UMG Recordings, Inc.v.Siggy Music, Inc.

Trademark Trial and Appeal Board

Jul 19, 2018

No. 92053622 (T.T.A.B. Jul. 19, 2018)

This Opinion is Not a
Precedent of the TTAB

Hearing: July 12, 2018 Mailed: July 19, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

UMG Recordings, Inc.
v.
Siggy Music, Inc.
_____

Opposition No. 91200616
Cancellation No. 92053622
_____

David Donahue and Jason D. Jones of Fross Zelnick Lehrman & Zissu, P.C,
for UMG Recordings, Inc.
Charles W. Grimes and Luca L. Hickman of Grimes LLC,
for Siggy Music, Inc.
_____

Before Bergsman, Greenbaum and Coggins,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Siggy Music, Inc. (“Defendant”) has registered on the Principal Register the mark
J5 (typed drawing) for “clothing, namely, footwear, shoes, hats, caps, shirts and
jackets,” in Class 25.1

1 Registration No. 3059241, registered February 14, 2006; first Section 8 declaration (6-year)
accepted; Section 9 renewal application granted; second Section 8 (10-year) declaration has
not been accepted. On August 15, 2016, Defendant filed a combined declaration of use and
renewal for the registration. In an Office Action dated January 31, 2017, the USPTO
informed Defendant that the Section 9 renewal application can be granted but that the
Opposition No. 91200616
Cancellation No. 92053622
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Defendant also filed an application to register on the Principal Register the mark
J5 (standard characters)2 for the goods listed below:
Colognes, perfumes and cosmetics, in Class 3;
Jewelry, in Class 14;
Books in the field of entertainment and musical
performances; Calendars; Comic books; Gift cards; Musical
greeting cards; Posters; Printed music books; Story books;
Talking children’s books, in Class 16;
Canvas shopping bags; Carrying cases; Gentlemen’s
handbags; Handbags; Handbags, purses and wallets;
Keycases; Leather bags and wallets; Luggage; Purses, in
Class 18;
Cups and mugs, in Class 21; and
Card games; Musical toys; Parlor games; Party games;
Plush toys; Positionable toy figures; Toy action figures and
accessories therefor; Toy cars; Toy furniture; Toy houses;
Toy model guitars; Toy pianos; Toy record players; Toy
watches, in Class 28.3
UMG Recordings, Inc. (“Plaintiff”) filed a petition to cancel Defendant’s
registration and a notice of opposition to the registration of Defendant’s application.
Plaintiff claims ownership of Registration No. 2881064 for the mark JACKSON 5

Section 8 declaration of use required further explanation regarding Defendant’s nonuse of
the mark. In an Office Action dated June 25, 2018, the USPTO informed Defendant that the
refusal to accept Defendant’s Section 8 declaration was continued and that the registration
will be cancelled if an acceptable explanation for nonuse is not filed by December 25, 2018.
2 Prior to November 2, 2003, “standard character” drawings were known as “typed” drawings.
The mark on a typed drawing had to be typed entirely in capital letters. A typed mark is the
legal equivalent of a standard character mark.
3 Application Serial No. 77880243, filed November 24, 2009, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based upon Defendant’s allegation of a bona fide
intention to use the mark in commerce.
Opposition No. 91200616
Cancellation No. 92053622
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(typed drawing) for “musical sound recordings,” in Class 9,4 as well common law
rights in the marks JACKSON 5, JACKSON 5IVE and J5 “in connection with musical
sound recordings, among other related goods and services.”5
In the cancellation proceeding, Plaintiff petitioned to cancel Defendant’s
registration on the following grounds:
• Defendant’s mark for clothing so resembles Plaintiff’s mark for musical
sound recordings and other goods and services as to be likely to cause
confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d);6
• Defendant’s mark is likely to dilute the distinctiveness of Plaintiff’s marks
under Section 43(c) of the Trademark Act, 15 U.S.C. § 1125(c); and
• Defendant has abandoned the use of its mark in connection with clothing.
• Defendant had not used the mark in commerce on any of the identified
goods prior to filing the statement of use. 7
Defendant, in its Answer, denied the salient allegations in the Petition for
Cancellation. As affirmative defenses, Defendant alleges the following:

4 Registered September 7, 2004; renewed. Plaintiff disclaimed the exclusive right to use the
numeral “5.”
5 Amended Petition for Cancellation ¶1 (38 TTABVUE 6); Notice of Opposition ¶1 (1
TTABVUE 3).
6 Plaintiff filed the Petition for Cancellation on February 11, 2011, prior to the fifth year
anniversary of Defendant’s registration date, February 14, 2011.
7 December 4, 2014 order granting in part Plaintiff’s motion to amend its petition for
cancellation (49 TTABVUE).
Plaintiff also alleged that the registration “is void because the purported assignment of the
Application from [Defendant] to Scruse Investments violated 15 U.S.C. § 1060(a)(1).”
Amended Petition for Cancellation ¶12 (38 TTABVUE 6). Petitioner withdrew this claim in
its brief. Petitioner’s Brief, p. 24 n.5 (134 TTABVUE 26).
Opposition No. 91200616
Cancellation No. 92053622
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• Plaintiff’s claims are barred by laches, estoppel and acquiescence;
• Plaintiff has abandoned the use of JACKSON 5, JACKSON 5IVE and J5 in
connection with any goods or services other that musical sound recordings;
• Plaintiff is contractually estopped from using JACKSON 5, JACKSON
5IVE and J5 in connection with any goods or services other than musical
sound recordings; and
• Plaintiff has abandoned use of JACKSON 5IVE and J5 in connection with
musical sound recordings.8
In the opposition proceeding, Plaintiff opposed the registration of Defendant’s
mark on the following grounds:
• Defendant’s mark for the goods identified in the application so resembles
Plaintiff’s mark for musical sound recordings and other goods and services
as to be likely to cause confusion under Section 2(d) of the Trademark Act,
15 U.S.C. § 1052(d); and
• Defendant’s mark is likely to dilute the distinctiveness of Plaintiff’s marks
under Section 43(c) of the Trademark Act, 15 U.S.C. § 1125(c).9

8 Defendant made other allegations in its Answer which were defenses to Plaintiff’s claims.
Defendant filed a counterclaim to cancel Plaintiff’s pleaded registration on the ground of
fraud, but withdrew it during the prosecution of the proceedings. 10 and 11 TTABVUE in
Opposition No. 91200616.
9 Plaintiff also alleged that Defendant’s attempt to register J5 violates the settlement
agreement between the parties. Because Plaintiff did not pursue this claim in its trial brief,
it is waived. Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1753
(TTAB 2013) (petitioner’s pleaded descriptiveness and geographical descriptiveness claims
not argued in brief deemed waived), aff’d, 565 F. App’x 900 (Fed. Cir. 2014) (mem.); Krause
v. Krause Publ’ns, Inc., 76 USPQ2d 1904, 1906 n.2 (TTAB 2005).
Opposition No. 91200616
Cancellation No. 92053622
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Defendant, in its Answer, denied the salient allegations in the Notice of
Opposition. As affirmative defenses, Defendant alleges the following:
• Plaintiff has abandoned the marks JACKSON 5, JACKSON 5IVE and J5
in connection with any goods or services other than musical sound
recordings;
• Plaintiff is contractually estopped from using THE JACKSON-FIVE in
connection with any goods or services other than musical sound recordings;
and
• Plaintiff abandoned the marks JACKSON 5IVE and J5 in connection with
musical sound recordings.
Proceedings were consolidated in the Board’s May 9, 2012 order.10
I. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), Defendant’s application and registration files.
The parties have stipulated to the following:
• Documents Defendant produced in response to Plaintiff’s request for
production of documents are Defendant’s authentic business records;11

10 9 TTABVUE.
11 103 TTABVUE.
Opposition No. 91200616
Cancellation No. 92053622
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• Documents produced by third parties Bioworld Merchandising, Inc. and
Remrylie Licensing, Inc. pursuant to subpoenas are authentic business
records of those companies;12
• Defendant “gave an exclusive license to J5 Enterprises, LLC … to exploit
the J5 trademark in connection with clothing, footwear, and caps (the
‘Licensed Rights’);13
• “J5 Enterprises engaged Remrylie Licensing, Inc. … to act on J5
Enterprises’ behalf to arrange for the exploitation of the Licensed Rights;14
• Remrylie acting on behalf of J5 Enterprises, added Licensed Rights to an
overall merchandising and distribution agreement which Remrylie has
with Bioworld Merchandising, Inc.;15
• Bioworld, acting on behalf of Remrylie, exercised the Licensed Rights by,
among other things, causing the manufacture of clothing bearing the J5
trademark and distributing such clothing to retailers in the United
States;16
• Documents produced by third party retailers Urban Outfitters, Inc., Macy’s
Inc., Target Corporation, Forever 21, Inc., Hot Topic, Inc., and Pacific

12 106 TTABVUE.
13 Id.
14 Id.
15 Id.
16 Id.
Opposition No. 91200616
Cancellation No. 92053622
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Sunwear of California, Inc. pursuant to subpoenas are authentic business
records of those companies.17
A. Plaintiff’s testimony and evidence.
1. Testimony declaration of Brent LaBarge, Plaintiff’s “Head of the
Trademark Group in the Business and Legal Affairs Department”;18
2. Testimony declaration of Harry Weinger, Vice President of A & R (Artists
and Repertoire) for Universal Music Enterprises, an unincorporated
division of Plaintiff;19
3. Notice of reliance on Plaintiff’s pleaded registration printed from the
USPTO electronic database showing the current status of and title to the
registration;20

