Willie B. Pinkneyv.Treadwell’s Drifters, Inc.

Trademark Trial and Appeal Board

Sep 24, 2004

No. 91151984 (T.T.A.B. Sep. 24, 2004)

Mailed: September 24, 2004
csl

UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Willie B. Pinkney
v.
Treadwell’s Drifters, Inc.
_____
Opposition No. 91151984
against Application Serial No. 73807122,
filed June 16, 1989
_____
James M. Slattery of Birch, Stewart, Kolasch & Birch, LLP for
Willie B. Pinkney.
Claude W. Roxborough of Kimmel & Roxborough, LLC for Treadwell’s
Drifters, Inc.
Before Simms, Seeherman and Quinn, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:

Willie B. Pinkney (“opposer”) has opposed the
application of Treadwell’s Drifters, Inc. (“applicant”), a
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91151984
2
New Jersey corporation, to register the mark THE DRIFTERS
for entertainment services in the nature of singing group.1
In his notice of opposition, Mr. Pinkney alleges that
he has previously used and is now using the mark Bill
Pinkney’s Original Drifters for entertainment services in
the nature of live performances by a musical group.
Opposer asserts ownership of an application to register
that service mark (Serial No. 75469250). As grounds for
opposition, opposer asserts that applicant’s mark so
resembles opposer’s previously used mark as to be likely to
cause confusion; that applicant’s mark disparages and
falsely suggests a connection with opposer; that
applicant’s officer falsely stated in the application that
she knew of no one who had a right to use the mark THE
DRIFTERS when in fact she knew that another had rights; and
that applicant is not the owner of the mark sought to be
registered because of opposer’s prior use.
In its answer, applicant has denied the allegations of
the opposition and has asserted that a court has enjoined
the use of the mark Bill Pinkney’s Original Drifters.
The record of this case consists of opposer’s requests
for admission, to which applicant did not respond,

