Treadwell Original Drifters, LLCv.Original Drifters, Inc.

Trademark Trial and Appeal Board

Mar 5, 2015

No. 92052155 (T.T.A.B. Mar. 5, 2015)

This Opinion is Not a
Precedent of the TTAB

Hearing: May 21, 2014 Mailed: March 5, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Treadwell Original Drifters, LLC

v.

Original Drifters, Inc.
_____

Cancellation No. 92052155
_____

Dickerson M. Downing and Honor Costello of Crowell & Moring LLP,
for Treadwell Original Drifters, LLC.
James M. Slattery of Birch, Stewart, Kolasch & Birch, LLP,
for Original Drifters, Inc.
_____
Before Zervas, Greenbaum and Masiello,
Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
Treadwell Original Drifters, LLC (“Petitioner”) has petitioned to cancel a
registration owned by Original Drifters, Inc. (“Respondent”) for the mark BILL
PINKNEY’S ORIGINAL DRIFTERS (standard characters) for
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Entertainment [s]ervices in the nature of live
performances by a musical group, in International Class
41.1
In the petition for cancellation, Petitioner alleges that Respondent’s mark, when
used in connection with Respondent’s services, so resembles Petitioner’s previously
used mark THE DRIFTERS for musical performances and recordings by a singing
group as to be likely to cause confusion under Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d). Pet. ¶¶ 1-2, 1 TTABVUE 4.2 Petitioner also alleges that it is the
owner of an application for the standard character mark THE DRIFTERS for
“prerecorded records, audio tapes and compact discs featuring music and electronic
music” in International Class 9 and “entertainment services namely live
performances by a musical band in presentation of musical performances; music
publishing services; music production services” in International Class 41,3 that the
Examining Attorney cited the application underlying Respondent’s registration for
BILL PINKNEY’S ORIGINAL DRIFTERS as a potential bar to registration of
Petitioner’s application, and that the Examining Attorney suspended Petitioner’s
application pending disposition of Respondent’s earlier-filed application. Pet. ¶¶ 21-
24, 1 TTABVUE 8.