17 107 TTABVUE.
18 104 TTABVUE.
19 105 TTABVUE.
20 108 TTABVUE 5-12. Plaintiff also introduced copies of Registration No. 0965808 for the
mark JACKSON 5IVE (stylized) (cancelled) and Registration No. 0965809 for the mark
JACKSON 5 (typed drawing) (expired). 108 TTABVUE 14-21. A cancelled or expired
registration has no probative value other than to show that it once issued, and it is not
entitled to any of the statutory presumptions of Section 7(b) of the Trademark Act. See Action
Temporary Servs. Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir.
1989) (“a cancelled registration does not provide constructive notice of anything.”) (citing
Anderson, Clayton & Co. v. Krier, 478 F.2d 1246, 178 USPQ 46, 47 (CCPA 1973) (recognizing
that whatever benefits a federal registration confers are lost when that registration is
canceled)); Kemi Organics, LLC v. Gupta, 126 USPQ2d 1601, 1606 (TTAB 2018) (“Petitioner’s
cancelled registrations, however, are only evidence that the registrations issued, and are not
evidence of use of the registered marks any time.”). Accordingly, the cancelled and expired
registrations are not probative of Plaintiff’s ownership of the JACKSON 5IVE (stylized) and
JACKSON 5 (typed drawing) marks, standing, or strength and fame of those marks.
Opposition No. 91200616
Cancellation No. 92053622
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4. Notice of reliance on third-party registrations purportedly to show that the
goods and services of the parties are related;21
5. Notice of reliance on a copy from the USPTO Assignment Branch of the
assignment of the application that became Registration No. 3059241
involved herein to Scruse Investments, Inc. from Futurist Entertainment,
Inc.;22
6. Notice of reliance on a copy from the USPTO Assignment Branch of the
assignment of Registration No. 3059241 involved herein to Defendant from
Scruse Investments, Inc.;23
7. Notice of reliance on excerpts from the discovery deposition of Sigmund
Jackson, Defendant’s President;24
8. Notice of reliance on Defendant’s supplemental responses to Document
Request No. 87 stating that “there are no responsive, non-privileged
documents”;25

21 109 TTABVUE 6-29.
22 109 TTABVUE 30-33.
23 109 TTABVUE 35-38.
24 111 TTABVUE 7-96. The portions of the Jackson deposition designated as confidential are
posted on 110 TTABVUE.
25 111 TTABVUE 98-101. Plaintiff also proffered the response to document request No. 88
identifying the responsive documents that have been produced. However, responses to
document production requests are admissible solely for the purpose of showing that a party
has stated that there are no responsive documents. See City Nat’l Bank v. OPGI Mgmt. GP
Inc./Gestion OPGI Inc., 106 USPQ2d 1668, 1674 n.10 (TTAB 2013); ShutEmDown Sports
Inc. v. Lacy, 102 USPQ2d 1036 n.7 (TTAB 2012). Accordingly, the response to document
request No. 88 is given no consideration.
Opposition No. 91200616
Cancellation No. 92053622
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9. Notice of reliance on Defendant’s supplemental response to Interrogatory
No. 28;26
10. Notice of reliance on documents produced by Defendant and stipulated as
authentic;27
11. Notice of reliance on documents produced in response to subpoenas duces
tecum by third parties Bioworld Merchandising, Inc., Remyrlie Licensing,
Inc., Urban Outfitters, Inc., Macy’s Inc., Forever, Inc., Hot Topic, Inc. and
Pacific Sunwear of California, Inc. that have been stipulated as authentic
business records;28
12. Notice of reliance on documents printed from the Internet purportedly to
show the fame of Plaintiff’s marks;29
13. Notice of reliance on printed publications purportedly to show the fame of
Plaintiff’s marks;30 and

26 111 TTABVUE 103-107.
27 113 TTABVUE. The documents designated as confidential are posted on 112 TTABVUE.
Some of the documents posted on 112 and 113 TTABVUE are totally or partially illegible. It
is the responsibility of the party making submissions to the Board via the electronic database
to ensure that the testimony or evidence has, in fact, been properly made of record. See Weider
Publ’ns, LLC v. D&D Beauty Care Co., 109 USPQ2d 1347, 1350-51 (TTAB 2014); Alcatraz
Media, 107 USPQ2d at 1758 n.16 (“the onus is on the party making the submissions to ensure
that, at a minimum, all materials are clearly readable by the adverse party and the Board”);
Hard Rock Cafe Licensing Corp. v. Elsea, 48 USPQ2d 1400, 1404 (TTAB 1998) (“It is
reasonable to assume that it is opposer’s responsibility to review the documents it submits
as evidence to ensure that such submissions meet certain basic requirements, such as that
they are legible and identified as to source and date.”). We have given illegible evidence
probative value to the extent that we can read and understand what it says.
28 115 TTABVUE. The documents designated confidential have been posted on 114
TTABVUE.
29 116 TTABVUE.
30 117 TTABVUE.
Opposition No. 91200616
Cancellation No. 92053622
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14. Rebuttal testimony declaration of Brent LaBarge, “Head of the Trademark
Group in the Business and Legal Affairs Department” of Plaintiff.31
B. Defendant’s testimony and evidence.
1. Notice of reliance on excerpts from the discovery deposition of Sigmund
Jackson purportedly which should in fairness be considered so as to not
make misleading what was offered by Plaintiff;32
2. Testimony declaration of Sigmund Jackson;33 and
3. The cross-examination testimony of Sigmund Jackson.34
II. Background
In the 1960’s, the Jackson brothers Michael, Jermaine, Toriano, Marlon and
Sigmund Jackson began performing together as a musical group under the name the
JACKSON 5.35 Plaintiff’s predecessor-in-interest (jointly referred to as “Plaintiff”)
signed the Jackson brothers to a contract on March 11, 1969.36 The March 1969
recording contract, as well as the 1980 Settlement Agreement and Mutual Release,
discussed more fully below, include provisions regarding the ownership of the marks

31 129 TTABVUE. The portions of the LaBarge rebuttal testimony declaration designated as
confidential are posted on 128 TTABVUE.
32 120 TTABVUE. The portions for the Jackson deposition designated as confidential are
posted on 119 TTABVUE.
33 122 TTABVUE. The portions of the Jackson testimony declaration designated as
confidential are posted on 121 TTABVUE.
34 132 TTABVUE. The portions of the Jackson cross-examination deposition designated as
confidential are posted on 131 TTABVUE.
35 Jackson Testimony Decl. ¶¶2-3 (122 TTABVUE 2); Weinger Testimony Decl. ¶8 (105
TTABVUE 4).
36 Weinger Testimony Decl. ¶7 (105 TTABVUE 4); Jackson Testimony Decl. ¶7 (122
TTABVUE 3).
Opposition No. 91200616
Cancellation No. 92053622
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at issue herein. Both documents were designated as confidential in their entirety.
Fed.R.Civ.P. 26(c)(7) protects confidential, trade secret, and commercially sensitive
information by allowing a party to limit the access to trade secret or other confidential
information or by permitting the information to be revealed only in a designated way.
The Advisory Committee Notes to the 1970 Amendment explain that the Rule does
not provide complete immunity against disclosure; rather, in each case, the need for
privacy must be weighed against the need for disclosure. Therefore, in rendering our
decision, we will not be bound by the parties’ designation. See Trademark Rule
2.116(g), 37 C.F.R. § 2.116(g) (“The Board may treat as not confidential that material
which cannot reasonably be considered confidential, notwithstanding a designation
as such by a party.”); RxD Media, LLC v. IP Application Dev. LLC, 125 USPQ2d 1801,
1804 n.9 and 1806 nn. 13-15, 25 (TTAB 2018) (Board not bound by parties’ improper
designation of material as confidential). Board proceedings are designed to be publicly
available and the improper designation of materials as confidential thwarts that
intention. It is more difficult to make findings of fact, apply the facts to the law, and
write decisions that make sense when the facts may not be discussed. The Board
needs to be able to discuss the evidence of record, unless there is an overriding need
for confidentiality, so that the parties and a reviewing court will know the basis of
the Board’s decisions. The provisions of the recording contract and settlement
agreement regarding the ownership of the trademarks are not confidential. In this
Opposition No. 91200616
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regard, we note that in at least two books that are publicly available, the ownership
of the trademarks were discussed.37
For our purposes, the pertinent parts of the 1969 recording contract are
summarized below:38
• The Jackson brothers granted Plaintiff the exclusive right to their
individual “name[s]” “in any manner and for any purpose reasonably
related to the phonograph record business,” including “commercial tie-ups,
merchandising, endorsements and by-products advertising or publicizing
phonograph records and/or any other products, commodities or services;”39
• The Jackson brothers granted Plaintiff the same rights in the collective
name of the group – THE JACKSON FIVE – as set forth above;40
• Plaintiff owns all right, title and interest in the fictitious character name
THE JACKSON FIVE, as well as any other fictitious character name the
Jackson brothers use;41

37 Sharon Davis, MOTOWN: THE HISTORY, p. 173 (Guiness Books 1988) (117 TTABVUE 38)
(“Gordy [Plaintiff’s principal] also continued to own the name the Jackson 5. The settlement
also provided full usage by Motown of all Michael Jackson and Jackson 5 records recorded
while they were signed to Motown.”); David Bianco, HEAT WAVE: THE MOTOWN FACT
BOOK, p. 151 (Popular Culture, Inc. 1988) (117 TTABVUE 49) (“The lawsuit between Motown
and CBS/Epic concerning the Jacksons is settled at the appellate court level. The name
‘Jackson 5,’ remains the property of Berry Gordy and Motown.”).
38 Jackson Testimony Dep., Exhibit B (131 TTABVUE 194) (confidential).
39 Jackson Testimony Dep. Exhibit B, Section 6 (131 TTABVUE 198).
40 Jackson Testimony Dep. Exhibit B, Section 15(A) (131 TTABVUE 201).
41 Jackson Testimony Dep., Exhibit B, Section 16 (131 TTABVUE 201).
Opposition No. 91200616
Cancellation No. 92053622
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• Plaintiff has the “absolute and unencumbered right to assign, lease, license
or otherwise transfer in whole or in part any or all of [Plaintiff’s] rights
under this agreement, included [sic] but not limited to the products of your
services and the right to require [the Jackson brothers] to render
services.”42
Defendant testified that pursuant to the above-noted agreement, Plaintiff owned all
rights to the “Jackson 5 name,” as well as any group name under which the Jackson
brothers performed.43
Pursuant to the above-noted contract, Plaintiff and the Jackson brothers used the
marks JACKSON 5, JACKSON 5IVE and J5 in connection with musical
performances, sound recordings and merchandise, including t-shirts and board
games.44 When the Jackson brothers’ contract with Plaintiff expired in the mid-
1970’s, the Jackson brothers signed with Epic Records and ceased to perform and
record under the JACKSON 5 name and mark. Nevertheless, Plaintiff continues to
sell recordings under the JACKSON 5 mark that the group had recorded while under
contract with Plaintiff.45
The relationship between Plaintiff and the Jackson brothers did not end well.
There were several lawsuits. Finally, in 1980 Plaintiff and several parties, including
Defendant’s President Sigmund Jackson as one of the Jackson brothers, entered into

