9

7 Marolt Testimony Dep. pp. 89:23-90:6, 139:22-144:1. (53 TTABVUE 90-91, 140-145).
8 Marolt Testimony Dep. Exhibit 11 (53 TTABVUE 225-236, 241-242).
9 Marolt Testimony Dep. p. 142:16-23 (53 TTABVUE 143).
Cancellation Nos. 92057288 and 92058292

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II. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), Respondent’s registration files for Registration Nos. 2392429
and 4398094.
Additionally, Petitioner submitted10:
1. Jon Hornyak (member of Blues Foundation (p. 27:9-12)) Testimony
Deposition and Exhibits (41 TTABVUE);

2. David Less (Executive Director of Blues Foundation 1993-1996 (pp.
7:20-21, 9:25-11:5, 57:18-20), member of Blues Foundation to about 2014
(p. 61:11-14)) Testimony Deposition and Exhibits (46 TTABVUE);

3. Jim O’Neal (founder of Living Blues magazine, member of Blues
Foundation Board of Directors in 1980’s for 3 years) (pp. 5:11-14 and p.
41)) Testimony Deposition and Exhibits (47 TTABVUE);

4. Jay Sieleman (Executor Director of Blues Foundation 2003-“present” (p.
6:11-17)) Testimony Deposition and Exhibits (42-45 TTABVUE);

5. Jeffrey Syracuse (employee of Broadcast Music Incorporated, member of
Blues Foundation Board of Directors since 2012 (pp. 5:8-17, 14:1-9))
Testimony Deposition (50 TTABVUE);

6. Arthur Tipaldi (member of Blues Foundation Board of Directors 1993-
2000 and 2002-2008, editor of Blues Music Magazine (pp. 5:16-6:3, 8:17-
9:6, 21:3-7)) Testimony Deposition and Exhibits (48 TTABVUE);

10 Petitioner notes that “As of September 14, 2015, the electronic filings of testimony and
exhibits on TTABVUE are incomplete and, on some pages, inaccurate depictions of the
exhibits. Therefore, citations to the factual record will be to TTABVUE where the page
number depicts an accurate and complete copy of the record. Otherwise, citations to the
factual record will be to the Testimony Transcript name, e.g., Wax Dep. [page #]:[line#] –
[page #]:[line #], or to the Trial Exhibit Number, e.g., Plaintiff’s Trial Exhibit [#].” Petitioner
indicated it would file a corrected brief with citations to TTABVUE for each Testimony
Transcript and electronic filing, after it confirmed that the electronic filings are complete and
accurate. Petitioner Brief p. 8 (52 TTABVUE 9). Although no corrected brief has been filed,
Petitioner’s identification system sufficiently identifies the evidence on which it relies.
Cancellation Nos. 92057288 and 92058292

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7. William Arthur Wax (retired radio programmer and program director
Member of Blues Foundation Board of Directors 2007-2013 (p. 19:2-13))
Testimony Deposition (49 TTABVUE);

8. Notice of Reliance on Website for the Mississippi Blues Trail,
Petitioner’s Exhibit 2 (17 TTABVUE);

9. Notice of Reliance on Website for BMI, Petitioner’s Exhibit 15 (18
TTABVUE);

10. Notice of Reliance on Websites for the Blues Hall of Fame Tour,
Petitioner’s Exhibit 23 (19 TTABVUE);

11. Notice of Reliance on Various Articles that Reference The Blues Hall of
Fame, Petitioner’s Exhibit 28 (20 TTABVUE);

12. Notice of Reliance on Blues Access No. 28 Winter 1997 and Its
Statement of Circulation, Petitioner’s Exhibit 29 (21 TTABVUE);

13. Notice of Reliance on www.blues.org, Petitioner’s Exhibit 30 (22
TTABVUE); and,

14. Notice of Reliance on Respondent’s Answers to Interrogatory Responses,
Exhibit 31 (23 TTABVUE).

Respondent submitted11:
1. Daniel S. Marolt (manager and founder of Respondent’s Blues Hall of
Fame) Testimony Deposition and Exhibits [only pp. 13-16 and 19 of
Exhibit 11 (53 TTABVUE 237-240, 243) are admitted as addressed in
section I. above)] (53 TTABVUE);

2. Notice of Reliance on blueshalloffame.com/.org, home page and category
index pages, Exhibit 2 (25 TTABVUE);

3. Notice of Reliance on blueshalloffame.com webpages 2002 and 2003-
from archive.org, Exhibit 3 (26 TTABVUE);

11 Respondent’s “Notice of Reliance on Google Search Results re B.B. King Death Referencing
Blues Foundation Hall of Fame” (32 TTABVUE), did not contain a copy of Exhibit 15. Because
Exhibit 15 was not attached to the Notice of Reliance it is not part of the record. TBMP
§ 704.08(b).

Cancellation Nos. 92057288 and 92058292

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4. Notice of Reliance on Chicago Blues Hall of Fame Pages Redirected from
chicagoblueshalloffame.org, Exhibit 4 (27 TTABVUE);

5. Notice of Reliance on New York Blues Hall of Fame Pages Redirected
from newyorkblueshalloffame.org, Exhibit 5 (28 TTABVUE);

6. Notice of Reliance on Blues Hall of Fame Ceremony at B.B. King’s Bar
& Grill May 31, 2015 (from bbkingblues.com website), Exhibit 12 (29
TTABVUE);

7. Notice of Reliance on Websites and Publications by and About Blues
Foundation Inductees Which Reference Their Induction into “Blues
Foundation(’s) Hall of Fame,” Exhibit 13 (30 TTABVUE);

8. Notice of Reliance on Various Third-Party Online References to “Blues
Foundation(’s) Hall of Fame,” Exhibit 14 (31 TTABVUE);

9. Notice of Reliance on Blues Foundation Recent Uses of “Blues
Foundation Hall of Fame” (from websites), Exhibit 16 (33 TTABVUE);