1 Registration No. 3649096, issued July 7, 2009, claiming first use anywhere and use in
commerce since at least 1958. Assignment of underlying application from Willie B. Pinkney
to Original Drifters, Inc. dated August 1, 2007, recorded Reel 003592, Frame 0729. Willie B.
Pinkney, also known as Bill Pinkney, is the predecessor-in-interest to Respondent.
2 TTABVUE is the Board's electronic case file system. See http://ttabvue.uspto.gov.
3 Application Serial No. 77119123 filed on February 28, 2007 claiming January 1, 1953 as
the date of first use and first use in commerce in both classes. Petitioner also is the owner,
by assignment from The Drifters UK Ltd., of a second application to register THE
DRIFTERS for goods and services similar to those identified in the ‘123 application.
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Respondent, in its answer, denied the salient allegations, and asserted several
putative affirmative defenses setting forth its counterpoints to Petitioner’s
allegations.
Petitioner and Respondent filed main briefs on the case, and Petitioner filed a
reply brief. An oral hearing was held on May 21, 2014.
I. Evidentiary Matter
In its opening brief on the case, Petitioner did not discuss any objections to
evidence of Respondent, and stated that it reserves its right to raise such objections
in its reply brief. Petitioner then raised several objections in its reply brief. Because
Petitioner waited until its reply brief to raise objections, Petitioner waived its
objections. First raising objections in a reply denies the opposing party an
opportunity to respond to the objections. See Kohler Co. v. Baldwin Hardware Corp.,
82 USPQ2d 1100, 1104 (TTAB 2007) (objection raised at trial waived when
petitioner waited until its reply brief to renew objections). We will, however,
address any evidentiary objections or concerns with respect to any evidence on
which we rely in our discussion of such evidence.
II. The Record
The record includes the pleadings and, pursuant to Trademark Rule 2.122(b)(1),
Respondent’s registration file.
In addition, Petitioner introduced the testimony deposition of Tina Treadwell (51
TTABVUE), President of Petitioner, with exhibits (53 TTABVUE 47-346). Tina
Treadwell is the daughter of George Treadwell, whose importance to this case will
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be discussed below. Petitioner also filed Notices of Reliance submitting Petitioner’s
pleaded trademark applications (22 TTABVUE), webpages from a website operated
by a licensee of Petitioner (20 TTABVUE), and excerpts and exhibits from the
discovery deposition of Maxine Porter, Respondent’s President (21 TTABVUE).
Respondent introduced the testimony depositions (with attached exhibits) of
Maxine Porter (33 and 36-39 TTABVUE); Earthalee Pinkney Johnson, who is Bill
Pinkney’s daughter and Respondent’s Management Assistant (34 TTABVUE); and
Morgan Bobby Robinson, Jr. (35 TTABVUE), who has been involved in the
recording industry as a personal manager, agent and producer since the early
1950s.
In addition, pursuant to the December 31, 2012 Board order in this proceeding
(40 TTABVUE) granting Respondent’s motion to use testimony from another
proceeding between predecessors to the present parties (Opposition No. 91151984,
captioned Willie B. Pinkney v. Treadwell’s Drifters, Inc. (2004)), Respondent
submitted the testimony (with attached exhibits) of Bill Pinkney (45 TTABVUE),
Maxine Porter (42 TTABVUE), and singers Isiah Council (44 TTABVUE), Charles
Cockerham (43 TTABVUE) and Charlie Thomas (41 TTABVUE).
III. Designation of Confidential Matter
Respondent designated as confidential the entirety of Maxine Porter’s Testimony
Deposition Volume 5 (33 TTABVUE) and associated exhibits R-44 and R-45,
although most of her testimony and many of the documents included in the exhibits
are not of a genuinely confidential nature.
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As with any confidential information in a Board proceeding, only the particular
portion of the submission that discloses confidential information should be filed as
confidential in ESTTA, the Board’s electronic database through which filings are
made. It is the policy of this tribunal that proceedings be public, and parties to
Board proceedings may not subvert that policy by overly broad designations of
materials submitted therein as confidential. Respondent is ordered to submit a
redacted version of Volume 5 of Maxine Porter’s Testimony Deposition and
exhibits in which only information that is truly confidential is deleted
within thirty (30) days from the mailing date of this decision, failing which
the current Volume 5 will become part of the public record in its entirety.
See, e.g., Morgan Creek Productions Inc. v. Foria Int’l Inc., 91 USPQ2d 1134, 1136
n.9 (TTAB 2009).
IV. Discussion
A. Standing
To establish standing to petition to cancel Respondent's registration, Petitioner
must prove that it has a real interest in the outcome of this proceeding and, thus, a
reasonable basis for its belief that it would be damaged by the registration. See
Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999); Jewelers
Vigilance Committee, Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021 (Fed.
Cir. 1987); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ
185 (CCPA 1982). Petitioner has made of record the USPTO Office Action
suspending Petitioner’s pleaded application Serial No. 77119123 pending the
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possible refusal to registration under Section 2(d) based on an alleged likelihood of
confusion with Respondent's earlier-filed, then-pending application (now the
involved registration). Petitioner therefore has established its standing to bring this
case. Life Zone Inc. v Middleman Group, Inc., 87 USPQ2d 1953, 1959 (TTAB 2008)
(standing found based on plaintiff’s ownership of pending application and Office
Action which raised defendant’s application as a potential bar to registration). See
also ShutEmDown Sports, Inc. v. Lacy, 102 USPQ2d 1036, 1041 (TTAB 2012).
B. Grounds for Cancellation/Burden of Proof
The registration Petitioner seeks to cancel is entitled to the prima facie
presumptions, under Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b), of the
validity of the registration, Respondent’s ownership of the registered mark, and
Respondent’s right to exclusive use of the mark in commerce in connection with the
identified services. Petitioner thus must rebut these presumptions, and establish its
pleaded case (priority and likelihood of confusion) by a preponderance of the
evidence. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1848
(Fed. Cir. 2000); Cerveceria Centroamericana, S.A. v. Cerveceria India Inc., 892 F.2d
1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989). It is only after Petitioner has
established a prima facie case that the burden of proof shifts to Respondent. Cold
War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626,
1629-1630 (Fed. Cir. 2009) (“The burden of producing additional evidence or
argument in defense of registration only shifts to the registrant if and when the
party seeking cancellation establishes a prima facie showing of invalidity.”).
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In order for Petitioner to prevail on a claim of likelihood of confusion, Petitioner
must prove it has proprietary rights in the term it relies upon to demonstrate
likelihood of confusion as to source. Herbko Int’l Inc. v. Kappa Books, 308 F.2d 1156,
64 USPQ2d 1375, 1378 (Fed. Cir. 2002); Otto Roth & Co. v. Universal Foods Corp.,
640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981). If Petitioner’s claim of likelihood of
confusion is based, as in this case, on ownership of an unregistered mark, the mark
must be distinctive, inherently or otherwise, and Petitioner must show priority of
use. Id. at 43. Because Respondent has not questioned the inherent distinctiveness
of THE DRIFTERS, and we know of no reason on this record why THE DRIFTERS
would not be inherently distinctive, we assume that it functions as a mark. Id. at
44.
C. Background
It is undisputed that in 1953 a musical ensemble that identified itself as “The
Drifters” (“The Drifters” or “the Group”) began to perform. It is also undisputed that
the original performers included singers Clyde McPhatter, Willie B. (Bill) Pinkney,
Andrew Thrasher and Gerhart Thrasher. Pinkney Prior Test. at 18, 45 TTABVUE
22; Robinson Test. at 6, 35 TTABVUE 6; T. Treadwell Test. at 5, 36, 51 TTABVUE
5, 36.
Both parties claim that they have made continuous use, through their
predecessors-in-interest, of the word DRIFTERS for musical performances since
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1953.4 In addition, both parties claim that they have received and continue to
receive royalties from recordings and radio air time under mark THE DRIFTERS in
the United States. T. Treadwell Test. at 160-161, 51 TTABVUE 161-162; Pinkney
Prior Test. at 4, 45 TTABVUE 8; Porter Test. Vol. 2 at 6-8, 37 TTABVUE 6-8; Porter
Test. Vol. 4 at 13-14, 39 TTABVUE 13-14. Petitioner has taken the position that
parties who receive royalties on recordings maintain a continuing interest in the
trademark under which the recordings are sold even if live performances under the
mark have ceased, citing as support for this principle Marshak v. Treadwell, 58
F.Supp.2d 551, 574 (D.N.J. 1999), aff’d, 240 F.3d 184 (3d Cir. 2001) (“Marshak I”),
Kingsmen v. K-Tel Int’l Ltd., 557 F.Supp. 178, 183 (S.D.N.Y. 1983), aff’d, 240 F.3d
184 (3d Cir. 2001), and HEC Enters., Ltd. v. Deep Purple, Inc., 213 USPQ2d 991
(C.D. Cal. 1980). Pet. Br. at 30-32, 53 TTABVUE 37-39. If we accept Petitioner’s
position on this point, then such continuity of trademark rights, insofar as it is
maintained through collection of royalties, applies equally to both parties.
Petitioner is therefore not in a position to challenge Respondent’s continuity of use
of the mark THE DRIFTERS. Thus, the crux of this controversy is whether
Petitioner can demonstrate rights in this term that are prior in time to those of
Respondent.
D. Petitioner’s Theory of the Case
Petitioner’s theory of the case, at least insofar as it pertains to rights Petitioner
has in the mark THE DRIFTERS, is based on the activities of George Treadwell, his