1 Application Serial No. 73807122, filed June 16, 1989, claiming
use and use in commerce by a predecessor since 1953.
Opposition No. 91151984
3
introduced by opposer’s notice of reliance; five
depositions (and related exhibits) taken by opposer; and
the application file. Applicant did not take testimony,
and only opposer filed a brief. No request for an oral
hearing was filed.
In his testimony deposition, Mr. Pinkney stated that
he began performing with THE DRIFTERS in 1953. He
testified that since that date he has continuously
performed with THE DRIFTERS or under the name Bill Pinkney
& The Original Drifters. Pinkney dep., 6, 18. He also
testified concerning an arbitration hearing and ruling made
by the American Guild of Variety Artists. In that ruling,
issued in the late 1950s, it was ruled that Mr. Pinkney
could perform under the mark The Original Drifters. He
testified that, since the date of that ruling, he has
continuously used either The Original Drifters or Bill
Pinkney’s Original Drifters. Pinkney dep., 11.
Exhibits submitted with opposer’s testimony show that
a civil action (68-CVS-2630) was brought by The Drifters,
Inc. against Mr. Pinkney. The record contains a copy of a
barely legible order dated March 9, 1970, wherein the
Superior Court Division of North Carolina, County of
Mecklenburg, enjoined Mr. Pinkney from “using the name ‘The
Drifters’ or ‘The Original Drifters’ or using as his trade
Opposition No. 91151984
4
name any name including the name ‘Drifters’ and from using
Plaintiff’s distinct style and harmony, and from
advertising as his own recordings Plaintiff’s nationally
popular records.” According to his testimony, Mr. Pinkney
stated that as soon as he became aware of the entry of this
judgment, he moved to have it set aside. Opposer has also
made of record a copy of an order dated October 26, 1993,
whereby the same court dissolved the “Default Judgment and
Permanent Injunction filed in this case and dated March 9,
1990 [sic, should be March 9, 1970].” That order also
dismissed the suit brought by The Drifters, Inc.
Mr. Pinkney’s testimony was corroborated by other
witnesses. For example, Mr. Charlie Thomas testified that
he has performed with Mr. Pinkney since the early 1960s
under the name The Original Drifters. According to Mr.
Thomas, Mr. Pinkney owns this mark.
Mr. Charles Cockerham testified that he began
performing with Mr. Pinkney in November 1969 under the
names The Original Drifters and Bill Pinkney’s Original
Drifters, and that they have continuously performed under
those names across the country and overseas. In fact, the
night before his deposition, Mr. Cockerham performed with
Mr. Pinkney under the name Bill Pinkney’s Original Drifters
at the Vocal Hall of Fame.
Opposition No. 91151984
5
Mr. Isiah Council testified that he started performing
with The Original Drifters in November 1971, and that this
name and Bill Pinkney’s Original Drifters have been used
continuously since that time. Mr. Council testified that
Mr. Pinkney is the owner of these names.
Finally, Maxine Porter testified that she began
performing with Mr. Pinkney under the name The Original
Drifters in March 1988, and that, to her knowledge, Mr.
Pinkney has performed under that name since 1959.
Exhibits introduced in connection with these
depositions show photographs, advertisements, newspaper
articles and listings of performances of Mr. Pinkney’s
group. These listings are for the years 1999-2003 under
the name The Original Drifters. Some exhibits also show
advertisements of the group under the name Bill Pinkney &
The Original Drifters. See Exhibits 3, 6, 7 and 9 to Mr.
Cockerham’s deposition. Others show the use of The
Original Drifters. See Exhibits 11, 12, and 15-18. Copies
of performance contracts with Mr. Pinkney were also
submitted. The group is usually identified as The Original
Drifters in these contracts.
In his brief, opposer argues that he has standing by
virtue of his performances as a member of the well-known
singing group THE DRIFTERS since 1953, and by virtue of his
Opposition No. 91151984
6
rights to use The Original Drifters and Bill Pinkney & The
Original Drifters, which he has continuously used since
that date. Also, opposer argues that this date long
precedes the earliest date upon which applicant is entitled
to rely in the absence of evidence--the June 16, 1989
filing date of its application. Opposer argues that his
marks are substantially identical in appearance and
significance to applicant’s mark.
As to the other grounds, opposer argues, 10-11:
It is clear from the testimony taken by the
Opposer that Treadwell’s Drifters, Inc. did make
false statements upon the filing of their [sic]
application on June 16, 1989 in view of the fact
that Ms. Treadwell knew of at least Willie B.
Pinkney who had the right to use the mark, “THE
DRIFTERS.”
The use of the mark “THE DRIFTERS” by the
Applicant will disparage and falsely suggest a
connection with Opposer…
In view of the testimony taken by the
Opposer, it has been established that the
applicant is not the owner of the mark sought to
be registered and, thus, not entitled to the
registration sought in the opposed application.
Our determination of likelihood of confusion under
Section 2(d) of the Act is based on an analysis of all of
the probative facts in evidence that are relevant to the
factors bearing on the likelihood of confusion issue. See
In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003); and In re E.I. du Pont de
Opposition No. 91151984
7
Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
Two key considerations are the marks and the goods or
services. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976)(“The fundamental
inquiry mandated by [Section] 2(d) goes to the cumulative
effect of differences in the essential characteristics of
the goods and differences in the marks.”).
Upon consideration of this record and opposer’s
arguments, we agree that opposer has established by a
preponderance of the evidence both his standing and his
right to prevail under Section 2(d) of the Act. The record
amply demonstrates that opposer has continuously used the
service marks The Original Drifters and Bill Pinkney & The
Original Drifters since long prior to applicant’s filing
date, the earliest date to which applicant is entitled to
rely. See Levi Strauss & Co. v. R. Josephs Sportwear,
Inc., 28 USPQ2d 1464, 1467 (TTAB 1993). There is also
little doubt that The Original Drifters and Bill Pinkney &
The Original Drifters are substantially similar service
marks to THE DRIFTERS, and that, if these marks were used
on the identical entertainment services in the nature of a
singing group, confusion would be likely.
Because opposer is entitled to prevail on the grounds
of priority and likelihood of confusion, we need not
Opposition No. 91151984
8
address opposer’s other claims, such as disparagement and
false suggestion of a connection with opposer.
Decision: The opposition is sustained under Section
2(d) and registration to applicant is refused.