10. Notice of Reliance on Ebony Magazine Blues Hall of Fame 1973-1976,
Exhibit 17 (34 TTABVUE);

11. Notice of Reliance on Websites of Third-Party Uses of “Blues Hall of
Fame,” Exhibit 18 (35 TTABVUE);

12. Notice of Reliance on blueshalloffame.com Merchandise Pages 2002 and
Present, Exhibit 19 (36 TTABVUE);

13. Notice of Reliance on Blues Foundation Responses to Requests for
Admission, Exhibit 20 (37 TTABVUE);

14. Notice of Reliance on Blues Foundation Responses to Interrogatories,
Set One, Exhibit 21 (38 TTABVUE);

15. Notice of Reliance on Blues Foundation Responses to Interrogatories,
Set Two, Exhibit 22 (39 TTABVUE); and

16. Notice of Reliance on Blues Foundation Trademark Registrations,
Exhibit 23 (40 TTABVUE).

Cancellation Nos. 92057288 and 92058292

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III. Background
Petitioner is The Blues Foundation of Memphis, Tennessee, a non-profit
corporation founded in 1980 with the stated mission of preserving blues music history
and celebrating blues excellence.12 In order to promote the blues, Petitioner
established the Blues Music Awards, the Blues Hall of Fame, the International Blues
Challenge Competition, Keeping the Blues Alive Awards, and the Blues in the
Schools programs.
Since its formation, Petitioner has hosted its annual Blues Hall of Fame award
dinner program honoring those people who have made a significant contribution to
blues music by performing, recording or documenting the blues. The dinner is
followed the next day by The Blues Music Awards, formerly known as the W.C. Handy
Awards,13 given by Petitioner in recognition of the finest in blues performances and
recordings. Additionally, Petitioner’s Blues Hall of Fame music museum was
scheduled to open in Memphis in May 2015.
Respondent is a blues fan living in San Diego, CA. He is a retired construction
estimator and has played at blues jams for many years.14 Respondent decided to start
his own “Blues Hall of Fame,” first purchasing and setting up several domain names
including blueshalloffame.com and blueshalloffame.org in late 1998 or early 1999.15

12 Jay Sieleman Testimony Dep. p. 92 (43 TTABVUE 94).
13 Jon Hornyak Testimony Dep. p. 10:8-14 (41 TTABVUE 12); Jay Sieleman Testimony Dep.
p. 44:5-8 (42 TTABVUE 46); Jim O’Neal Testimony Dep. pp. 39:12-40:1 (47 TTABVUE 41-
42).
14 Daniel S. Marolt Testimony Dep. pp. 5:13-16, 6:7-7:3 (53 TTABVUE 6, 7-8).
15 Daniel S. Marolt Testimony Dep. pp. 9:15-10:21 (53 TTABVUE 10-11).
Cancellation Nos. 92057288 and 92058292

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The purpose of his website(s) is to honor all blues artists in the United States and
around the world. In late February or early March 1999, he obtained a business
license for his Blues Hall of Fame.16
On April 16, 1999, Respondent filed an application to register BLUES HALL OF
FAME on the Principal Register, later amending his application to seek a
Supplemental Register registration on June 19, 2000. On October 3, 2000, he received
involved Registration No. 2392429 for “On line retail store services in the field of
books, CD’s, shirts, hats, posters and musical equipment concerning blues
musicians.”
Around 2012, Respondent purchased the domain name CHICAGO BLUES HALL
OF FAME. On March 27, 2013, Respondent filed an application to register CHICAGO
BLUES HALL OF FAME on the Principal Register, which was also later amended to
seek a Supplemental Register registration, on July 9, 2013. On September 3, 2013,
he received involved Registration No. 4398094 for “On-line retail store services
featuring books, CDs, shirts, hats, posters and musical equipment concerning blues
musicians all related to an open organization dedicated to honoring and inducting
blues musicians and organizing induction ceremonies at live blues shows.”

16 Daniel S. Marolt Testimony Dep. pp. 10:22-11:1, 14:9-12, 15:5-8, 30:7-16, 32:3-8 (53
TTABVUE 11-12, 15, 16, 31, 33). Apparently, Respondent’s efforts is a “project of an umbrella
company called United Charitable Programs” which is “like an incubator of nonprofit
organizations, and they allow smaller operations to just work under their nonprofit license.”
Respondent has been underneath the nonprofit company since “… October 2001. …And [he]
just rolled the … operation into these other names that they’ve established.” Daniel S. Marolt
Testimony Dep. pp. 40-41 (53 TTABVUE 41-42).
Cancellation Nos. 92057288 and 92058292

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Respondent admits that CHICAGO BLUES HALL OF FAME is not entitled to a
Principal Register registration because “[i]t’s merely descriptive terms.”17
Respondent’s Blues Hall of Fame has around 200 “Ambassadors” who often
nominate artists to his Blues Hall of Fame.18 His Blues Hall of Fame has about 1000
inductees, and has presented around 700 induction certificates since its inception.19
Respondent gives inductees certificates bearing his Blues Hall of Fame logo (bearing
the registration symbol ®) developed in January 2002.20

IV. Standing
Standing is a threshold issue that must be proven by the plaintiff in every inter
partes case. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir.
1999); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185,
189 (CCPA 1982). To establish standing in a cancellation, a petitioner must show
both “a real interest in the proceedings as well as a ‘reasonable basis’ for his belief of
damage.” Ritchie v. Simpson, 50 USPQ2d at 1025.
Petitioner has used the term “Blues Hall of Fame” since at least as early as 1980.21
Therefore, Petitioner is not a mere intermeddler. It has established a reasonable basis