4 Petitioner also claims that it has made continuous use of the mark THE DRIFTERS for
sound recordings since 1953. Pet. ¶¶ 1-2, 1 TTABVUE 4.
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family, and the various companies that he and his family have controlled, starting
with The Drifters, Inc., which was incorporated in 1954 in New York, and
culminating in Petitioner. As Tina Treadwell testified, “the [G]roup started and
ended with our family.” T. Treadwell Test. at 147, 51 TTABVUE 148.
This theory is premised on several elements, all of which Respondent disputes.
First, Petitioner contends that George Treadwell co-founded the Group in 1953 with
Ahmet Ertegun, the President of Atlantic Records, and Clyde McPhatter, the first
lead singer of the Group. Pet. Br. at 9, 53 TTABVUE 16. Second, Petitioner argues
its ownership of the mark THE DRIFTERS stems from several predecessor
“corporations and entities that date back to … George Treadwell, in 1953” (Pet. Br.
at 8, 53 TTABVUE 15), starting with The Drifters, Inc. Third, Petitioner asserts
that all of the singers, including Bill Pinkney, were merely employees of The
Drifters, Inc., or its corporate successors, which George Treadwell and his family
controlled, and that none of the employees had ownership rights in the mark THE
DRIFTERS. Pet. Br. at 15, 53 TTABVUE at 22. As a corollary, Petitioner claims
ownership rights to the mark THE DRIFTERS through George Treadwell’s position
as manager of the Group starting in 1953 or 1954 – a position that he allegedly
maintained until he died in 1967. According to Petitioner, in his managerial
position, George Treadwell controlled all aspects of the Group, including hiring and
firing performers, choosing, arranging and sometimes co-writing the songs,
selecting the performers’ clothing, and “maintaining the integrity of the brand.” Pet.
Br. at 12, 53 TTABVUE at 19.
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We now review the relevant evidence and testimony concerning each of the
elements of Petitioner’s theory of ownership.
1. Did George Treadwell Have any Ownership Rights in the Name
THE DRIFTERS When the Group was Formed in 1953?
Petitioner contends that in 1953, its predecessor-in-interest, George Treadwell,
founded the Group with singer Clyde McPhatter under the sponsorship of Ahmet
Ertegun, the founder of Atlantic Records. T. Treadwell Test. at 4-5 and 25-27, 51
TTABVUE 4-5 and 25-27; Pet. Br. at 9, 53 TTABVUE 16. Petitioner relies on the
trial testimony of Tina Treadwell to support Petitioner’s contentions as to the
formation of the Group. In this regard, Tina Treadwell testified:
The Drifters wasn’t a group that started in terms of four
guys getting together and saying we are going to be The
Drifters. It was a corporate entity that was begun by
Clyde and my father, they chose the employees that came
to be, you know, that sang with him. And it was always a
group around the lead singer. T. Treadwell Test. at 136,
51 TTABVUE 136.
She further testified: “Before there were any other Drifters there were my father
and Clyde who started a company, and that company that was incorporated.” Id. at
145. We note that oral testimony, even of a single witness, if sufficiently probative,
may suffice to prove priority. Powermatics, Inc. v. Glebe Roofing Prods. Co., 341
F.2d 127, 144 USPQ 430 (CCPA 1965); Kohler Co. v. Baldwin Hardware Corp., 82
USPQ2d 1100, 1108 (TTAB 2007). See also Nat’l Bank Book Co. v. Leather Crafted
Prods., Inc., 218 USPQ 826, 828 (TTAB 1993) (oral testimony may be sufficient to
prove the first use of a party's mark when it is based on personal knowledge, it is
clear and convincing, and it has not been contradicted). However, we also bear in
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mind that, as one who was born in 1958, Tina Treadwell has no personal knowledge
of events that occurred before then.
Petitioner placed in evidence several pages from the website located at
thedrifters.co.uk, submitted as Exhibit P-6 to Tina Treadwell’s testimony
deposition. 53 TTABVUE 58. This document states that “[s]ince 1953, more than 65
vocalists have performed as part of the group … During this time, the only constant
has been the Treadwell family, who founded this group back in 1953 and who still
own the group to this day.” 53 TTABVUE 63. The document further states that “The
Drifters were formed in 1953 by the late George Treadwell. To this day, the group is
still owned by the Treadwell Family.” 53 TTABVUE 67.
Although this evidence is admissible because it meets the requirements set forth
in Safer Inc. v. OMS Investments, Inc., 94 USPQ2d 1031 (TTAB 2010), it is
admissible only “to show what has been printed, not the truth of what has been
printed.” Id. at 1040. Moreover, we cannot logically view these web pages as
corroborating or otherwise reinforcing the testimony of Tina Treadwell, because she
testified that she manages and controls the content of the website through a
licensee. T. Treadwell Test. at 20-21, 51 TTABVUE 21-22. While we have no doubt
that Tina Treadwell believes the information on the website to be true, she testified
that “most of the older history came from our family files …,” id., but Petitioner
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provided nothing from the “family files” to support her testimony about the
formation of the Group.5
In any event, the printout from the website sets forth a narrative that is at odds
with Petitioner’s version of the events, at least in part. Notably, the paragraph
describing Ahmet Ertegun states that “[h]e encouraged Clyde McPhatter to join
Atlantic in the early 1950[]s and together they formed The Drifters.” 53 TTABVUE
58. And the paragraph describing Clyde McPhatter states that “Clyde formed the
Drifters in 1953 … but in May 1954, McPhatter looked towards a solo career. He
sold his half share of The Drifters to George Treadwell when he left.” Id. Neither
entry mentions George Treadwell’s role in the formation of the Group.
The printout from the website therefore is of limited probative value, and Ms.
Treadwell’s testimony that George Treadwell formed the Group with Clyde
McPhatter in 1953 is otherwise unsubstantiated. Moreover, Respondent’s testimony
and evidence, discussed below, directly contradict Ms. Treadwell’s testimony on this
point.
Respondent, for its part, contends that although Bill Pinkney took part in the
formation of the Group and in its first performances in 1953, George Treadwell was
not then involved. Robinson Test. at 6, 47, 35 TTABVUE 6, 47. As noted above,
there is no dispute that the Group started to perform in 1953, and Bill Pinkney was