42 Jackson Testimony Dep. Exhibit B, Section 17 (131 TTABVUE 201).
43 Jackson Testimony Dep., p. 13 (132 TTABVUE 15).
44 Weinger Testimony Decl. ¶¶12-16 and Exhibits 1 and 2 (105 TTABVUE 4-6 and 14-27).
45 Weinger Testimony Decl. ¶¶17-25 and Exhibits 3 -6 (105 TTABVUE 6-8 and 29-70).
Opposition No. 91200616
Cancellation No. 92053622
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a Settlement Agreement and Mutual Release.46 For our purposes, the pertinent parts
of the Settlement Agreement and Mutual Release are summarized below:47
• Section 4(C)(1) provides that Plaintiff retains the right to “rerelease”
albums or single recordings recorded by the Jackson brothers musical group
or any of the Jackson brothers individually prior to March 11, 1976
pursuant to the March 11, 1969 contract (“Old Product);48
• Sections 5(A) and (B) provide that Plaintiff may release any recording or
master recorded prior to March 11, 1976 by the Jackson brothers musical
group or any of the Jackson brothers individually but not previously
released, including new “Best-of” albums (“New Product);49
• Section 7(A) provides that the Jackson brothers “waive and relinquish their
right to use the name ‘The Jackson-Five’”;50 and
• Section 7(B) provides that Plaintiff “may use the name ‘Jackson-Five’ only
in respect to selling, advertising, or otherwise promoting, licensing,
distributing, or otherwise disposing of the Old Product, and the New
Product.”51

46 Jackson Testimony Decl. ¶¶9-10 (122 TTABVUE 3 and 121 TTABVUE 4).
47 Jackson Testimony Decl. Exhibit 1 (121 TTABVUE 13-28) (confidential).
48 121 TTABVUE 15. For reasons not relevant to this decision, the interests of Jermaine
Jackson differ from the other Jackson brothers with respect to the Settlement Agreement
and Mutual Release.
49 121 TTABVUE 16.
50 121 TTABVUE 17.
51 121 TTABVUE 17.
Opposition No. 91200616
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Defendant concedes that the Settlement Agreement and Mutual Release does not
provide that the Jackson brothers collectively or individually own or have the right
to use the trademark J5 or any other marks.52
III. Standing
Standing is a threshold issue that must be proven by the plaintiff in every inter
partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270,
111 USPQ2d 1058, 1062 (Fed. Cir. 2014); John W. Carson Found. v. Toilets.com Inc.,
94 USPQ2d 1942, 1945 (TTAB 2010). Plaintiff has established its standing by
properly introducing into evidence its pleaded registration. See, e.g., Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); N.Y. Yankees
P’ship v. IET Prods. & Servs., Inc., 114 USPQ2d 1497, 1501 (TTAB 2015). Once a
plaintiff has established its standing for one ground, it has the right to assert any
other grounds. See Poly-America, L.P. v. Illinois Tool Works, Inc., 124 USPQ2d 1508,
1512 (TTAB 2017); Corporacion Habanos SA v. Rodriquez, 99 USPQ2d 1873, 1877
(TTAB 2011) (because petitioners alleged standing as to at least one ground,
primarily geographically deceptively misdescriptive, they may assert any other
legally sufficient claims including those under Section 2(a), the Pan American
Convention and fraud); Enbridge, Inc. v. Excelerate Energy LP, 92 USPQ2d 1537,
1543 n.10 (TTAB 2009).
Defendant argues to the contrary that Plaintiff does not have standing because
the Settlement Agreement and Mutual Release discussed above limits Plaintiff’s

52 Jackson Testimony Dep., pp. 14-15 (132 TTABVUE 16-17).
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rights to THE JACKSON-FIVE trademark in connection with musical sound
recordings and that all other trademarks relating to the Jackson brothers belong to
the Jackson brothers.53 Defendant reasons, in essence, that because the Settlement
Agreement and Mutual Release limits Plaintiff’s rights to the use of THE JACKSON-
FIVE in connection with musical sound recordings, and all of the other marks relating
to the Jackson brothers, including J5, belong to Defendant, Plaintiff is contractually
estopped from bringing this consolidated proceeding.54 Defendant’s arguments are
not well taken. The Settlement Agreement and Mutual Release does not exclusively
appropriate rights to the J5 trademark or any other marks to the benefit of Defendant
or the Jackson brothers collectively or individually. Also, the Settlement Agreement
and Mutual Release does not prohibit Plaintiff from protecting its exclusive right to
use its JACKSON-FIVE trademark for musical sound recordings from other marks
that are likely to cause confusion, nor does it prohibit Plaintiff from using the mark
JACKSON 5 or J5 for musical sound recordings. For example, one of the issues in
these proceedings is whether Defendant’s use of the mark J5 in connection with
clothing and other products so resembles Plaintiff’s registered mark JACKSON 5 for
musical sound recordings as to be likely to cause confusion.

53 Defendant’s Brief, p. 22 (137 TTABVUE 23) (confidential).
54 Defendant’s Brief, pp. 22-29 (137 TTABVUE 23-30)
Opposition No. 91200616
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IV. Nonuse of Defendant’s registered mark J5 as of the deadline for filing a
Statement of Use
“It is clear that an applicant cannot obtain a registration under Section 1 of the
Trademark Act for goods or services upon which it has not used the mark. 15 U.S.C.
§ 1051.” Grand Canyon W. Ranch, LLC v. Hualapai Tribe, 78 USPQ2d 1696, 1698
(TTAB 2006). The Trademark Act provides that “[t]he term ‘use in commerce’ means
the bona fide use of a mark in the ordinary course of trade, and not made merely to
reserve a right in a mark.” 15 U.S.C. § 1127; see also Christian Faith Fellowship
Church v. Adidas AG, 841 F.3d 986, 120 USPQ2d 1640, 1642 (Fed. Cir. 2016)
(providing an overview of the statutory use in commerce requirement); Paramount
Pictures Corp. v. White, 31 USPQ2d 1768, 1773-75 (TTAB 1994) (reviewing the
legislative history), aff’d unpub’d, 108 F.3d 1392 (Fed. Cir. 1997). The Trademark Act
further specifies that a trademark shall be deemed to be in use in commerce when
the goods bearing the mark “are sold or transported in commerce.” 15 U.S.C. § 1127.
Defendant’s registration for the mark J5 for “clothing, namely, footwear, shoes,
hats, caps, shirts and jackets,” was registered on February 14, 2006. However, Mr.
Jackson testified that Defendant launched the J5 clothing collection in August 2010,
that before the August 2010 launch, neither Defendant, nor its predecessors-in-
interest, had ever used the J5 mark in commerce, and that the August 2010 launch
was the first time Defendant, or its predecessors-in-interest, used the J5 mark.55 In
fact, in his discovery deposition, Mr. Jackson testified the t-shirt submitted as a

55 Jackson Testimony Dep., pp. 21 and 24-25 (132 TTABVUE 23 and 26-27).
Opposition No. 91200616
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specimen of use as part of the statement of use underlying the registration “w[as]
never out in the market for sale.”56 Defendant made approximately 15 t-shirts which
were given away.57 In his testimony declaration, Mr. Jackson failed to testify as to
when Defendant first used the J5 mark58 and there is no other evidence
demonstrating Defendant’s use of J5 at or near the time the registration issued.
Nevertheless, Defendant argues that it attempted to market products under the J5
mark.
Q. What was Futurist Entertainment?
A. It was a company I had in Beverly Hills, an office
staff of ten people - - twelve people. It was a company
where we had a record label. We signed artists.
Futurist Records was the record label. We made
merchandising with the company, all kinds of
Jackson 5, J5, Jackson merchandising we put up. It
was sort of a dot-com company at the time, but when
the dot-com fell down, the company fell as well at
that time. But we never did sell any merchandising
from that company.
Q. Were you offering merchandise under those - - the
J5 and Jacksons and Jackson 5 on the Internet?
A. Yes, yes.
* * *
Q. You have no evidence that Futurist Entertainment
ever offered any J5 merchandise for sale, do you?

56 Jackson Discovery Dep., p. 138 (110 TTABVUE 71) (confidential). This testimony was
designated improperly as confidential.
57 Jackson Discovery Dep., p. 139 (110 TTABVUE 72) (confidential). This testimony was
designated improperly as confidential.
58 121 and 122 TTABVUE.
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A. No. We didn’t offer anything for sale. We made it for
sale, but we never sold anything from it.
Q. But you have no evidence that it was even offered for
sale do you?
A. Not that I can think of. I don’t know. I’m not sure.59
Mr. Jackson’s testimony is not persuasive. See Jim Dandy Co. v. Martha White
Foods, Inc., 458 F.2d 1397, 173 USPQ 673, 676 (CCPA 1972) (rejecting proffered
showing of use in commerce based on witness testimony that was “far from clear and
definite”). In addition, we cannot ignore Defendant’s lack of any records or other
documentation showing use of the J5 trademark at or near the time Defendant filed
the statement of use.
In view of the foregoing, we find that Defendant failed to make use of the mark in
commerce prior to the expiration of time (as extended) for filing its statement of use,60
and the petition to cancel Defendant’s registration on that ground is granted.61

59 Jackson Testimony Dep., pp. 24-25 (132 TTABVUE 26-27).
60 Because a Notice of Allowance issued March 12, 2002, and Defendant sought and was
granted five extensions of time to file a statement of use, the deadline for filing a statement
of use was March 12, 2005, five days after Defendant filed such statement. See Embarcadero
Techs. v. Delphix Corp. 117 USPQ2d 1518, 1526 (TTAB 2016); TMEP § 1109.16(a) (Oct. 2017).
Here, the additional five days are of no consequence as we find that Defendant failed to make
use of the mark in commerce at or near the time it filed the statement of use – including
through March 12, 2005. To the extent there is any question with regard to the extra five
days, the Board will deem the pleadings to be amended to conform to the proof where an issue
has been tried by the implied consent of the parties. See Fed. R. Civ. P. 15(b).
61 Defendant’s equitable affirmative defenses of laches, estoppel and acquiescence do not
apply against a claim of nonuse. Cf. Linville v. Rivard, 41 USPQ2d 1731, 1733 n.4 (TTAB
1996), aff’d on other grounds, 133 F.3d 1446, 45 USPQ 1374 (Fed. Cir. 1998) (equitable
defenses do not apply against an abandonment claim).