17 Daniel S. Marolt Testimony Dep. p. 47:17-23 (53 TTABVUE 48).
18 Daniel S. Marolt Testimony Dep. p. 26:14-16 (53 TTABVUE 27).
19 Daniel S. Marolt Testimony Dep. p. 35:2-8 (53 TTABVUE 36).
20 Daniel S. Marolt Testimony Dep. pp. 23:4-23, 36:14-37:2, 116:6-14 (53 TTABVUE 24, 37-
38, 117) and Exhibit 3-3 (26 TTABVUE 7).
21 Additionally, Petitioner owns a pending application to register the mark BLUES HALL OF
FAME (Serial No. 86027579), which has been refused registration based on a likelihood of
confusion with the BLUES HALL OF FAME and CHICAGO BLUES HALL OF FAME marks
in Respondent’s Supplemental Register registrations (pursuant to Trademark Act § 2(d), 15
Cancellation Nos. 92057288 and 92058292

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for a belief that it will be damaged by Respondent’s Registrations by asserting prior
use of BLUES HALL OF FAME and a likelihood of confusion. Ritchie v. Simpson, 50
USPQ2d at 1025; Lipton Industries, Inc. v. Ralston Purina Co., 213 USPQ at 189.
V. Likelihood of Confusion Claim
In order to prevail on its § 2(d) claim, Petitioner must establish: 1) prior
proprietary rights in the term BLUES HALL OF FAME; and 2) that use of
Respondent’s marks would be likely to cause confusion with that term. Herbko Int’l
Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002);
King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110
(CCPA 1974); Avtex Fibers Inc. v. Gentex Corp., 223 USPQ 625, 626 (TTAB 1984).
Petitioner does not own any federal trademark registrations for BLUES HALL OF
FAME. “Under the rule of Otto Roth, a party opposing [or seeking to cancel]
registration of a trademark due to a likelihood of confusion with his own unregistered
term cannot prevail unless he shows that his term is distinctive of his goods [or
services], whether inherently or through the acquisition of secondary meaning or
through ‘whatever other type of use may have developed a trade identity.’” Towers v.

U.S.C. § 1052(d)). Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014); SaddleSprings Inc. v. Mad Croc Brands Inc., 104
USPQ2d 1948, 1950 (TTAB 2012); ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036, 1041
(TTAB 2012) (standing shown by evidence that plaintiff’s application was refused
registration in view of defendant’s registration). See Respondent’s Exhibit 22 unnumbered
pages 3-4, and numbered pages Marolt-Ex. 22 - 5-6, (39 TTABVUE 3-4, 11-12); Jay Sieleman
Testimony Dep. pp. 130:12-131:5 (42 TTABVUE 132-133); Petitioner’s Brief pp. 27-28, 37 (52
TTABVUE 28-29, 38); Defendant Dan Marolt’s Final Brief pp. 6-7, 26, 40 (55 TTABVUE 7-8,
27, 41).
While a copy of Petitioner’s application does not appear in the record, both parties’ references
to the application also lend support to Petitioner’s standing.
Cancellation Nos. 92057288 and 92058292

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Advent Software Inc., 913 F.2d 942, 16 USPQ2d 1039, 1041 (Fed. Cir. 1990), citing
Otto Roth & Co. v. Universal Food Corp., 209 USPQ at 43; see also Hoover Co. v. Royal
Appliance Mfg. Co., 238 F.3d 1357, 57 USPQ2d 1720, 1721 (Fed. Cir. 2001);
Weatherford/Lamb Inc. v. C&J Energy Services Inc., 96 USPQ2d 1834, 1838 (TTAB
2010); Threshold.TV Inc. v. Metronome Enterprises Inc., 96 USPQ2d 1031, 1036-37
(TTAB 2010). It is equally clear that if Petitioner’s alleged mark is not distinctive —
does not identify source — then there is no basis upon which to compare such a
designation with Respondent’s mark to determine whether confusion as to source is
likely. Otto Roth & Co. v. Universal Foods Corp., 209 USPQ at 44.22
We begin by looking at the meaning of the term BLUES HALL OF FAME. The
term “blues” is defined as:
2. (used with a singular verb) Jazz.
a. a song, originating with American blacks, that is marked by the frequent
occurrence of blues notes, and that takes the basic form, customarily
improvised upon in performance, of a 12-bar chorus consisting of a 3-line
stanza with the second line repeating the first.

22 Claiming it has “valid grounds” for cancelling Respondent’s registrations, Petitioner moves
to amend its pleadings to conform to the evidence pursuant to Fed. R. Civ. P. 15(b).
Petitioner’s Brief p. 38, fn. 5 (52 TTABVUE 39). Rule 15(b) of the Federal Rules of Civil
Procedure provides that “when an issue not raised by the pleadings is tried by the parties’
express or implied consent, it must be treated in all respects as if raised in the pleadings.”
Implied consent to the trial of an unpleaded issue can be found only where the nonoffering
party: (1) raised no objection to the introduction of evidence offered in support of the issue;
and (2) was fairly apprised that the evidence was being offered in support of the issue. See,
Morgan Creek Productions Inc. v. Foria Int’l Inc., 91 USPQ2d 1134, 1138 (TTAB 2009); TBMP
§ 507.03(b). Respondent objects to Petitioner’s “motion” to amend its pleadings to conform to
the evidence. (55 TTABVUE 30-31). Moreover, Petitioner failed to provide any support for
adding new claims (i.e., Respondent’s nonuse of its marks prior to “applying” for registration
renders his registrations void ab initio (52 TTABVUE 39); use of Blues Hall of Fame by
Respondent was not “lawful use” (52 TTABVUE 42); or abandonment (52 TTABVUE 44)).
None of these issues were tried by consent, express or implied. Accordingly, Petitioner’s
motion is denied.

Cancellation Nos. 92057288 and 92058292

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b. the genre constituting such songs
dictionary.reference.com/browse/blues Dictionary.com. Unabridged. Random House
Dictionary, © Random House, Inc. 2016.

2. black folk music characterized by minor harmonies, typically slow tempo,
and melancholy words
3. the form of jazz that evolved from this
4. a song or composition in this style
www.collinsdictionary.com/dictionary/american/blues © Collins 2016

2: a song often of lamentation characterized by usually 12-bar phrases, 3-line
stanzas in which the words of the second line usually repeat those of the first,
and continual occurrence of blue notes in melody and harmony.
www.merriam-webster.com/dictionary/blues. © 2015 Merriam-Webster, Incorporated.