5 Tina Treadwell’s knowledge of the early years of the Group is based on information she
has in her possession because she is President of Petitioner, and because she is the
daughter of George Treadwell and Faye Treadwell, who assumed control and management
of the company after George Treadwell died in 1967. However, Ms. Treadwell is too young
to have personal knowledge of the 1953 events, and she presented no business records other
than the printout from the corporate website, discussed above, to substantiate her claims.
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a singer in the Group at that time. In addition, in the prior Opposition, Bill Pinkney
testified that he “started with The Drifters in 1953 at the very beginning” and that
since that date, he continuously has performed as “The Drifters” or as “Bill Pinkney
& the Original Drifters.” Pinkney Prior Test. at 4, 6, 45 TTABVUE 8, 10. In
addition, Maxine Porter testified that even after Bill Pinkney’s death in 2007,
Respondent continues to tour and record under the name BILL PINKNEY’S
ORIGINAL DRIFTERS. Porter Confid. Test. Vol. 5 at 9-12, TTABVUE 10-13.
Morgan Bobby Robinson, Jr., who is the only witness whose testimony was taken
in this proceeding with first-hand knowledge of the events of 1953,6 testified that he
was “the original manager of the Thrasher Brothers,” whom he “released [] in 1953
to become part of The Drifters.” Robinson Test. at 6, 35 TTABVUE at 6. According
to Mr. Robinson, in 1953, Bill Pinkney and the other four original singers in the
Group came to the Gale Agency, where Mr. Robinson was employed, and they hired
Gale Agency to act as their booking agent. Robinson Test. at 6, 35 TTABVUE 6. Mr.
Robinson specifically denies that George Treadwell was involved with the Group in
1953: “I know in ’53, there wasn’t no Treadwell.” Robinson Test. at 47, 35
TTABVUE 47.
Mr. Robinson also testified that Bill Pinkney performed with the Group from
1953-1958, that he formed “The Original Drifters” singing group with Andrew and
Gerhart Thrasher in 1958, and that he performed as either “The Drifters,” “The
Original Drifters” or “Bill Pinkney’s Original Drifter’s” from 1953 until he died in

6 Bill Pinkney also had first-hand knowledge of the events of 1953. As noted above, his
testimony from the prior Opposition proceeding is of record in this case.
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2007, “[b]ecause I’ve known Bill Pinkney from the day he started in, and became a
member of, The Drifters all the way up to the day he passed away.” Robinson Test.
at 19, 36-38, 35 TTABVUE 19, 36-38.
We also consider certain affidavits filed in the case of Drifters, Inc. v. Circle
Artists Corp., 13 Misc.2d 778, 178 N.Y.S.2d 713 (1958) in the New York State
Supreme Court, Special Term (“Circle Artists Litigation”), which were submitted in
this proceeding by both Petitioner and Respondent. Respondent submitted the
entire record of proceedings as Exhibit R-4 to the testimony deposition of Earthalee
Pinkney Johnson (Johnson Test. at 6, 34 TTABVUE 6, 45-101).
In the Circle Artists Litigation, The Drifters, Inc. sought, but failed to secure, a
temporary injunction restraining Circle Artists and its president from using the
name THE DRIFTERS and acting as an agent for or booking performances of a
musical group under the trademarks THE DRIFTERS or THE ORIGINAL
DRIFTERS. Exh. R-4, 34 TTABVUE 45-101. In connection with the plaintiff’s
Motion for a Temporary Restraining Order, the following notarized affidavits were
filed: Lewis Lebish (for plaintiff, 34 TTABVUE 53-55)7, Frank R. Sands8 (for
defendants, 34 TTABVUE 58-61), Bill Pinkney, Andrew Thrasher and Gerhart
Thrasher (jointly for defendants, 34 TTABVUE 62-67), with attached exhibits (34
TTABVUE 68-78), and the reply (second) affidavit of Lewis Lebish (34 TTABVUE