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V. Abandonment of Defendant’s J5 trademark
Although our determination regarding nonuse suffices to grant the petition to
cancel, given the broader nature of the parties’ dispute, we also reach the issue of
abandonment.
The Trademark Act provides for the cancellation of a registration if the registered
mark has been abandoned. See Section 14 of the Trademark Act, 15 U.S.C. § 1064.
Under Section 45 of the Trademark Act, 15 U.S.C. § 1127, a mark is considered
abandoned when “its use has been discontinued with intent not to resume such use.”
The definition of abandonment is found in this provision, as follows:
A mark shall be deemed to be “abandoned” if either of the
following occurs:
(1) When its use has been discontinued with intent not to
resume such use. Intent not to resume may be inferred
from circumstances. Nonuse for 3 consecutive years shall
be prima facie evidence of abandonment. “Use” of a mark
means the bona fide use of such mark made in the ordinary
course of trade, and not made merely to reserve a right in
a mark.
…
15 U.S.C. § 1127.
Because registrations are presumed valid under the law, the party seeking their
cancellation bears the burden of proving a prima facie case of abandonment by a
preponderance of the evidence. See On-Line Careline Inc. v. Am. Online Inc., 229 F.3d
1080, 56 USPQ2d 1471, 1476 (Fed. Cir. 2000); Cerveceria Centroamericana S.A. v.
Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989); Exec.
Coach Builders, Inc. v. SPV Coach Co., 123 USPQ2d 1175, 1180-81 (TTAB 2016). If
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the petitioner presents a prima facie case of abandonment, the burden of production,
i.e., going forward, then shifts to the trademark holder to rebut the prima facie
showing with evidence. Cerveceria India Inc., 13 USPQ2d at 1311.
Abandonment is a question of fact. See Stock Pot Rest., Inc. v. Stockpot, Inc.,
737 F.2d 1576, 222 USPQ 665, 667 (Fed. Cir. 1984). Thus, any inference of
abandonment must be based on proven fact. Section 45 of the Trademark Act. See
also Cerveceria India Inc., 13 USPQ2d at 1310 (“The protection due the registrant is
provided by requiring that the inference have an adequate foundation in proven fact.
Whenever an inference is based on pure speculation and ‘there is no basis … to infer
nonuse,’ a prima facie case of abandonment must fail.”) (quoting P.A.B. Produits et
Appareils de Beaute v. Satinine Societa in Nome Collettivo di S.A. e. M. Usellini, 570
F.2d 328, 332-33, 196 USPQ 801, 804-05 (CCPA 1978)); Stetson v. Howard D. Wolf &
Assoc’s, 955 F.2d 847, 21 USPQ2d 1783, 1785 (2d Cir. 1992) (A party claiming that a
mark has been abandoned must show “non-use of the mark by the legal owner and
no intent by that person or entity to resume use.”).
Proof of non-use for three consecutive years, however, constitutes prima facie
evidence of abandonment, because it supports an inference of lack of intent to resume
use. Section 45 of the Trademark Act; see also On-line Careline Inc. v. Am. Online
Inc., 56 USPQ2d at 1476 (“The party seeking cancellation establishes a prima facie
case of abandonment by showing proof of nonuse for three consecutive years.”);
Emergency One, Inc. v. Am. FireEagle, Ltd., 228 F.3d 531, 56 USPQ2d 1343, 1346
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(4th Cir. 2000) (“Proof of three consecutive years of non-use thus creates a
presumption — a mandatory inference of intent not to resume use.”).
Defendant’s Registration No. 3059241 for the mark J5 for clothing involved herein
registered on February 14, 2006. As noted in the discussion above, Defendant did not
use that mark in commerce until August 2010 or until 4½ years after registration.
The gap of nonuse between the registration date and Defendant’s August 2010 launch
date for the J5 collection establishes a prima facie case of abandonment based on at
least three consecutive years of nonuse. Thus, the burden of going forward and
rebutting the prima facie showing, with evidence, shifts to Defendant.
In its brief, Defendant points out that Sigmund Jackson testified that Futurist
Entertainment, Inc., Defendant’s predecessor-in-interest, offered certain
merchandise for sale over the Internet under various marks, including J5.62 However,
the testimony on which Defendant relies was discussed and quoted in the previous
section of this decision and is vague, inconclusive and contradictory. So is the
testimony in Mr. Jackson’s discovery deposition:
Q. But has any clothing bearing the J5 trademark that
emanates from one of your companies ever been
offered to the public?
A. I’m not sure.
Q. As –
A. I don’t want to say yes. I’m not really sure.
Q If you needed to find out, what would you do?

62 Defendant’s Brief, p. 39 (138 TTABVUE 40) (citing Jackson Testimony Dep., p. 24 (132
TTABVUE 26)).
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A. As far as any J5 or Jackson 5 merchandise sales to -
-
Q. J5.
A. J5? I’m not sure.63
Defendant also references its efforts to commercialize the J5 trademark in
February 2009, citing an email exchange between representatives of the parties.
However, the email exchange refers to performances by the Jackson brothers, not
licensing J5 clothing.64
In essence, Defendant’s evidence in its defense to the abandonment claim are
unsubstantiated assertions of vaguely defined efforts to market or license J5 products
which are insufficient to establish an intent to resume use. See Yazhong Investing
Ltd. v. Multi-Media Tech Ventures, Ltd., 124 USPQ2d 1526, 1539 (TTAB 2018); see
also Emergency One Inc. v. Am. FireEagle Ltd., 56 USPQ2d at 1348 (“Once the
challenger shows discontinued use, the owner must produce evidence of intent to
resume use ‘within the reasonably foreseeable future.’ … Of course, what is meant by
the ‘reasonably foreseeable future’ will vary depending on the industry and the
particular circumstances of the case … it might be reasonable for a fire truck
manufacturer to spend five or six years considering the reintroduction of a brand,
even though the same passage of time would be unreasonable for a maker of a more
ephemeral product, say potato chips.”). Simply put, there is no credible evidence that

63 Jackson Discovery Dep., p. 136 (111 TTABVUE 69); see also Jackson Discovery Dep., p.
158 (111 TTABVUE 80 (Defendant offered for sale “very little” or “not much at all” in the
way of clothing bearing the mark J5 because the witness was not really sure).
64 Defendant’s Brief, p. 41 (138 TTABVUE 42) (citing Jackson Testimony Dep. Exhibit 30
(112 TTABVUE 101-104)).
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Defendant or its predecessors made any use of the J5 trademark apart from a few
vaguely described and unsuccessful attempts at licensing the mark which fall short
of rebutting the prima facie case of abandonment.
The evidence in this case does not show serious negotiations toward execution of
any license agreement. Defendant’s efforts were neither consistent nor sustained, and
assertions concerning the potential use of the mark at some unknown point in the
future are insufficient to show an intent to resume use, especially where the record
does not show that there ever was use of the mark in commerce on the goods in the
registration. Rivard v. Linville, 133 F.3d 1446, 45 USPQ2d 1374, 1376-77 (Fed. Cir.
1998); Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390,
1396 (Fed. Cir. 1990); Azeka Bldg. Corp. v. Azeka, 122 USPQ2d 1477, 1487-88 (TTAB
2017); Auburn Farms Inc. v. McKee Foods Corp., 51 USPQ2d 1439, 1443-45 (TTAB
1999). See also Emergency One Inc. v. Am. FireEagle Ltd., 56 USPQ2d at 1347-48
(“Requiring the owner to have an intent to use the mark in the reasonably foreseeable
future ensures that valuable trademarks are in fact used in commerce as the Lanham
Act intends, rather than simply hoarded or warehoused.”).
Quite simply, the record is devoid of any evidence showing that Defendant either
used the mark during the statutory period, or had a clear intent to resume (or even
begin) use or a specific and consistent plan to resume (or begin) use on clothing within
the reasonably foreseeable future following February 14, 2006. Accordingly, we find
that Defendant abandoned the J5 mark for clothing and that there has been nonuse
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of the mark from its registration date through August 201065 with no intent to resume
use.66
VI. Likelihood of Confusion
In the event that our decision granting the petition to cancel Respondent’s
registration is reversed on appeal, we include the mark J5 for clothing in our
likelihood of confusion analysis.
A. Priority
Because Plaintiff’s pleaded registration is of record, priority is not at issue with
respect to the mark JACKSON 5 for musical sound recordings identified in its
pleaded registration. Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464,
1469 (TTAB 2016) (citing King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108, 110 (CCPA 1974).
Because Plaintiff has not registered JACKSON 5IVE or J5, Plaintiff must rely on
its common law rights. In its brief, Plaintiff argues that Defendant’s products are
related to Plaintiff’s musical sound recordings.67 In view thereof, we focus our
analysis on those products.68