The definition of “hall of fame” is:
1. [COUNTABLE] AMERICAN a place where people go to learn about a
particular sport or activity and the famous people who do it
2. [SINGULAR] the group of people who are most famous for doing a
particular activity
www.macmillandictionary.com/dictionary/american/hall-of-fame © Macmillan Publishers
Limited 2009-2016

1. a memorial in New York City containing busts and tablets honoring
celebrated Americans
2. any similar memorial honoring a renowned achiever in a particular sport
or other activity
www.collinsdictionary.com/dictionary/american/hall-of-fame © Collins 2016
1. a structure housing memorials to famous or illustrious individuals usually
chosen by a group of electors
www.merriam-webster.com/dictionary/hall%20of%20fame © 2015 Merriam-Webster,
Incorporated.

Based on the foregoing definitions,23 “Blues” is a type of song or music, and “hall
of fame” is either a building honoring famous people, or a group of famous people.

23 The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac
v. J.C. Gourmet Food Imp. Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or have
regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006).
Cancellation Nos. 92057288 and 92058292

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Thus, “Blues Hall of Fame” is a descriptive phrase meaning either a structure
honoring people famous for blues music, or a group of people who are famous for blues
music.24
It is Petitioner’s burden to demonstrate that its BLUES HALL OF FAME
designation has acquired distinctiveness prior to the earliest date upon which
Respondent can rely. See Towers v. Advent Software, Inc., 16 USPQ2d at 1041 citing
Otto Roth, 209 USPQ at 43; Threshold.TV Inc. v. Metronome Enterprises Inc., 96
USPQ2d at 1037-38. Petitioner concedes as much.25
Since its founding in 1980, Petitioner has given out a Blues Hall of Fame award.26
While Ebony Magazine previously had a Black Music Hall of Fame that gave awards
within the blues category, its awards program only lasted a few years during the
1970’s and was not around when Petitioner issued its first Blues Hall of Fame
awards.27

24 See In re Gold’s Gym Enterprises Inc., 3 USPQ2d 1716, 1717 (TTAB 1987) (“applicant,
according to its identification, maintains and conducts an exhibition displaying outstanding
individuals and events in the sport of bodybuilding. In view of the dictionary definition of the
term ‘hall of fame’ made of record by the Examining Attorney, supra, we think the term
BODYBUILDING HALL OF FAME clearly indicates that applicant’s exhibition features
individuals who have acquired fame or illustriousness in the world of bodybuilding. We think
the term sought to be registered when used in connection with applicant’s services, readily
describes a significant feature of the recited services and no degree of thought or imagination
is necessary to discern the nature of them.”).
25 Petitioner’s Brief pp. 45-46 (52 TTABVUE 46-47).
26 Jim O’Neal Testimony Dep. pp. 32:24-33:3 (47 TTABVUE 34-35).
27 Jim O’Neal Testimony Dep. pp. 9:21-10:2 (47 TTABVUE 11-12); also see Respondent’s
Notice of Reliance on Ebony Magazine Blues Hall of Fame 1973-1976 Exhibit 17 (34
TTABVUE 2-9) which lists “BLUES” as the category and “Hall of Fame” as the selection in
the “BLUES” category; David Less Testimony Dep. 41:16-42:1 (46 TTABVUE 43-44).
Cancellation Nos. 92057288 and 92058292

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There is no dispute that Petitioner used BLUES HALL OF FAME well before
Respondent began using the same term. Petitioner’s use of BLUES HALL OF FAME
began with its founder, Joe Savarin, around 1980. Mr. Savarin had the concept to
form “an organization called The Blues Foundation” that included hosting a Blues
award ceremony and a Blues Hall of Fame.28 Thus, from its beginning, Petitioner had
a Blues Hall of Fame award.29
Petitioner uses the term BLUES HALL OF FAME as the name of its award given
to persons recognized by others in the Blues community for achieving a lifetime of
excellence.30 As reported in the Winter 1980-81 issue of Living Blues magazine,
Petitioner welcomed the first members into its Blues Hall of Fame in 1980.31 Every
year from 1980 to the present, Petitioner has held a dinner honoring those people
admitted to its Hall of Fame for that year. Petitioner’s Blues Hall of Fame induction
is a ceremony taking place the night before its Blues Music Awards and is not open
to the general public. All of the attendees to the Blues Hall of Fame induction
ceremony are Petitioner’s invited guests.32 A biography and official summary of each

28 Jim O’Neal Testimony Dep. pp. 12:17-13:10 (47 TTABVUE 14-15).
29 Jim O’Neal Testimony Dep. pp. 32:24-33:3 (47 TTABVUE 34-35).
30 Jay Sieleman Testimony Dep. p. 92:16-23 (42 TTABVUE 94) David Less Testimony Dep.
p. 17:7-13 (46 TTABVUE 19).
31 Jim O’Neal Testimony Dep. pp. 17:10-18:4 and Exhibit 21 (47 TTABVUE 19-20, 58-59).
The circulation of Living Blues was about 5,000 subscribers and the magazine was shared
with additional readers. Jim O’Neal Testimony Dep. p. 18:21-23 (47 TTABVUE 20).
32 Jay Sieleman Testimony Dep. pp. 41:15-20, 57:15-25 (42 TTABVUE 43, 59); Notice of
Reliance on Blues Foundation Responses to Interrogatories, Set Two, Interrogatory No. 65
Exhibit 22-13, 14 (39 TTABVUE 19-20).
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Hall of Fame inductee for that year is included in its Blues Music Awards program.33
Today, Petitioner’s Blues Hall of Fame is well established; it is the pinnacle of
achievement for blues artists.34 Additionally, the grand opening of Petitioner’s Blues
Hall of Fame museum was scheduled for May 8, 2015.35
Although the Blues Music Awards ceremonies were initially locally oriented (i.e.,
more attendees from the Memphis area), by 1985, word had gotten out and people
from other parts of the country started to attend the awards.36 The program for The
6th Annual Blues Awards Show (in 1985) featured the “Blues Hall of Fame Inductees
from 1980 through 1984” listing the people inducted into the Blues Hall of Fame
during those years.37 As of 1996, and for each year back to 1980, Petitioner’s Blues
Awards program listed the incoming members of the Blues Hall of Fame; there was
no other Blues Hall of Fame in existence during that time.38 In 1999 and 2000, the
Blues Hall of Fame induction was held in Washington, D.C. Before that time, the
Blues Hall of Fame inductions were held in Memphis and Los Angeles.39