7 Petitioner also submitted this affidavit as Exhibit P-49 to the testimony deposition of Tina
Treadwell. 53 TTABVUE 311.
8 Mr. Sands was the President of Circle Artists Corp. Circle Artists Corp. was a spin-off of
Gale Agency, which was the booking agency for THE DRIFTERS from 1953-1958. Robinson
Test. at 22-23, 35 TTABVUE 22-23.
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80-82) with attached exhibits (34 TTABVUE 83-101). Based on Maxine Porter’s
testimony and the discussion between counsel as to the provenance of these
documents, and the representation of Respondent’s counsel at the end of Ms.
Porter’s testimony that Exhibit R-4 is a complete copy of the record of the Circle
Artists Litigation (Porter Confid. Test. Vol. 5 at 57-62, 74-75, 33 TTABVUE 58-63,
75-76), we find that the notarized affidavits meet the authenticity requirements of
Fed. R. Evid. 901(b)(8) and Fed. R. Evid. 902(8), and that they are admissible under
the ancient documents exception to the hearsay rule. Fed. R. Evid. 803(16).
In the Joint Affidavit of Bill Pinkney, Andrew Thrasher and Gerhart Thrasher,
the three singers testified that “[i]n 1953 your deponents, together with a Clyde
McThatter [sic], formed a quintet singing group known as THE DRIFTERS” (id. at
62), and “[t]hat name, THE DRIFTERS, was our sole and exclusive property,” (id. at
64); they also stated that Lewis Lebish’s efforts to appropriate the mark THE
DRIFTERS by creating a corporation named The Drifters, Inc., were unauthorized.
Id. at 63-65. We note that the Joint Affidavit constituted the sworn testimony of
three witnesses who, as singers in the original Group, had first-hand knowledge of
the events at issue. Moreover, it makes a clear statement as to the affiants’ belief as
to the ownership of the name, the date as of which such ownership arose (1953), and
the method whereby such ownership arose (the formation of a singing group under
that name).
Lewis Lebish, who was one of the three original directors and shareholders in
The Drifters, Inc., denied these statements in his reply affidavit. Pet. Exh. R-4, 34
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TTABVUE 80. He also testified in his initial affidavit “[t]hat I and my associates
during the past five (5) years have spent considerable money in teaching, hiring,
coaching and publicizing a singing group to be known as ‘THE DRIFTERS.’” Id. at
53. The affidavit is not specific as to the identity of Mr. Lebish’s associates or as to
the precise meaning of “during the past five (5) years.”
After reviewing the evidence and testimony, and giving appropriate weight
thereto, we find that Petitioner failed to demonstrate, by a preponderance of the
evidence, that George Treadwell acquired trademark rights in the mark THE
DRIFTERS through the formation of the Group in 1953. Rather, the evidence
suggests that Respondent’s predecessor, Bill Pinkney, and the other singers who
were members of the Group in 1953, shared in trademark rights that arose when
the Group began to perform in 1953. Although the form of their ownership is
unclear (e.g., partnership, joint ownership, unincorporated association), it is clear
that trademark rights would have arisen upon the first performance of services
under the mark, under common law principles, and Petitioner has not presented
any evidence or argument to persuade us otherwise.
Respondent maintains that since 1953, Bill Pinkney continued to perform under
the mark THE DRIFTERS in one form or another, including as a stand-alone mark
through approximately 1958. We explore in later sections of this decision
Petitioner’s other contentions as to how it acquired rights superior to those of
Respondent and its predecessor.
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2. Did The Drifters, Inc. Acquire Trademark Rights to THE
DRIFTERS Upon Incorporation in 1954, and if so, From Whom?
Petitioner contends that “[a]s Ms. Treadwell testified, Petitioner is the successor-
in-interest, with respect to the ownership of THE DRIFTERS Mark, to a number of
predecessor corporations and entities that date back to her father, George
Treadwell, in 1953. The corporate entities include: (1) The Drifters, Inc., which was
incorporated in the State of New York on or about November 18, 1954 …”. Pet. Br.
at 8, 53 TTABVUE 15.
The record shows that The Drifters, Inc. was formed on November 18, 1954 as a
New York corporation with three directors, Margaret Harmon, Abraham Teller and
Lewis Lebish, each of whom owned one third of the shares in the corporation. Exh.
P-34, 53 TTABVUE 259. However, there is no reliable testimony or documentary
evidence as to how or from whom the corporation obtained trademark rights to the
name THE DRIFTERS in 1954 or later.
Petitioner’s sole witness, Tina Treadwell, testified that
Margaret Harmon, Abraham Teller and Lew Lebish are
the three people who invested the initial monies into the
company and therefore became the current shareholders,
and my father was business partners with Lewis Lebish
and together they ran the company, and my father was
president of the company.
T. Treadwell Test. at 97, 51 TTABVUE 98. Tina Treadwell further testified that
“[a]t the time of incorporation where there were monies put into the company
[George Treadwell] had not put money into it, but he as the person who started the
company with Clyde, they were [sic] president of the company and his shares came
shortly after that.” T. Treadwell Test. at 163, 51 TTABVUE 164. While this
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testimony explains why George Treadwell was not an original director or
shareholder of The Drifters, Inc., it does not explain how or from whom the
corporation obtained trademark rights in the name THE DRIFTERS, and Tina
Treadwell did not testify that any of the five original singers transferred their
interest in the name THE DRIFTERS to the corporation. As is apparent from the
discussion in the prior section, trademark rights were created in 1953, through use
of THE DRIFTERS mark, which is not contested by the parties.
We note Tina Treadwell’s testimony confirming the statements on the printout
from thedrifters.co.uk website that “in May 1954,” Clyde McPhatter left the Group
and “sold his half share of The Drifters to George Treadwell.” Exh. P-6, 53
TTABVUE 58-59; T. Treadwell Test. at 27, 51 TTABVUE 28. As discussed above,
the evidentiary value of the information on this printout is limited. Further, her
testimony regarding movement of the trademark THE DRIFTERS from Clyde
McPhatter to George Treadwell is unsubstantiated. We also note that an article on
the history.com website (Exh. P-7, 53 TTABVUE 83), reports that Clyde McPhatter
left the Group in 1956.9 In any event, regardless of when Clyde McPhatter left the
Group, Tina Treadwell did not testify that he transferred anything to the
corporation. Moreover, although Tina Treadwell testified that Clyde McPhatter and
her father began the “corporate entity” behind the Group, (T. Treadwell Test. at
135, 51 TTABVUE 136), and that “the [G]roup started and ended with our family,”