65 Evidence of subsequent use or intent to resume use after the three-year period of nonuse
does not rebut the presumption of abandonment. See Cerveceria India Inc., 13 USPQ2d at
1313
66 Defendant’s equitable affirmative defenses of laches, estoppel and acquiescence do not
apply against abandonment. Linville v. Rivard, 41 USPQ2d at 1733 n.4.
67 Plaintiff’s Brief, p. 39 (134 TTABVUE 41).
68 As noted above, Plaintiff alleged that it used the JACKSON 5, JACKSON 5IVE and J5 “in
connection with musical sound recordings, among other related goods and services.” Notice
of Opposition ¶1 (1 TTABVUE 3); Petition for Cancellation ¶1 (1 TTABVUE 3).
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Section 2(d) of the Trademark Act permits an opposer or petitioner to file an
opposition or cancellation on the basis of ownership of “a mark or trade name
previously used in the United States … and not abandoned.” Because Plaintiff based
its opposition and cancellation in part on its unregistered JACKSON 5IVE and J5
trademarks, Plaintiff must establish proprietary rights in those pleaded common-law
marks. See Herbko Int’l Inc. v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1375,
1378 (Fed. Cir. 2002) (to establish priority, plaintiff must show proprietary rights in
a mark that produces a likelihood of confusion). These proprietary rights may arise
from prior trademark or service mark use, prior use as a trade name, prior use
analogous to trademark or service mark use, or any other use sufficient to establish
proprietary rights. Id.; see, e.g., Nat’l Cable Television Ass’n Inc. v. Am. Cinema
Editors, Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1429 (Fed. Cir. 1991) (canceling mark
based on petitioner’s prior use of trade name); Knickerbocker Toy Co. v. Faultless
Starch Co., 467 F.2d 501, 175 USPQ 417, 422 (CCPA 1972) (permitting reliance on
copyrighted appearance of stuffed rag doll in opposition and cancellation
proceedings).
Plaintiff’s acquisition of its purported rights in its common law marks must
precede Defendant’s actual or constructive use of its mark. RxD Media, LLC v. IP
Application Dev. LLC, 125 USPQ2d 1801, 1808 (TTAB 2018). In other words, because
unregistered marks are not entitled to the presumptions established under Sections
7(b)-(c) of the Trademark Act, it is Plaintiff’s burden to demonstrate that it owns a
trademark that was used prior to Defendant’s first use or constructive use of its mark
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and not abandoned. Syngenta Crop Prot. Inc. v. Bio-Chek LLC, 90 USPQ2d 112, 1119
(TTAB 2009) (“applicant may rely without further proof upon the filing date of its
application as a ‘constructive use’ date for purposes of priority”); Life Zone Inc. v.
Middleman Grp. Inc., 87 USPQ2d 1953, 1960 (TTAB 2008) (while either party may
rely on the filing date of its application as a “constructive use date” for purposes of
priority, where the opposer’s filing date was later in time it provided the opposer “no
basis for … priority”).
For the application subject to the opposition, because there is no testimony or
evidence regarding Defendant’s use of the mark J5 in connection with the goods listed
in its application, Defendant may rely on the filing date of its application, November
24, 2009, as its priority date. See Larami Corp. v. Talk to Me Programs Inc., 36
USPQ2d 1840, 1845 (TTAB 1995) (parties may rely on constructive use filing dates
for purposes of priority); and Zirco Corp. v. Am. Tel. & Tel. Co., 21 USPQ2d 1542,
1543-45 (TTAB 1991) (constructive use in Section 7(c) of the Trademark Act
establishes nationwide priority rights from the filing date of the application)).
Moreover, as noted above, for purposes of completeness, in the event there is an
appeal and the reviewing court reverses our finding that Defendant’s registration
should be cancelled, we include the filing date of the application underlying
Defendant’s registration, i.e., February 22, 2001, for use of J5 in connection with
clothing.
Pursuant to the contract that the Jackson brothers signed with Plaintiff, Plaintiff
acquired the exclusive right to the Jackson brothers’ individual names, the group
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name THE JACKSON FIVE, and any other fictitious name used by the Jackson
brothers for use in the music business including merchandising products.69 Sigmund
Jackson concedes that Plaintiff owned all rights to the “JACKSON 5 name” and any
group name under which the Jackson brothers performed.70 Harry Weinger, Vice
President of A & R (Artists and Repertoire) for Universal Music Enterprises, an
unincorporated division of Plaintiff, testified that the marks JACKSON 5, JACKSON
5IVE or J5 appeared on all album covers released by Plaintiff for the JACKSON 5
musical group between 1969 and 1975.71
In view of the foregoing, we find that Plaintiff used the marks JACKSON 5IVE
and J5 in connection with musical sound recordings before any date on which
Defendant may rely.
B. Defendant’s abandonment affirmative defense
Because Section 2(d) of the Trademark Act provides that a plaintiff may file an
opposition or cancellation on the basis of ownership of “a mark or trade name
previously used in the United States … and not abandoned,” we now take up

69 Jackson Testimony Dep. Exhibit B, Sections 6, 15(a), and 16 (131 TTABVUE 198, 201); see
also Jackson Discovery Dep., p. 61 (111 TTABVUE 31) (Jackson 5 performances were
authorized by defendant); Jackson Discovery Dep., p. 62 (111 TTABVUE 32) (Plaintiff did
everything during the contract).
70 Jackson Testimony Dep., p. 13 (132 TTABVUE 15). Even though the original recording
contract refers to “THE JACKSON FIVE,” the Jackson testimony deposition refers to
“Jackson 5” and there is no correction in the errata sheet. Nevertheless, because the original
recording contract encompasses all names under which the Jackson brothers performed, it
includes JACKSON FIVE, JACKSON 5IVE, JACKSON 5, and J5.
71 Weinger Testimony Decl. ¶¶10, 12, 14, and 15 (105 TTABVUE 4-5).
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Defendant’s affirmative defense that Plaintiff abandoned its use of JACKSON 5IVE
or J5 in connection with musical sound recordings.
Defendant did not pursue its affirmative defense of abandonment in its brief and,
therefore, it is deemed waived.72 Alcatraz Media, 107 USPQ2d at 1753 (respondent’s
affirmative defense of failure to state a claim not argued in brief deemed waived);
Swiss Watch Int’l Inc. v. Fed’n of the Swiss Watch Indus., 101 USPQ2d 1731, 1734
n.4 (TTAB 2012) (affirmative defenses deemed waived where no mention of them in
trial brief); Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d 1283, 1292 (TTAB 2007)
(where applicant did not argue the affirmative defense of equitable estoppel in her
brief, the affirmative defense was given no consideration).
Nevertheless, the record shows that Plaintiff has continuously used the marks
JACKSON 5IVE and J5 in connection with musical sound recordings. First,
Defendant has conceded that Plaintiff has continuously sold musical recordings
bearing the “JACKSON 5” in the United States over the last 40 years.73 While it is
not clear from the Sigmund Jackson discovery deposition what marks are
encompassed by the “JACKSON 5” mark referred to in the deposition, because
Plaintiff is limited to selling recordings made by the Jackson brothers prior to March
1976,74 and because Plaintiff owned all rights to the “Jackson 5 name,” as well as any
group name under which the Jackson brothers performed,75 we construe the

72 “Statement of Issues,” Defendant’s Brief, pp. 11-12 (138 TTABVUE 12-13).
73 Jackson Discovery Dep., p. 53 (111 TTABVUE 30).
74 121 TTABVUE 15 and 16.
75 Jackson Testimony Dep., p. 13 (132 TTABVUE 15).2
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testimony as referring to any variation of “JACKSON FIVE,” including JACKSON
5IVE and J5.
Second, Harry Weinger testified that Plaintiff has continued to sell musical sound
recordings under the marks JACKSON 5IVE and J5 since 1993.76
C. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973) (“du Pont”) cited in B&B Hardware, Inc. v. Hargis
Indus., Inc., 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015); see also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have
considered each du Pont factor that is relevant or for which there is evidence of record.
See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947
(Fed. Cir. 2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242
(TTAB 2015) (“While we have considered each factor for which we have evidence, we
focus our analysis on those factors we find to be relevant.”). In any likelihood of
confusion analysis, two key considerations are the similarities between the marks
and the similarities between the goods or services. See In re Chatam Int’l Inc., 380
F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental

76 Weinger Testimony Decl. ¶¶18-21 and Exhibits 3-5 (105 TTABVUE 6-8 and 29-63).
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inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”); see also In re
i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The
likelihood of confusion analysis considers all DuPont factors for which there is record
evidence but ‘may focus … on dispositive factors, such as similarity of the marks and
relatedness of the goods’”) (quoting Herbko Int’l, 64 USPQ2d at 1380).
A. The strength and fame of Plaintiff’s mark.

In determining the strength of a mark, we consider both its inherent strength,
based on the nature of the mark itself, and its commercial strength, based on
marketplace recognition of the mark. See In re Chippendales USA, Inc., 622 F.3d
1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured both
by its conceptual strength (distinctiveness) and its marketplace strength (secondary
meaning).”); Top Tobacco, L.P. v. N. Atl. Operating Co., Inc., 101 USPQ2d 1163, 1171-
72 (TTAB 2011) (the strength of a mark is determined by assessing its inherent
strength and its commercial strength); Tea Board of India v. Republic of Tea Inc., 80
USPQ2d 1881, 1899 (TTAB 2006); 2 J. Thomas McCarthy, MCCARTHY ON
TRADEMARKS AND UNFAIR COMPETITION § 11:83 (5th ed. June 2018 update) (“The first
enquiry focuses on the inherent potential of the term at the time of its first use. The
second evaluates the actual customer recognition value of the mark at the time
registration is sought or at the time the mark is asserted in litigation to prevent
another’s use.”). Market strength is the extent to which the relevant public recognizes
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a mark as denoting a single source. Tea Board of India v. Republic of Tea Inc., 80
USPQ2d at 1899.
1. The inherent strength of Plaintiff’s trademark JACKSON 5 and variations
thereof.
The mark JACKSON 5 and variations thereof used in connection with musical
sound recordings thereof are inherently distinctive. As noted above, Plaintiff has
made of record its pleaded JACSKON 5 registration which is not subject to a
counterclaim for cancellation. The registration is “prima facie evidence of the validity
of the registered mark and of the registration of the mark, of the owner’s ownership
of the mark, and of the owner’s exclusive right to use the registered mark in commerce
on or in connection with the goods or services specified in the certificate.” Section 7(b)
of the Trademark Act, 15 U.S.C. § 1057(b).
In assessing the inherent strength of Plaintiff’s marks, we note that there is no
testimony or evidence regarding the number and nature of similar marks in use on
similar goods or services or third-party registrations consisting in whole, or in part,
of the name “Jackson,” the numeral “5” or variations thereof. See Juice Generation,
Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015) (the
extent of third-party use or registrations may indicate that a term carries a
suggestive or descriptive connotation and is weak for that reason).

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2. The commercial strength of Plaintiff’s marks.