33 Jay Sieleman Testimony Dep. pp. 47:9-18, 52:13-17 (42 TTABVUE 49, 54); David Less
Testimony Dep. p. 39:3-6 (46 TTABVUE 41).
34 Jim O’Neal Testimony Dep. pp. 36:23-37:5 (47 TTABVUE 38-39).
35 Jay Sieleman Testimony Dep. p. 92:12-15 (42 TTABVUE 94).
36 Jim O’Neal Testimony Dep. pp. 21:21-22:6 (47 TTABVUE 23-24).
37 Jim O’Neal Testimony Dep. p. 42:1-18, Exhibit 22 (47 TTABUVE 44, 80).
38 David Less Testimony Dep. pp. 39:3-39:6, 41:16-42:1 (46 TTABVUE 41, 43-44); Arthur
Tipaldi Testimony Dep. p. 29:6-14 (48 TTABVUE 31); Jim O’Neal Testimony Dep. Exhibit 22
(47 TTABVUE 80).
39 Arthur Tipaldi Testimony Dep. pp. 20:18-25; 21:8-14; 25:18-26:8 (48 TTABVUE 22, 23, 27-
28).
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Over the years, Petitioner and third parties have promoted the Blues Hall of
Fame. For example, one of Plaintiff’s witnesses and former Board member, William
Arthur Wax, a retired radio programmer and program director,40 first learned about
Petitioner’s Blues Hall of Fame in the late 1980’s through his subscription to the
Living Blues magazine which ran periodic articles about inductions into Petitioner’s
Blues Hall of Fame.41 When Mr. Wax was employed as a disc jockey in Columbia,
Missouri from 1986 to 1988, he talked about the “new names that [were] inducted
into the Blues Hall of Fame…” on the air and “would do a [radio] show playing the
music of the artists that had been inducted into the Blues Hall of Fame.” While those
audiences were “probably about … 3[,000] or 4,000 listeners,” he moved on to
Washington, D.C. and began doing a daily radio show there called the “Blues Plate
Special,” which had approximately 20,000 listeners. Each year, the Blues Plate
Special did two or three shows about that year’s Blues Hall of Fame inductees.42
From a booth at the House of Blues “centerpiece” pavilion located on the grounds
of the 1996 Atlanta Summer Olympics, Petitioner sold merchandise and
memberships, and distributed copies of its programs from its 1996 “Handy” awards,
which mentioned the “Blues Hall of Fame.” For years, Petitioner went to the Beale
Street Festival in Memphis and the Chicago Blues Festival and distributed brochures

40 Mr. Wax was on the Board of Directors of the Blues Foundation from 2007-2013, serving
as Chairman from 2011-2013. At the time of his testimony he was a current member of
Petitioner’s Board. William Arthur Wax Testimony Dep. pp. 5:8-13, 19:2-13 (49 TTABVUE
7, 21).
41 William Arthur Wax Testimony Dep. p. 7:24-8:7 (49 TTABVUE 9-10).
42 William Arthur Wax Testimony Dep. pp. 9:16-10:3, 10:12-11:5 (49 TTABVUE 11-13).
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that featured the BLUES HALL OF FAME; it also distributed the brochures in Des
Moines, Iowa; the Poconos; Florida; and Eureka Springs, Arkansas.43
It is clear that Petitioner has used the term BLUES HALL OF FAME to identify
an award it gives out each year. However, Petitioner, and third parties, have used
other terms to identify the award. For example, on the first page of its ballot for the
1979-80 W.C. Handy Blues awards, Petitioner’s Hall of Fame awards are identified
in large bold letters as “HALL OF FAME AWARDS.”44 Even in recent years,
Petitioner continues to identify its “Hall of Fame” by various names. For example,
Petitioner’s website features an image of its new building having signage on the front
center of the building identifying it as “The Blues Foundation Hall of Fame.”45
Petitioner also used “The Blues Foundation Hall of Fame” in its promotional
pamphlets to raise funds for building its Blues Hall of Fame building.46
The November/December 1990 edition of Living Blues magazine lists the W.C.
Handy Awards for 1990 identifying the Blues Hall of Fame awards under the title
HALL OF FAME;47 the Summer 1994 edition of the Blues Revue Quarterly magazine

43 David Less Testimony Dep. pp. 46:19-53:24, 56:14-17, Exhibit 18 (46 TTABVUE 48-55, 58,
136-137).
44 Jim O’Neal Testimony Dep. p. 15:2-18 and Exhibit 20 (47 TTABVUE 17, 55).
45 Respondent’s Notice of Reliance on Blues Foundation Recent Uses of “Blues Foundation
Hall of Fame” Exhibit 16 http://www.donate-blueshalloffame.org/make-a-donation 5/5/2015
(33 TTABVUE 7). The signage that was actually put up on the building says “The Blues
Foundation” with “Blues Hall of Fame” spaced to the sides. Jay Sieleman Testimony Dep. pp.
11:23-12:10, Exhibit 3 (42 TTABVUE 13-14, 169).
46 Jon Hornyak Testimony Dep. pp. 27:18-29:9 (41 TTABVUE 30-31).
47 Petitioner’s Notice of Reliance on Various Articles That Reference The Blues Hall of Fame
Exhibit 28 Living Blues magazine November/December 1990 (20 TTABVUE 17).
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has an announcement of Petitioner’s awards identifying “W.C. Handy Award
Winners, The Blues Hall of Fame and Keeping the Blues Alive Awards” while listing
the “Hall of Fame Inductees”;48 and an article entitled “Keepers of the Blues Flame
— Bobby ‘Blue’ Bland, Ahmet Ertegun receive Lifetime Achievement Awards from
the Blues Foundation,” mentions “the fourth annual Lifetime Achievement Awards
and Hall of Fame induction from the Blues Foundation ….”49
Likewise, numerous online and in-print articles about various blues performers
admitted into Petitioner’s Hall of Fame reference the “Blues Foundation(’s) Hall of
Fame.” For example (emphasis added below):
“B.B. King is inducted into the first class of the Blues Foundation Hall of
Fame.” … “[Elmore James, an African American blues guitarist and singer]
was elected to the Blues Foundation’s Hall of Fame in 1980 and was later
elected to the Rock & Roll Hall of Fame.” … “[Bill] Broonzy was inducted into
the Blues Foundation Hall of Fame in 1980.”50