9 We discuss below the admissibility and probative value of this document.
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(T. Treadwell Test. at 147, 51 TTABVUE 148), the 1954 incorporation is at odds
with the inception of the mark in 1953.
At her deposition, Tina Treadwell was shown a copy of the history.com article,
and she stated that the information contained therein is correct to the best of her
knowledge. Exh. P-7, T. Treadwell Test. at 42-44, 51 TTABVUE 42-44. This article
also suggests that Clyde McPhatter and George Treadwell were partners (“[w]hen
McPhatter left the [G]roup, he sold his 50-percent ownership stake in the Drifters’
name and song copyrights to his sole partner, the group’s manager, George
Treadwell.”), but it does not state when that partnership was formed. And, although
it also states that after Clyde McPhatter left the Group, “from that point forward,
Treadwell ran the Drifters as a business in which the [G]roup’s singers were paid a
modest weekly salary but did not share in royalty earnings” (53 TTABVUE 83), it
does not mention The Drifters, Inc. at all. Moreover, the article does not indicate the
source(s) of its information.
While we can give weight to what Ms. Treadwell says about this document, we
give no weight to the truth of the matters asserted in the document because it is
hearsay. This raises the perplexing question as to whether the history.com article is
the source of Ms. Treadwell’s information, as she was born after the events
described in the article occurred. In any event, we cannot consider the document for
the truth of the matter asserted, and we give only limited weight to Ms. Treadwell’s
testimony as to events that transpired years before she was born.
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In the Circle Artists Litigation, the corporation argued in its Motion for a
Temporary Restraining Order that it “is the successor in interest to a partnership
known as ‘THE DRIFTERS,’” (34 TTABVUE 47) but this is merely an argument of
counsel. No evidence was offered to support the argument.
The Lebish reply affidavit states that in 1954, Clyde McPhatter was doing
business as “The Drifters,” that McPhatter employed various singers, including Bill
Pinkney and the Thrashers, as part of his group, and “[t]hat thereafter The
Drifters[,] Inc. obtained title to the name ‘The Drifters.’” 34 TTABVUE 80-81. Mr.
Lebish does not allege that the corporation obtained title to the name from Clyde
McPhatter, and he does not even mention George Treadwell. There is no testimony
that any of the singers, including Clyde McPhatter, transferred his interest in THE
DRIFTERS to the corporation. Moreover, this account traces the origin of “The
Drifters” solely to Clyde McPhatter, and is inconsistent with Petitioner’s other
accounts, including the “partnership” mentioned in the Motion.
In the Joint Affidavit, the singers took the position that the incorporation was an
attempt to appropriate their preexisting trademark rights, and they rejected any
claim that The Drifters, Inc. owned the trademark THE DRIFTERS. In particular,
they testified that they never authorized anyone, including Lewis Lebish, to “file
any trade name, corporate name, partnership name, or any other name in our
behalf”; that Lewis Lebish only handled tax matters for the group, and “had no
right to incorporate the name ‘THE DRIFTERS’ on November 21 [sic 18], 1954, and
thereby appropriating that name for himself and his associates. It was certainly
Cancellation No. 92052155
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never done with our authorization or consent.”; and that in the act of incorporating
The Drifters, Inc., “Mr. Lebish took advantage of his position as accountant and as
attorney to appropriate something to his own use.” Exh. R-4, 34 TTABVUE 64-65.
The evidence shows that the Group was performing and recording under the
name THE DRIFTERS in 1953, and the corporation was not formed until 1954. The
formation of a corporation in 1954 could not create trademark rights in the name
THE DRIFTERS when the Group had performed and recorded under that name in
1953, and there is no reliable evidence or testimony that anyone transferred
ownership of that name to the corporation. Accordingly, we find that Petitioner has
failed to demonstrate by a preponderance of the evidence that any incidents
connected with the incorporation of The Drifters, Inc. resulted in ownership of the
mark THE DRIFTERS by George Treadwell or any other predecessor of
Petitioner.10
3. Did Bill Pinkney Become an Employee of The Drifters, Inc. in
1955, and if so, did he Relinquish his Ownership of THE
DRIFTERS Trademark?
Petitioner contends that “Mr. Pinkney, like the other Drifters throughout their
history, was an employee working under an employment agreement for a Treadwell
controlled company that provided that he did not own any rights in THE
DRIFTERS Mark.” Pet. Br. at 15, 53 TTABVUE 22. The parties dispute whether
Bill Pinkney signed an employment agreement with The Drifters, Inc. In its

10 Therefore, unless Petitioner provides sufficient evidence to carry its burden of proof as to
how, and from whom, it acquired ownership of THE DRIFTERS mark, Petitioner’s
voluminous evidence, and Tina Treadwell’s related testimony, concerning subsequent
transfers of the mark THE DRIFTERS to other corporate entities, culminating in
Petitioner, is not relevant.
Cancellation No. 92052155
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Answer, Respondent denied that Bill Pinkney had done so. Ans. ¶¶ 17-19, 11
TTABVUE 6. Petitioner has submitted an agreement dated April 21, 1955 (Exh. P-
14, 53 TTABVUE 115), but Earthalee Pinkney Johnson testified that she did not
recognize the signature (which is barely legible on the copy filed with the Board) as
that of her father Bill Pinkney. Johnson Test. at 7, 34 TTABVUE 7. However, even
if Bill Pinkney signed the agreement, we do not agree with Petitioner’s contention
that paragraph 6 shows that Bill Pinkney (the ARTIST) acknowledged the
“exclusive right” of The Drifters, Inc. (the EMPLOYER) in the trademark THE
DRIFTERS.11 Paragraph 6 reads as follows:
The EMPLOYER shall have the exclusive right in its own
name and otherwise to use and to license others to use the
name and/or likeness of the ARTIST in any proper way in
connection with the advertisement and/or giving of
publicity to performance concerning the ARTIST and for
any commercial purpose whatsoever.
This provision, and especially the meaning of the clause “in its own name and
otherwise,” is not entirely clear. Petitioner argues that this provision constitutes an
acknowledgement by the ARTIST that the EMPLOYER owns the name THE
DRIFTERS. We do not agree. When read in its entirety, the provision much more
clearly relates to the right of the EMPLOYER to use “the name and/or likeness of
the ARTIST.” Notably, there is no clear reference in paragraph 6 to the name or
mark THE DRIFTERS; moreover, the document is silent as to any assignment,
transfer or license of the name THE DRIFTERS to the EMPLOYER. The document