Plaintiff alleges that its marks “have become and currently are famous.”77 Fame,
if it exists, plays a dominant role in the likelihood of confusion analysis because
famous marks enjoy a broad scope of protection or exclusivity of use. A famous mark
has extensive public recognition and renown. Bose Corp. v. QSC Audio Prods. Inc.,
293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v. M.C. Becton,
54 USPQ2d at 1897; Kenner Parker Toys, Inc. v. Rose Art Indus. Inc., 963 F.2d 350,
22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
“[L]ikelihood of confusion fame ‘varies along a spectrum from very strong to very
weak.’” Joseph Phelps Vineyards, LLC v. Fairmount Holdings, LLC, 857 F.3d 1323,
122 USPQ2d 1733, 1734 (Fed Cir. 2017) (quoting Palm Bay Imps., Inc. v. Veuve
Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694
(Fed. Cir. 2005) (quoting In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059,
1063 (Fed. Cir. 2003))). Fame may be measured indirectly by the volume of sales and
advertising expenditures for the goods and services identified by the marks at issue,
“the length of time those indicia of commercial awareness have been evident,”
widespread critical assessments and through notice, by independent sources, of the
products identified by the marks, as well as the general reputation of the products
and services. Bose Corp. v. QSC Audio Prods. Inc., 63 USPQ2d at 1305-06, 1309.
Although raw numbers of product sales and advertising expenses sometimes suffice

77 Notice of Opposition ¶1 (1 TTABVUE 3); Amended Petition for Cancellation ¶1 (38
TTABVUE 6).
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to prove fame, raw numbers alone may be misleading. Some context in which to place
raw numbers may be necessary (e.g., the substantiality of the sales or advertising
figures for comparable types of products or services). Id. at 1309.
Finally, because of the extreme deference that we accord a famous mark in terms
of the wide latitude of legal protection it receives, and the dominant role fame plays
in the likelihood of confusion analysis, it is the duty of the party asserting that its
mark is famous to clearly prove it. Coach Servs., Inc. v. Triumph Learning LLC, 668
F.3d 1356, 101 USPQ2d 1713, 1720 (Fed. Cir. 2012), citing Leading Jewelers Guild
Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB 2007).
Sigmund Jackson concedes that the JACKSON 5 mark is famous and, in fact, “is
one of the most famous trademarks in connection with recordings in the United
States.”78 Defendant’s draft marketing materials79 refer to the JACKSON FIVE as “a
world-wide recognised [sic] name,”80 the J5 mark as “famous,”81 and that “[t]he
Jackson 5’s contribution to music and forever lasting legacy can not be abstained.”82
In addition, Plaintiff introduced the following evidence to establish the fame of the
JACKSON 5 marks:

78 Jackson Discovery Dep., pp 51-53 and 52 (111 TTABVUE 28-30).
79 Jackson Discovery Dep., pp. 185-194 (110 TTABVUE 89-91) identifying documents SIGM
617-645 as a mock-up of merchandise.
80 “The J5 Collection Official Merchandise,” 112 TTABVUE 22. This document was
designated improperly as confidential.
81 “The J5 Collection Official Merchandise,” 112 TTABVUE 22. This document was
designated improperly as confidential.
82 “The J5 Collection Official Merchandise,” 112 TTABVUE 18. This document was
designated improperly as confidential.
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• Plaintiff released “somewhere around 12 or 14 albums” under the
agreement with the Jackson brothers which all sold well;83
• “Just about all” of the albums reached gold and platinum status;84
• Since 2000, Plaintiff has released approximately 100 digital and three
dozen physical JACKSON 5 products, including remastered sound
recordings, previously unreleased sound recordings and reissues in a
variety of formats;85
• Plaintiff “curates and maintains an official JACKSON 5 artist site on
Spotify that draws 3,500,000 monthly listeners;86
• Plaintiff has sold tens of millions of albums in the United States under the
JACKSON 5 marks since 1969;87
• Since 2000, twenty-five years after the Jackson brothers’ last recorded
performance, Plaintiff has sold approximately 2.8 million albums, 6.1
million standalone tracks, and 600 million streams under the JACKSON 5
marks, generating nearly $26 million in revenue;88
• JACKSON 5 marks received, and continue to receive, unsolicited media
coverage, including in prominent newspapers and magazines such as

83 Jackson Discovery Dep., p. 32 (110 TTABVUE 17).
84 Jackson Discovery Dep., p. 33 (110 TTABVUE 18).
85 Weinger Decl. ¶20 (105 TTABVUE 7).
86 Weinger Decl. ¶20 (105 TTABVUE 7).
87 Weinger Decl. ¶25 (105 TTABVUE 8).
88 Weinger Decl. ¶25 (105 TTABVUE 8).
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Rolling Stone, Billboard, The Boston Globe, The Chicago Tribune, The
Washington Post, The Dallas Morning News, The South Florida Sun-
Sentinel, The Chicago Sun-Times, and USA Today, as well as in several
books;89
• The JACKSON 5 musical group was inducted into the Rock N’ Roll Hall of
Fame in 1997;90 and
• The JACKSON 5 musical group is featured in the musical Motown The
Musical, currently touring the United States after a run on Broadway from
April 2013 through January 2015.91
Because the evidence regarding the commercial strength of the marks refers to
JACKSON 5IVE or JACKSON 5 but not J5, we find that the marks JACKSON 5IVE
and JACKSON 5 are famous. However, the evidence does not support finding that J5
is famous or commercially strong.
B. The similarity or dissimilarity of the marks.
We now turn to the du Pont likelihood of confusion factor focusing on the similarity
or dissimilarity of the marks in their entireties as to appearance, sound, connotation
and commercial impression. du Pont, 177 USPQ at 567. “Similarity in any one of
these elements may be sufficient to find the marks confusingly similar.” In re Davia,
110 USPQ2d 1810, 1812 (TTAB 2014); accord Krim-Ko Corp. v. Coca-Cola Bottling

89 116 TTABVUE 5-7 and 16-23 and 117 TTABVUE 6-91.
90 Weinger Decl. ¶ 22 (105 TTABVUE 8).
91 Weinger Decl. ¶23 (105 TTABVUE 8).
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Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity
in either form, spelling or sound alone is likely to cause confusion.”) (citation omitted).
“The proper test is not a side-by-side comparison of the marks, but instead
‘whether the marks are sufficiently similar in terms of their commercial impression’
such that persons who encounter the marks would be likely to assume a connection
between the parties.” Coach Servs. , 101 USPQ2d at 1721; see also Midwestern Pet
Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440
(Fed. Cir. 2012); San Fernando Elec. Mfg. Co. v. JFD Elec. Components Corp., 565
F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Rests. Inc. v. Morrison Inc., 23
USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed. Cir. 1992). The
proper focus is on the recollection of the average customer, who retains a general
rather than specific impression of the marks. Geigy Chem. Corp. v. Atlas Chem.
Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971); L’Oreal S.A. v. Marcon,
102 USPQ2d 1434, 1438 (TTAB 2012); Winnebago Indus., Inc. v. Oliver & Winston,
Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ
106, 108 (TTAB 1975). Because the goods at issue are musical sound recordings and,
as discussed below, clothing and other collateral merchandise sold to promote musical
groups, the average customer is an ordinary consumer who listens to music and is a
music fan.92

92 Defendant’s target market is fans of the JACKSON 5. Jackson Discovery Dep., p. 230 (110
or 111 TTABVUE 95).
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Defendant’s mark is J5 in standard character form. One of Plaintiff’s marks is J5
in a logo format reproduced below:93

An example of the J5 logo used on a musical sound recording is reproduced
below:94

Marks presented in standard characters are not limited to any particular
depiction. The rights associated with a mark in standard characters reside in the
wording, and not in any particular display. Thus, Defendant seeks registration of a
mark that might be depicted in any manner, regardless of the font style, size, or color,
and might at any time in the future be displayed in a manner similar to Plaintiff’s J5

93 Weinger Decl. ¶14 (105 TTABVUE 5).
94 Weinger Decl. Exhibit 3 (105 TTABVUE 29).
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mark. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909-11 (Fed. Cir. 2012);
Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259
(Fed. Cir. 2011); Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed.
Cir. 1983) (rejecting argument that for purposes of determining whether two marks
are similar, a mark in a typed drawing (equivalent to modern standard character
format) is distinct from such mark in a logo format; “[b]y presenting its mark in a
typed drawing, a difference cannot legally be asserted by that party” (emphasis in
original)).
Accordingly, the J5 marks are identical.
Plaintiff also asserts the JACKSON 5 mark in its pleaded registration, as well as
a JACKSON 5IVE logo. The JACKSON 5IVE logo is reproduced below:95

An example of the JACKSON 5IVE logo used in connection with musical sound
recordings is reproduced below:96

95 Weinger Decl. ¶15 (105 TTABVUE 5).
96 Weinger Decl. Exhibit 3 (105 TTABVUE 33).
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Mr. Weinger testified that “[f]rom the early days of the JACKSON 5 musical
group’s success, the American public used ‘J5’ as a shorthand way to refer to
[Plaintiff’s] JACKSON 5 mark.”97
[Plaintiff] reinforced the significance of the J5 mark by
featuring “J5” on the costumes worn by its JACKSON 5
musical group during live television performances and by
using the term “J5” on album covers and other
merchandise.98
Likewise, Sigmund Jackson testified that J5 is a reference to the Jackson 5.99
Q. So J5 is the Jackson 5?
A. Yes.
* * *
Q. Do you think consumers recognize J5 to mean the
same thing as the Jackson 5?

97 Weinger Decl. ¶13 (105 TTABVUE 4).
98 Weinger Decl. ¶14 (105 TTABVUE 5).
99 Jackson Discovery Dep., p. 122 (111 TTABVUE 59).
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* * *
A. It all depends. Some fans do and – and some fans
don’t.
Q. But would you agree that there are at least some
fans of the Jackson 5 musical group who would
recognize the band as J5?
* * *
A. Some. Yeah, some.100
Examples of J5 on a costume and on the drum kit are reproduced below:101

During the prosecution of the application involved in the opposition, Sigmund
Jackson submitted a declaration stating that Defendant was authorized to secure a
registration for the mark J5 for the applied for goods “as an indicator of secondary
source or sponsorship of the JACKSON 5 mark associated with the our vocal group,

100 Jackson Discovery Dep., p. 123 (111 TTABVUE 60).
101 Weinger Decl. Exhibit 3 (105 TTABVUE 18 and 23.
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registration number 965,809.”102 Statements made in an application may be used as
evidence against the applicant as an admission against interest. See Daniel J. Quirk
Inc. v. Village Car Co., 120 USPQ2d 1146, 1149 n.14 (TTAB 2016) (statements made
in affidavit filed in connection with respondent’s office action response constitute
admissions against interest and fall within hearsay exception under Fed. R. Evid.
801(d)(2)); Mason Eng’g & Design Corp. v. Mateson Chem. Corp., 225 USPQ 956, 961
n.5 and n.11 (TTAB 1985) (date of first use asserted by opposer in its application may
be considered as admission against interest; in evaluating “Morehouse” type defense,
Board relied on specimens and other materials in applicant’s application as evidence
of the nature of applicant’s services to find that those services were not “substantially
identical” to the goods in applicant’s subsisting registration). In other words,
Defendant told the USPTO that the mark J5 intended to be used on the goods is
associated with Plaintiff’s mark JACKSON 5IVE (stylized) for “entertainment
services rendered by a vocal group.” In re Paramount Pictures Corp., 213 USPQ 1111,
1112 (TTAB 1982) (“[t]he ‘ornamentation’ of a T-shirt can be of a special nature which
is [sic] inherently tells the purchasing public the source of the T-shirt, not the source
of manufacture but the secondary source.”).
The parties agree that consumers refer to Plaintiff’s products as indicating J5
because they will shorten JACKSON 5 or JACKSON 5IVE to J5. “[U]sers of language