“Big Walter [Horton] died in 1981, and the following year he was inducted into
the Blues Foundation’s Hall of Fame.”51

48 Arthur Tipaldi Testimony Dep. Exhibit 24 (48 TTABVUE 57).
49 Petitioner’s Notice of Reliance on Various Articles That Reference The Blues Hall of Fame
Exhibit 28 Keepers of the Blues Flame Bobby “Blue” Bland, Ahmet Ertegun receive Lifetime
Achievement Awards from the Blues Foundation November 11, 1998 L.A. Times (20
TTABVUE 49-50).
50 Respondent’s Notice of Reliance on Websites and Publications by and About Blues
Foundation Inductees which Reference Their Inductions into “Blues Foundation(’s) Hall of
Fame” Exhibit 13, Rock and Roll Hall of Fame Museum B.B. King
https://rockhall.com/inductees/bb-king/timeline/ [4/8/2015]; “Big Bill” Broonzy, The
Encyclopedia of Arkansas History & Culture, www.encyclopediaofarkansas.net/
encyclopedia/entry-detail.aspx ?entryID=2489 [4/7/2015]; Elmore James, African American
Registry, www.aaregistry.org/historic_events/view/main-source-electric-guitar-elmore-
james [4/8/2015] (30 TTABVUE 21, 32, 34).
51 Respondent’s Notice of Reliance Exhibit 13, Blind Pig Records, Walter Horton,
www.blindpigrecords.com/index.cfm?section=artists&artistid=31 © 2015 [4/8/2015] (30
TTABVUE 67).
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“Mr. Speaker, Ray Charles was inducted into the Blues Foundation’s Hall
of Fame in 1982 and was inducted into the Rock and Roll’s Hall of Fame in its
inaugural year 1986.”52

“[Ma Rainey] was inducted into several halls of fame including the Blues
Foundation’s Hall of Fame in 1983, the Rock and Roll Hall of Fame in 1990,
the Georgia Music Hall of Fame in 1992, and the Georgia Women of
Achievement in 1993.” “Ma Rainey was inducted into the Blue Foundation’s
Hall of Fame in 1990, the same year she was inducted into the Rock and Roll
Hall of Fame.” “Rainey was inducted into the Blues Foundation Hall of
Fame in 1983, ….”53

“Big Mama Thornton dies of a heart attack July 25, 1984 …. That same year,
she was inducted into the Blues Foundation Hall of Fame.”54

“[Slim Harpo] Moore was inducted into the Blues Foundation Hall of Fame
in 1985, and his song, ‘I’m a King Bee,’ was named to the Grammy Hall of Fame
in 2008.”55

“That honor was followed in 1986 with membership in the Blues Foundation
Hall of Fame, and in 1988, Lead Belly’s work was honored by the Rock and
Roll Hall of Fame.”56

52 Respondent’s Notice of Reliance Exhibit 13, Congressional Record 13258 June 22, 2004-
House Ray Charles (30 TTABVUE 76).
53 Respondent’s Notice of Reliance Exhibit 13, Columbus Parks and Recreation Department,
Ma Rainey Home “She was inducted into several halls of fame including the Blues
Foundation’s Hall of Fame in 1983, …”
www.columbusga.org/parks/marainey/marainey.htm [4/12/2015]; Rock & Roll Hall of Fame
and Museum Ma Rainey Biography rockhall.com/inductees/ma-rainey/bio/ “… was
inducted into the Blue Foundation’s Hall of Fame in 1990, …”; Ma Rainey in
BlackHistoryNow “Rainey was inducted into the Blues Foundation Hall of Fame in 1983, …”
Jun 15th, 2011 [4/13/2015] (30 TTABVUE 84, 85, 87).
While these references cite different years for Ma Rainey’s induction into Petitioner’s Blues
Hall of Fame, the years cited are well before Respondent began using Blues Hall of Fame.
54 Respondent’s Notice of Reliance Exhibit 13, Texas State Historical Association, Thornton,
Willie Mae [Big Mama] tshaonline.org/handbook/online/articles/fthpg Uploaded on June
15, 2010 [4/14/2015] (30 TTABVUE 98).
55 Respondent’s Notice of Reliance Exhibit 13, Know LA Encyclopedia of Louisiana, Slim
Harpo (James “Slim Harpo” Moore) www.knowla.org/entry/1191/ Published November 16,
2011 [4/14/2015] (30 TTABVUE 106).
56 Respondent’s Notice of Reliance Exhibit 13, Texas State Historical Association, Huddie
[Leadbelly] Ledbetter tshaonline.org/handbook/online/articles/fle Uploaded on June 15,
2010 [4/14/2015] (30 TTABVUE 111).
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“[Jay ‘Hootie’ McShann] was inducted into the Blues Foundation’s Hall of
Fame in 1987 and received a Pioneer Award from the Rhythm and Blues
Foundation in 1996.”57

“1988 … Johnny [Winter] is inducted into the Blues Foundation Hall of
Fame.”58

“’Memphis Slim’ was inducted into the Blues Foundations’ Hall of Fame in
1989.”59