11 The Drifters, Inc. made the same argument in the Circle Artists Litigation.
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is an employment agreement.12 However, signing an employment agreement, in and
of itself, does not equate to a relinquishment of pre-existing trademark rights of the
employee, such as the rights that the singers in their Joint Affidavit testified
belonged to them.
The provision discussed above stands in contrast to a paragraph found in
subsequent employment contracts of record, signed by The Drifters, Inc. and other
singers whom The Drifters, Inc. employed. That paragraph clearly states that The
Drifters, Inc. owns the rights to the name THE DRIFTERS, that the Artist is
merely an employee of the corporation, and that the Artist is not allowed to use the
name THE DRIFTERS when not employed by the corporation. This paragraph
usually appears as either paragraph 7 or 8 of such contracts dated 1960 and later
(Exhs. P-8 –10, 12 and 13, 53 TTABVUE 85-99, 104-114), and reads as follows:
The Artist agrees that the name of THE DRIFTERS
belongs exclusively to the Employer and that he will not
at any time use the name of the DRIFTERS or any name
similar thereto or any name incorporating THE
DRIFTERS. In the event the employee leaves the employ
of THE DRIFTERS he will not in any way advertise or
attempt to publicize the fact that he has been a member of
a singing group known as THE DRIFTERS and will not
associate his name in any manner with the DRIFTERS;
and he further acknowledges that the name THE
DRIFTERS is a valuable property and any violation of
this paragraph could not be adequately compensated by
money damages and he, therefore, agrees that the
Employer shall be entitled to an injunction in any Court

12 We note, as well, various tax withholding statements (W-2 forms) that were attached to
Mr. Lebish’s reply affidavit in the Circle Artists Litigation, including W-2s for Bill Pinkney
from 1954-1957. These documents appear to show that Bill Pinkney and other singers were
employees of Clyde McPhatter in 1954, and The Drifters, Inc. in 1955-1957. However, they
are not probative as to whether Bill Pinkney relinquished his rights to THE DRIFTERS
mark.
Cancellation No. 92052155
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of competent jurisdiction to enjoin any violation or
threatened violation of this agreement by the Artist.
The employment agreement that Bill Pinkney purportedly signed in 1955 did not
contain this provision.
Thus, even if Bill Pinkney signed an employment agreement with The Drifters,
Inc. in 1955, the evidence does not support a finding that in so doing, he
relinquished ownership rights in the mark THE DRIFTERS or in any way
transferred such rights to The Drifters, Inc.13
4. Did George Treadwell Acquire Rights by Virtue of Being Manager
of the Group, and if so, When did Such Acquisition Occur?
The undercurrent running through this proceeding involves George Treadwell’s
role as the manager of the Group, and whether through that role, he acquired
ownership rights to the trademark THE DRIFTERS. In this regard, Petitioner
contends that when George Treadwell became the manager of the Group, “he clearly
succeeded to all rights in the trademark that date back to 1953.” Pet. Br. at 9, 53
TTABVUE 16. Petitioner further contends that:

13 Petitioner has argued extensively about the relevance of Marshak I and the decisions in
the subsequent contempt proceeding Marshak v. Treadwell, No. 95-CV-3794, slip op.
(D.N.J. Sept. 7, 2007), recon denied, slip op. (D.N.J. Feb. 13, 2008), aff’d in part, rev’d in
part, 595 F.3d 478, 91 USPQ2d 1289 (3d Cir. 2009) (Marshak II), to the issue of Bill
Pinkney’s rights to the mark THE DRIFTERS. Bill Pinkney was not a party to that
litigation and had no opportunity to present evidence. That case was decided on different
facts and evidence than the case before us, in which Bill Pinkney’s successor is a party.
Moreover, Petitioner acknowledges that the decisions are not binding on the Board
(“Petitioner does not argue that the Marshak findings are necessarily binding on this
Board. However, they are instructive ….” Pet. Reply Br. at 15, 63 TTABVUE 19). We have
considered all of the decisions, but find that they do not resolve Petitioner’s claim as to the
rights of Bill Pinkney in this cancellation proceeding. This includes the issue of the effect of
Bill Pinkney’s purported employment contract, which the Marshak II court addressed.
Cancellation No. 92052155
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As the band members came and went, the one element
that always remained the same was the control exercised
over the [G]roup by the family of George Treadwell and
the companies run by the Treadwells including, most
recently, Petitioner. Mr. Treadwell was The Drifters’
manager from 1953 until his death in 1967. After his
death, his wife Faye Treadwell assumed that role and
now Tina Treadwell, their daughter, is the President of
Petitioner. It was and is the Treadwells who controlled
The Drifters, their sound and their business dealings
regardless of the composition of the [G]roup. It was and is
the Treadwells who made the decisions as to who was in
the [G]roup and who was not. It was and is the
Treadwells and the Treadwell-controlled companies,
including Petitioner, who have always owned THE
DRIFTERS Mark. Pet. Br. at 15-16, 53 TTABVUE 8-9.
The July 29, 1958 Joint Affidavit signed by Bill Pinkney, Gerhart Thrasher and
Andrew Thrasher in the Circle Artists Litigation indicates that George Treadwell
was manager of the Group on May 28, 1954.14 The other evidence of record,
discussed above, does not support a finding that he was manager at any time earlier
than 1954. However, becoming the manager of an existing enterprise does not, in
itself, effect a transfer of pre-existing trademark rights to the manager. Here, the
record does not support a finding that George Treadwell (or The Drifters, Inc.,
through George Treadwell) became the owner of the trademark THE DRIFTERS
when he became the manager of the Group in 1954, or that he “succeeded to all
rights in the trademark that date back to 1953.” Indeed, the three singers attested
in their July 1958 Joint Affidavit that the trademark belonged to them from the
inception of the Group in 1953, and they do not state that George Treadwell had