102 March 11, 2010 Response to Office Action in Application Serial No. 77880243 (TSDR 3).
Citations to the USPTO TSDR database are to the downloadable .pdf format.
Registration No. 0965808 is for the mark JACKSON 5IVE (stylized) owned by Motown
Record Corporation, Plaintiff’s predecessor-in-interest. 108 TTABVUE 14-15.
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have a universal habit of shortening full names – from haste or laziness or just
economy of words. Examples are: automobile to auto; telephone to phone; necktie to
tie; gasoline service station to gas station.” In re Abcor Dev. Corp., 588 F.2d 511, 200
USPQ 215, 219 (CCPA 1978) (J. Rich, concurring).
[C]ompanies are frequently called by shortened names,
such as Penney’s for J.C. Penney’s, Sears for Sears and
Roebuck (even before it officially changed its name to Sears
alone), Ward’s for Montgomery Ward’s, and Bloomies for
Bloomingdales.
Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1333 (TTAB 1992).
See also In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010)
(affirming Board decision that ML is likely to be perceived as a shortened version of
ML MARK LEES, and noting that “the presence of an additional term in the mark
does not necessarily eliminate the likelihood of confusion if some terms are
identical”); Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ
390, 395 (Fed. Cir. 1983) (“Although the record does not indicate that applicant’s
business is commonly referred to as ‘Giant’, it does indicate that people have called it
by that name, omitting the word ‘Hamburgers’. Thus, in a conversation between two
consumers in opposer’s area about a place of business called ‘Giant’, there likely
would be confusion about which ‘Giant’ they were talking about.”); Fiserve, Inc. v.
Elec. Transaction Sys. Corp., 113 USPQ2d 1913, 1919 (TTAB 2015) (consumers will
perceive PMONEY and an abbreviation of POPMONEY); Big M Inc. v. The U.S. Shoe
Co., 228 USPQ 614, 616 (TTAB 1985) (“we cannot ignore the propensity of consumers
to often shorten trademarks and, in the present case, this would be accomplished by
dropping the ‘T.H.’ in referring to registrant’s stores [T.H. MANDY].”).
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Although Defendant’s mark J5 differs from Plaintiff’s marks JACKSON 5 and
JACKSON 5IVE in appearance and sound, the marks have the same meaning and
engender the same commercial impression. When we factor in the strength of
Plaintiff’s JACKSON 5 and JACKSON 5IVE marks, we find that the similarities
outweigh the dissimilarities.
C. The similarity or dissimilarity and nature of the goods.
We readily acknowledge that Plaintiff’s musical sound recordings are different
than the various products listed in Defendant’s registration and application. The test
here is not, however, whether the goods are likely to be confused. Rather, the test is
whether purchasers are likely to be confused as to source, connection or sponsorship
between the providers of the products. As often stated, it is not necessary that the
goods be similar or competitive, or even that they move in the same channels of trade
to support a holding of likelihood of confusion. It is sufficient that the respective goods
are related in some manner, or that the conditions and activities surrounding the
marketing of the goods are such that they would or could be encountered by the same
persons under circumstances that could, because of the similarities of the marks used
therewith, give rise to the mistaken belief that they originate from or are in some way
associated with the same producer. See Hilson Research Inc. v. Soc’y for Human
Resource Mgmt., 27 USPQ2d 1423 (TTAB 1993); Nat’l Football League v. Jasper
Alliance Corp., 16 USPQ2d 1213, 1215 (TTAB 1990). When viewed in this light, we
find that there is a likelihood that consumers will be confused into mistakenly
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believing that Defendant’s products are somehow sponsored by or associated with
Plaintiff.
Sigmund Jackson testified that it is common for record companies to sell
merchandise featuring group names to promote the sale of records.103 Thus,
Defendant selected the goods in the application because “all of the other groups were
doing the same thing, too, so that’s what I wanted to do.”104 In other words, those
were the types of products that other musicians were exploiting in connection with
their names and trademarks.105 Likewise, Plaintiff sold t-shirts bearing the
JACKSON 5 mark at concerts.106 Also, Plaintiff sold or distributed a JACKSON 5
board game that displayed the J5 logo.107
Plaintiff introduced copies of four third-party registrations, and a set of six third-
party registrations for one mark, to show that the goods of the parties are related.
Third-party registrations based on use in commerce that individually cover a number
of different goods may have probative value to the extent that they serve to suggest
that the listed goods are of a type that may emanate from the same source. In re
Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-1786 (TTAB 1993); In re Mucky
Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d mem. 864 F.2d
149 (Fed. Cir. 1988).

103 Jackson Testimony Dep., pp. 19-20 (132 TTABVUE 21-22).
104 Jackson Discovery Dep., p. 167 (111 TTABVUE 84).
105 Jackson Discovery Dep., pp. 167-68 (111 TTABVUE 84-85).
106 Jackson Discovery Dep., pp. 61-62 (111 TTABVUE 31-32).
107 Jackson Discovery Dep., p. 67-68, 70 (111 TTABVUE 33-35).
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The registrations, with relevant portions of the identifications, are listed below.108
Mark Reg. No. Goods

JUSTIN BIEBER 4396533 Cosmetics
Jewelry
Prerecorded discs, tapes, and downloads
featuring musical performances
Handbags, purses, wallets and luggage
Clothing
Plush toys and musical toys

1D
ONE
DIRECTION
4500147 Sound storage media featuring musical
recordings
Books relating to musical recordings,
performances and groups
Clothing
Plush toys, action figures, toy cars

FLEETWOOD
MAC
3066017 Musical sound recordings
Posters and souvenir books about a music
group, its history and performances
Plastic key chains
Mugs
Clothing
Plush toys

RIHANNNA 4183528
3621108
4190900
3776317
4246201
3730038
Perfume
Musical sound recordings
Jewelry
Posters and tour books
Purses and tote bags
Clothing

Defendant argues that “the goods are sufficiently different such that confusion is
unlikely. Musical sound recordings are completely dissimilar from the clothing

108 109 TTABVUE 6-29.
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identified in [Defendant’s] J5 trademark registration or application.”109 However, the
Board, in another case, stated the following, which is equally appropriate in this case:
The licensing of commercial trademarks for use on
“collateral” products (such as clothing, glassware, linens,
etc.), which are unrelated in nature to those goods or
services on which the marks are normally used, has become
a common practice in recent years. See: General Mills Fun
Group, Inc. v. Tuxedo Monopoly, Inc., 204 USPQ 396, 400
[where we stated that such use is a matter of common
knowledge and “has become a part of everyday life which
we cannot ignore”], affirmed 648 F.2d 1335, 209 USPQ 986,
988 (CCPA 1981) [where the Court of Customs and Patent
Appeals noted that “collateral product” use is a matter of
textbook discussion (see J. Gilson, Trademark Protection
and Practice §5.05[10] (1980) and frequent commentary
(see Grimes and Battersby, The Protection of
Merchandising Properties, 69 T.M. Rep. 431 (1979) and
references cited therein)”].
In re Phillips-Van Heusen Corp., 228 USPQ 949, 951 (TTAB 1986); see also L.C.
Licensing Inc. v. Berman, 86 USPQ2d 1883, 1889 (TTAB 2008) (“It is common
knowledge, and a fact of which we can take judicial notice, that the licensing of
commercial trademarks on ‘collateral products’ has become a part of everyday life.”);
Turner Entm’t Co. v. Nelson, 38 USPQ2d 1942, 1945 (TTAB 1996) (“It is common
knowledge, and in the present case, undisputed that video games, t-shirts, beach
towels, caps and other logo-imprinted products are used as promotional items for a
diverse range of goods and services.”).
“The crux of the issue before us is whether the respective goods sold … under the
marks are sufficiently related in the minds of the common purchasers to result in a

109 Defendant’s Brief, p. 36 (138 TTABVUE 37).
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likelihood of confusion.” Berghoff Rest. Co. v. Washington Forge, Inc., 225 USPQ 603,
608 (TTAB 1985). In this case, Plaintiff’s famous marks JACKSON 5 and JACKSON
5IVE and its other mark J5 are for musical sound recordings while Defendant is using
J5 on clothing and intends to use it on other products all of which may be used in
connection with collateral or merchandising items to promote musical sound
recordings. Consumers will associate such use on collateral or merchandising items
as emanating from the same source as musical sound recordings. See In re Jackson
Int’l Trading Co., 103 USPQ2d 1417, 1419 (TTAB 2012) (“[I]t is commonplace for
performers . . . to expand their product lines to incorporate a diverse set of goods to
capitalize on the renown of their names and brands.”); UMG Recordings, Inc. v.
O’Rourke, 92 USPQ2d 1042, 1049-50 (TTAB 2009) (consumers familiar with “famous
music industry marks” when confronted with a similar mark on clothing items would
think the famous musical mark was being exploited on “collateral products”).
D. Established, likely-to-continue channels of trade and buyers to whom
sales are made.