“[Arthur ‘Blind’ Blake] was inducted into the Blues Foundation’s Hall of
Fame in 1990.”60

“Johnny Shines died on April 20, 1992, the same year he was inducted into the
Blues Foundation’s Hall of Fame.”61 … “1992 was particularly eventful
year, seeing [Lowell Fulson] inducted into the Blues Foundation Hall of
Fame as an artist, and winning Blues Foundation Music Award for
Traditional Album of the Year for Hold On.”62

“Edwards was inducted into the Blues Foundation’s Hall of Fame in
1996.”63

57 Respondent’s Notice of Reliance Exhibit 13, Jazz Pioneer Jay McShann Dies at 90
jazztimes.com/articles/23539-jazz-pioneer-jay-mcshann-dies-at-90 12/08/06 [4/20/2015] (30
TTABVUE 117).
58 Respondent’s Notice of Reliance Exhibit 13, Johnny Winter Biography
www.johnnywinter.com /about/ © 2010 [4/20/2015] (30 TTABVUE 120).
59 Respondent’s Notice of Reliance Exhibit 13, Sunnyside Records Memphis Slim (John
Chatman) www.sunnysiderecords.com/artist.php?id=247 [4/20/2015] (30 TTABVUE 135).
60 Respondent’s Notice of Reliance Exhibit 13, Arthur “Blind” Blake
www.findagrave.com/cgi-bin/fg.cgi?page=gr&GRid=6428540 Record added 2002.
[4/20/2015] (30 TTABVUE 139).
61 Respondent’s Notice of Reliance Exhibit 13, African American Registry, Johnny Shines
www.aaregistry.org/historic_events/view/johnny-shines-tennessee-bluesman [4/20/2015]
Copyright, African American Registry, 2000 to 2013 (30 TTABVUE 144).
62 Respondent’s Notice of Reliance Exhibit 13, Lowell Fulson’s “Them Update Blues” is Great
Blues, October 30, 2014 www.chicagoblues.com/lowell-fulsons-update-blues-great-blues
[4/14/2015] (30 TTABVUE 147).
63 Respondent’s Notice of Reliance Exhibit 13, Variety Bluesman David ‘Honeyboy’ Edwards
Dies August 29, 2011, http://variety.co/2011/music/news/bluesman-david-honeyboy-
edwards-dies-1118041947/ (30 TTABVUE 152).
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“In 1997 [Charles Brown] was inducted into the Blues Foundation’s Blues
Hall of Fame.”64 … “[Brownie McGhee] was inducted into the Blues
Foundation’s Hall of Fame in 1997.”65 … “In 1997, [Koko Taylor] was
inducted into the Blues Foundation’s Hall of Fame.”66

These quotes come from a wide variety of different sources (published after
Respondent registered its BLUES HALL OF FAME mark in 2000), each identifying
Petitioner’s Hall of Fame as “Blues Foundation(’s) Hall of Fame.” They demonstrate
how third parties and the media commonly identify Petitioner’s Hall of Fame to the
public.67
Additionally, some third parties utilize “Blues Hall of Fame” in connection with
their own recognition of blues performers, musicians and supporters. For example,
the record reflects use of the following names around the country: Arizona Blues Hall
of Fame, Cleveland Blues Hall of Fame, Louisiana Blues Hall of Fame, Minnesota
Blues Hall of Fame, OK [Oklahoma] Blues Hall of Fame and Sac [Sacramento] Blues
Hall of Fame.68

64 Respondent’s Notice of Reliance Exhibit 13, Alligator Records Charles Brown
www.alligator .com/artists/Charles-Brown/ © 2015 [4/10/2015] (30 TTABVUE 150).
65 Respondent’s Notice of Reliance Exhibit 13, Walter Brown “Brownie” McGhee-Born
November 30, 1915 in Knoxville, TN Died February 16, 1996 in Oakland, CA
http://bluegillzzpond .comdeep-pond [4/10/2015] (30 TTABVUE 157).
66 Respondent’s Notice of Reliance Exhibit 13, Alligator Records Koko Taylor http://alligator
.com/artists/Koko-Taylor [4/10/2015] (30 TTABVUE 159).
67 For additional examples of third-party use of “Blues Foundation(‘s) Hall of Fame” see
Respondent’s Notice of Reliance on Various Third-Party Online References to “BLUES
FOUNDATION(’S) HALL OF FAME” Exhibit 14 (31 TTABVUE 6).
68 Respondent’s Notice of Reliance on Websites of Third-Party Uses of “Blues Hall of Fame”
Exhibit 18 (35 TTABVUE 5, 7-8, 10, 11, 12, 13, 16).
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As noted above, Petitioner must show that its use of BLUES HALL OF FAME has
acquired distinctiveness. In order to establish acquired distinctiveness, or secondary
meaning, Petitioner must show that “in the minds of the public, the primary
significance of [BLUES HALL OF FAME] is to identify the source of the [services]
rather than the [services] itself.” Inwood Labs., Inc. v. Ives Labs., 456 U.S. 844, 214
USPQ 1, 4 n. 11 (1982); Coach Services Inc. v. Triumph Learning LLC, 668 F.3d 1356,
101 USPQ2d 1713, 1729 (Fed. Cir. 2012); In re Dial-A-Mattress Operating Co., 240
F.3d 1341, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001).
Evidence of acquired distinctiveness can include the length and exclusivity of use
of the mark, advertising expenditures, consumer studies, sales success, unsolicited
media coverage, and attempts to plagiarize. There are undoubtedly other types of
evidence that would also be relevant to a claim of secondary meaning. See Coach
Services Inc. v. Triumph Learning LLC, 101 USPQ2d at 1729; In re
Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005);
Threshold.TV Inc. v. Metronome Enterprises Inc., 96 USPQ2d at 1038-39.
Despite the fact that Petitioner used BLUES HALL OF FAME for many years
prior to Respondent’s adoption and use of the same term,69 the evidence of record does
not persuade us that the public has either come to associate the highly descriptive
designation BLUES HALL OF FAME only with Petitioner, or recognizes the