14 The date comes from a contract between “THE DRIFTERS” as “Artist” and Gale Agency,
which bears the signature “Willie Pinkney per G.T.” on behalf of the “Artist.” Exh. R-4, 34
TTABVUE 68. The affiants explain that the notation referred to George Treadwell, “our
manager at that time.” Exh. R-4, 34 TTABVUE 63.
Cancellation No. 92052155
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any rights to the name THE DRIFTERS by virtue of his role as manager of the
Group.
It is possible that, as Petitioner contends, “a manager of a group can retain
trademark ownership rights in the group notwithstanding the fact that he did not
perform with the group where, as here, the manager exercises control over the
group and its performances.” Pet Br. at 29, 53 TTABVUE 36. However, a manager
who did not already own trademark rights in the group’s name does not acquire
those rights, and divest the original singers of any rights they may have in the
group’s name, merely by virtue of the manager’s control over the group and its
performances. Neither of the cases Petitioner cites to support the “retention”
proposition speaks to this question. See, e.g., Rick v. Buchansky, 609 F. Supp. 1522,
1538 (S.D.N.Y. 1985); Marshak I, 58 F.Supp.2d 551 (Exh. P-23, 53 TTABVUE 122).
The record does not clearly show to what extent George Treadwell, as manager
of the Group, exercised any control over Bill Pinkney or the Thrashers. However,
particularly in light of the statements in the 1958 Joint Affidavit that the singers
owned the trademark THE DRIFTERS since 1953, whatever control George
Treadwell exercised over the Group after 1953 does not equate to an appropriation
of Bill Pinkney’s prior ownership rights to THE DRIFTERS mark. Moreover, even if
Petitioner were correct in its contention that singers who leave a group do “not take
with [them] any ownership rights in the group name,” Pet. Br. at 30, 53 TTABVUE
37, that would not be so in the case of an individual, such as Bill Pinkney, who
owned rights prior to his employment and who did not transfer them.
Cancellation No. 92052155
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5. AGVA Arbitration
We note the prior testimony from Bill Pinkney and Charlie Thomas relating to
an arbitration hearing and ruling made by AGVA (the American Guild of Variety
Artists) in the late 1950s or early 1960s. Pinkney Prior Test. at 10, 45 TTABVUE
14; Thomas Prior Test. at 3-5, 41 TTABVUE 7-9. Petitioner disputes that such
arbitration occurred. Pet. Reply Br. at 22, 63 TTABVUE 22. Inasmuch as Petitioner
does not contend that the arbitration was the source of its trademark rights, we do
not give it further consideration.
V. Conclusion
As discussed above, Petitioner has the burden of proving by a preponderance of
the evidence that Petitioner has prior proprietary rights in the term it relies upon,
i.e., THE DRIFTERS, to demonstrate likelihood of confusion as to source. Herbko,
64 USPQ2d at 1378. The record does not support Petitioner’s contention that
Petitioner, through a series of predecessors in interest originating with George
Treadwell in 1953 and The Drifters, Inc. in 1954, acquired rights in THE
DRIFTERS mark that date back to the origins of the Group in 1953, whether by
virtue of any involvement of Petitioner or its predecessor in the original formation
of the singing group, by virtue of any incidents related to the formation of The
Drifters, Inc., by virtue of employment relationships with singers, or by virtue of
Mr. Treadwell’s role as manager of the Group. In this case, Petitioner did not
present sufficient evidence or testimony to establish that George Treadwell had
trademark rights in THE DRIFTERS prior to Respondent’s predecessor in interest.
Cancellation No. 92052155
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Respondent, through its predecessor Bill Pinkney, began to use THE DRIFTERS
mark in 1953, thereby acquiring rights in the mark, and Bill Pinkney and
Respondent have maintained those rights. On this record, Petitioner has failed to
demonstrate, by a preponderance of the evidence, ownership rights in the mark
THE DRIFTERS that are prior to those of Respondent’s predecessor-in-interest, Bill
Pinkney. Therefore, Petitioner has not proven its priority. Because Petitioner has
not established its priority, we need not reach its claim of likelihood of confusion.
See Life Zone, 87 USPQ2d at 1960.
Decision: The petition for cancellation is dismissed.
Respondent is allowed thirty (30) days from the mailing date of this
decision to submit a redacted version of Volume 5 of Maxine Porter’s
Testimony Deposition and exhibits (33 TTABVUE) in which only
information that is truly confidential is deleted within thirty (30) days
from the mailing date of this decision, failing which the current Volume 5
will become part of the public record in its entirety.