Defendant’s descriptions of goods have no restrictions or limitations and,
accordingly, we must presume that those goods will move in all normal channels of
trade and be sold to all classes of consumers. See Citigroup Inc. v. Capital City Bank
Grp. Inc., 98 USPQ2d at 1261; CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198,
199 (Fed. Cir. 1983); Paula Payne Prods. Co. v. Johnson Publ’g Co., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973). This includes music fans in general and specifically fans
of the Jackson brothers who purchase Plaintiff’s musical sound recordings. See In re
Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s
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broadly worded identification of ‘furniture’ necessarily encompasses Registrant’s
narrowly identified ‘residential and commercial furniture.’”).
Defendant argues that the goods are sold through different channels of trade,110
but does not provide any evidentiary support for its position and it fails to address
the presumption established by our case law.
In view thereof, we find that the channels of trade factor is neutral, but the classes
of consumers are the same.
E. The nature and extent of any actual confusion.
Defendant contends that because there are no reported instances of actual
confusion over the past decade in which the parties have been concurrently using
their marks, there is no likelihood of confusion.111 The absence of any reported
instances of confusion is meaningful only if the record indicates appreciable and
continuous use by Defendant of its mark for a significant period of time in the same
markets as those served by Plaintiff under its marks. Citigroup Inc. v. Capital City
Bank Grp., Inc., 94 USPQ2d 1645, 1660 (TTAB 2010), aff’d, 637 F.3d 1344, 98
USPQ2d 1253 (Fed. Cir. 2011); Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768,
1774 (TTAB 1992). In other words, for the absence of actual confusion to be probative,
there must have been a reasonable opportunity for confusion to have occurred.
Barbara’s Bakery, 82 USPQ2d at 1287 (the probative value of the absence of actual
confusion depends upon there being a significant opportunity for actual confusion to

110 Defendant’s Brief, p. 36 (138 TTABVUE 37).
111 Defendant’s Brief, p. 36 (138 TTABVUE 37).
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have occurred); Red Carpet Corp. v. Johnstown Am. Enters. Inc., 7 USPQ2d 1404,
1406-1407 (TTAB 1988); Central Soya Co., Inc. v. North Am. Plant Breeders, 212
USPQ 37, 48 (TTAB 1981) (“the absence of actual confusion over a reasonable period
of time might well suggest that the likelihood of confusion is only a remote possibility
with little probability of occurring”).
Because Defendant has not used its mark on the goods listed in its application,
there has not been an opportunity for confusion to have occurred with those goods.
On the other hand, Mr. Jackson testified that Defendant launched the J5 clothing
line in August 2010.112 However, the institution of these proceedings in February
2011 have stymied Defendant’s marketing efforts.113 Nevertheless, it appears that
between July 2012 and April 2014, Defendant through licensees made sales through
retailers, including but not limited to Gap, Inc., Macy’s and Target.114 As best we can
determine, only t-shirts have been offered for sale, sales have been modest and the
geographic marketing area for the products is undefined. There is no testimony or
evidence regarding the advertising for Defendant’s clothing products. However, one
webpage from PACSUN advertises a “JACKSON 5 Tee” from “The J5 Collection” for
$18.99 marked down from $23.00.115 It is unlikely that consumers are going to

112 Jackson Testimony Dep., pp. 21 and 24-25 (132 TTABVUE 23 and 26-27).
113 Defendant’s Brief, p. 19 (138 TTABVUE 20).
114 Jackson Testimony Decl. ¶¶27-39 and Exhibits 2-12 (121 TTABVUE 7-10 and 29-151)
(confidential). Because the sales figures have been designated confidential, they only may
be referred in general terms.
115 Jackson Testimony Decl. Exhibit 11 ¶ (121 TTABVUE 146). Although this exhibit is
designated confidential, there is nothing confidential about it. See Trademark Rule 2.116(g),
37 C.F.R. § 2.116(g) (“The Board may treat as not confidential that material which cannot
reasonably be considered confidential, notwithstanding a designation as such by a party.”).
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register complaints about inexpensive t-shirts from which incidents of confusion
might be identified.
Under these circumstances, we find that the du Pont factor relating to no evidence
of actual confusion is neutral.
F. Analyzing the factors.
Because the marks J5 are identical and Plaintiff’s famous marks JACKSON 5IVE
and JACKSON 5 are similar to Defendant’s mark J5, and the goods are related and
are offered to the same classes of consumers, we find that Defendant’s mark J5 for
clothing and for the goods listed in its application is likely to cause confusion with
Plaintiff’s registered mark JACKSON 5 for musical sound recordings and Plaintiff’s
common law marks JACKSON 5IVE (stylized) and J5 (stylized) for musical sound
recordings.
VII. Laches
Defendant asserted the affirmative defenses of laches, estoppel and acquiescence
to Plaintiff’s likelihood of confusion claim against the cancellation of its registration
for the mark J5 for clothing. Laches is an available equitable defense in a cancellation
proceeding based upon a likelihood of confusion. Nat’l Cable Television Ass’n Inc. v.
Am. Cinema Editors, Inc., 19 USPQ2d at 1431; Ava Ruha Corp. v. Mother’s
Nutritional Ctr., Inc., 113 USPQ2d 1575, 1580 (TTAB 2015). “In order to prevail on
the affirmative defense of laches, Respondent is required ‘to establish that there was
undue or unreasonable delay [by petitioner] in asserting its rights, and prejudice to
[respondent] resulting from the delay.’” Ava Ruha Corp., 113 USPQ2d at 1580
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(quoting Bridgestone/Firestone Research Inc. v. Automobile Club de l’Ouest de la
France, 245 F.3d 1359, 58 USPQ2d 1460, 1462 (Fed. Cir. 2001)).
Defendant argues that Plaintiff’s delay in filing the petition for cancellation on
February 11, 2011 (three days before the fifth anniversary of the registration date)
constitutes undue or unreasonable delay. In the alternative, Defendant argues that
because the parties met in 2009 to discuss Defendant licensing Plaintiff to use the J5
trademark, Plaintiff’s delay in filing the petition to cancel until February 2011
constitutes undue or unreasonable delay.116 With respect to the negotiations between
the parties, Sigmund Jackson testified as follows:
I remember sitting with [Plaintiff] and talking about doing
a whole album and all kinds of merchandising and things
of that nature. I just wanted to make sure that we had
everything. When the album was released, I was going to
release all of these items under the J5 trademark at the
same time with the tour. But we could never get an
agreement together with [Plaintiff], and we could never
come to terms, and it fell apart. And the next thing I knew,
[Plaintiff] instituted these proceedings to try to take away
my rights in the J5 mark.117
Plaintiff argues, inter alia, that between 2009 and continuing through the
February 2011, the parties were negotiating a possible business relationship which
would have resolved the trademark dispute and that, therefore, any delay in filing
the petition for cancellation does not constitute undue or unreasonable delay.118

116 Defendant’s Brief, p. 30 (138 TTABVUE 31).
117 Jackson Testimony Decl. ¶26 (122 TTABVUE 7).
118 Plaintiff’s Brief, p. 22 (140 TTABVUE 24).
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As discussed above, Defendant did not start using its J5 mark until August 2010.
Thus, before Defendant starting using the mark through the time that Plaintiff filed
the petition for cancellation, the parties were negotiating to settle their business and
trademark dispute. Under these circumstances, Plaintiff did not unduly or
unreasonably delay in filing the petition for cancellation. See Kehoe Component Sales,
Inc. v. Best Lighting Prods., Inc., 796 F.3d 576, 115 USPQ2d 1900, (6th Cir. 2015)
(negotiations to resolve the dispute do not count for the running of a laches defense);
Siegerist v. Blaw-Knox Co., 414 F.2d 375, 163 USPQ 74 (8th Cir. 1969) (delay was
excused since “the parties attempted to engage in conciliatory negotiations rather
than rush headlong toward litigation”); Margaret Wendt Found. Holdings, Inc. v.
Roycroft Assocs., 84 USPQ2d 1690 (W.D.N.Y. 2007) (several years of negotiations
rebuts a presumption of laches); E. & J. Gallo Winery v. Gallo Cattle Co., 12 USPQ2d
1657, 1676 (E.D. Cal. 1989), aff’d as modified, 955 F.2d 1327, 21 USPQ2d 1824 (9th
Cir. 1992), opinion amended and superseded, 967 F.2d 1280 (9th Cir. 1992) (delay in
commencement of suit to accommodate settlement negotiations does not count
towards laches).
Moreover, Defendant failed to show that it was prejudiced by Plaintiff’s purported
delay. For example, Defendant did not start using the J5 mark until August 2010 and
thereafter licensees made sales through retailers, including but not limited to Gap,
Inc., Macy’s and Target.119 In fact, Defendant, in its brief, did not argue that it was

119 Jackson Testimony Decl. ¶¶27-39 and Exhibits 2-12 (121 TTABVUE 7-10 and 29-151)
(confidential).
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prejudiced by Plaintiff’s purported delay in filing the petition for cancellation or how
it was prejudiced.
Defendant’s laches affirmative defense is denied.
VIII. Estoppel or acquiescence
Defendant argues that Plaintiff acquiesced to Defendant’s use and registration of
J5 for clothing because Plaintiff failed to object to Defendant’s use and registration of
that mark even though Defendant used the mark since 2009 and that during the
negotiations between the parties Plaintiff never claimed that Plaintiff owned the J5
trademark or that Defendant did not own the J5 trademark.120
“Acquiescence is a type of estoppel that is based on the plaintiff's conduct that
expressly or by clear implication consents to, encourages, or furthers the activities of
the defendant.” Nashin v. Prod. Source Int’l LLC, 107 USPQ2d 1257, 1263 (TTAB
2013) (quoting Panda Travel, Inc. v. Resort Option Enter., Inc., 94 USPQ2d 1789,
1797 fn. 21 (TTAB 2009)); see also Christian Broadcasting Network Inc. v. ABS-CBN
Int’l, 84 USPQ2d 1560, 1573 (TTAB 2007).
While Defendant contends that Plaintiff expressed an interest in licensing the J5
trademark,121 there is no supporting documentation or corroborating witness
testimony. Plaintiff, on the other hand, denies that it sought to license the J5
trademark and asserts that Defendant approached it regarding a license to use album

120 Defendant’s Brief, pp. 30-31 (138 TTABVUE 31-32).
121 Defendant’s Brief, pp. 9, 29-31 (138 TTABVUE 10, 30-32); Jackson Testimony Decl. ¶11
(122 TTABVUE 6).
Opposition No. 91200616
Cancellation No. 92053622
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cover art on various merchandise, including clothing.122 Plaintiff’s documentation
corroborates Mr. LaBarge’s testimony.
In view of the foregoing, Defendant has failed to prove that Plaintiff expressly
consented to, encouraged, or furthered Defendant’s belief that Plaintiff consented to
Defendant’s use and registration of the J5 trademark. Defendant’s affirmative
defense of estoppel or acquiescence is denied.
IX. Dilution
Because we found that Defendant’s mark is likely to cause confusion with
Plaintiff’s marks, we need not address Plaintiff’s dilution claims. See Multisorb Tech.,
Inc. v. Pactiv Corp., 109 USPQ2d 1170, 1171 (TTAB 2013).

Decision: The petition to cancel Registration No. 3059241 is granted on the
grounds that Defendant did not make use of the mark prior to expiration of time for
filing a statement of use, that Defendant abandoned the mark, and that the
registered mark is likely to cause confusion with Plaintiff’s marks.
The Notice of Opposition is sustained on the ground that Defendant’s mark is
likely to cause confusion with Plaintiff’s marks.

122 LaBarge Rebuttal Testimony Decl. ¶¶5-7 and Exhibits 60 and 61 (128 TTABVUE 2-3, 6-
10) (confidential). Although this testimony is designated confidential, there is nothing
confidential about it. See Trademark Rule 2.116(g).