69 While Respondent introduced testimony and documentary evidence to support his claimed
dates of first use of BLUES HALL OF FAME and CHICAGO BLUES HALL OF FAME,
because Petitioner has not established that it has acquired distinctiveness in BLUES HALL
OF FAME, we need not consider Respondent’s priority evidence.
Cancellation Nos. 92057288 and 92058292

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designation as a mark identifying services provided only by Petitioner. Universal
Foods Corp. v. Otto Roth & Co., Inc., 215 USPQ 1140, 1145 (TTAB 1982) (“Brie
Nouveau” seems to be one of several terms -- “Brie Nouveau,” “Nouveau,” “Ile De
France 60 percent,” “Double Creamy Brie”-- by which the product is called for); Fluid
Energy Processing & Equipment Co. v. Fluid Energy, Inc., 212 USPQ at 36 (trade
name use of “FLUID ENERGY” held insufficient to support § 2(d) claim, since opposer
failed to establish distinctiveness (i.e., proprietary rights) in the term “FLUID
ENERGY”); Antillian Cigar Corp. v. Benedit Cigar Corp., 218 USPQ 187, 189 (TTAB
1983) (no evidence showing that “Antillian” has acquired a secondary meaning).
To the contrary, third parties have also used BLUES HALL OF FAME to identify
their own endeavors. Rather than showing BLUES HALL OF FAME has acquired
significance as a trademark, such evidence supports a lack of trademark
distinctiveness. See Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401, 222 USPQ
939, 940-41 (Fed. Cir. 1984) (“When the record shows that purchasers are confronted
with more than one (let alone numerous) independent users of a term or device, an
application for registration under Section 2(f) cannot be successful, for distinctiveness
on which purchasers may rely is lacking under such circumstances.”). See also,
Hoover Co. v. Royal Appliance Manuf’g Co., 57 USPQ2d at 1722 (opposer presented
no evidence showing how consumers actually perceive the merely descriptive slogan
and only minimal evidence of the use of the slogan); In re Meyer & Wenthe, Inc., 267
F.2d 945, 122 USPQ 372, 376 (CCPA 1959) (it was incumbent upon applicant to
submit proof that its mark is distinctive, not only to experts in the field, but to
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purchasing public); Ayoub, Inc. v. ACS Ayoub Carpet Serv., ___ USPQ2d ___, Opp.
No. 91211014, slip. op. at 32 (TTAB March 31, 2016) (widespread use of the surname
Ayoub is inconsistent with claim of acquired distinctiveness); Racine Industries Inc.
v. Bane-Clene Corp., 35 USPQ2d 1832, 1839-40 (TTAB 1994) (while use of the term
was continuous, could not be said to have been substantially exclusive).
Although we have considered all of the evidence with respect to acquired
distinctiveness, this evidence must be weighed against the highly descriptive nature
of the term BLUES HALL OF FAME as applied to Petitioner’s award and its services
rendered in connection therewith. Given that this term is so highly descriptive,
Petitioner’s burden of proving acquired distinctiveness is very high, thus, much more
evidence is necessary to show that the designation has become distinctive of
Petitioner’s services.
Distinctiveness means that the primary meaning of the term BLUES HALL OF
FAME is as a designation of source rather than of a characteristic, that is, that its
primary meaning, in the field in which it is used by Petitioner, is as a designation of
source rather than of a characteristic of its services. While there is no dispute that
Petitioner used the term BLUES HALL OF FAME well before Respondent, Petitioner
has failed to establish that the designation BLUES HALL OF FAME has acquired
distinctiveness as a source-indicator of Petitioner for providing award recognition to
individuals who have had a significant impact on or made a major contribution to the
blues music industry. Rather, the term BLUES HALL OF FAME is a highly
descriptive term which identifies a significant feature of the services, if not the
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services themselves.70 See, e.g., In re Steelbuilding.com, 75 USPQ2d at 1424 (“the
applicant’s burden of showing acquired distinctiveness increases with the level of
descriptiveness; a more descriptive term requires more evidence of secondary
meaning.” … “The proposed mark is highly descriptive. Therefore, applicant had the
burden to show a concomitantly high level of secondary meaning.”); In re Boston Beer
Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) (claim based on annual
sales under the mark of approximately eighty-five million dollars, and annual
advertising expenditures in excess of ten million dollars, not sufficient to establish
acquired distinctiveness in view of highly descriptive nature of mark); In re Bongrain
Int’l (American) Corp., 894 F.2d 1316, 13 USPQ2d 1727, 1729 (Fed. Cir. 1990) (the
greater degree of descriptiveness the term has, the heavier the burden to prove it has
attained secondary meaning); Perma Ceram Enterprises Inc. v. Preco Indus. Ltd., 23
USPQ2d 1134, 1138 (TTAB 1992) (where the mark relied upon by a plaintiff in
support of its priority of use and likelihood of confusion claim is merely descriptive,
then the plaintiff must establish priority of acquired distinctiveness in order to
prevail on the Section 2(d) claim).
We have considered all of the evidence made of record pertaining to whether
Petitioner has acquired distinctiveness in BLUES HALL OF FAME, including the
evidence and/or arguments not specifically discussed in this opinion. We find that

70 Petitioner’s long use of BLUES HALL OF FAME would be strong evidence against a finding
that the term BLUES HALL OF FAME could ever become distinctive of Respondent’s
services. See McCormick & Co. v. Summers, 354 F.2d at 668, 148 USPQ 272, 276 (CCPA
1966).
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Petitioner has failed to carry that burden. Its failure to prove its ownership of
proprietary rights in BLUES HALL OF FAME means that it cannot prevail on its
claim under § 2(d) of the Trademark Act. Otter Products LLC v. BaseOneLabs LLC,
105 USPQ2d at 1256. Therefore, Petitioner’s priority and likelihood of confusion
claims are dismissed in this consolidated proceeding.

Decision: Cancellation Proceeding Nos. 92057288 and 92058292 on the ground
of likelihood of confusion are dismissed.