Trademark Trial and Appeal Board Electronic Filing System. 39145
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`ESTTA Tracking number: ESTTA50151
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`Filing date3
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`10/24/2005
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91154398
`
`Plaintiff
`Drowning Pool LLC
`Drowning Pool LLC
`§ Serling Rooks & Ferrara, LLP 254 West 54th Street
`New York, NY 10019
`
`J. RODGERS LUNSFORD III
`§ SMITH, GAMBRELL & RUSSELL, LLP
`Correspondence l
`Address
`1 1230 PEACHTREE, ST., N.E., SUITE 3100 PROMENADE II
`ATLANTA, GA 30309-3592
`
`Submission
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`Opposer's Reply Brief
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`Ffler's Name
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`J. Rodgers Lunsford III
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`FileI"S e—l11ail
`Signature
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`RLUNSFORD@SGRLAW.COM, MBEDSOLE@SGRLAW.COM
`/J. Rodgers Lunsford III/’
`
`Attachments
`
`Drowning - Opposer's Reply Brief.pdf ( 30 pages )
`
`

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`IN THE UNITED STATES PATENT & TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL & APPEAL BOARD
`
`DROWNING POOL, LLC,
`A Texas limited liability company,
`
`Opposer,
`
`V.
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`DROWNING POOL, a California
`general partnership consisting of Adam Elesh
`and Brett Smith, both citizens of the United
`States,
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`Applicant.
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`%/€€€€%\)§/\/\/\_/MM
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`Opposition No.: 91154398
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`OPPOSER'S REPLY BRIEF
`
`J. Rodgers Lunsford III
`Coby S. Nixon
`SMITH, GAMBRELL & RUSSELL, LLP
`Promenade 11, Suite 3100
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`1230 Peachtree Street, N.E.
`Atlanta, Georgia 30309-3592
`(404) 815-3500
`
`Counsel for Opposer, DROWNING POOL, LLC
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`TABLE OF CONTENTS
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`I.
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`II.
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`INTRODUCTION .................................................................................. ..1
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`ARGUMENT AND CITATION OF AUTHORITY .......................................... ..1
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`A.
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`OPPOSER OWNS THE DROWNING POOL MARK AND HAS STANDING
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`TO BRING THIS OPPOSITION ........................................................ ..1
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`B.
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`OPPOSER HAS PROVED APPLICANT'S ABANDONMENT OF THE
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`DROWNING POOL MARK BY A PREPONDERANCE OF THE
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`EVIDENCE .................................................................................. ..8
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`1.
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`2.
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`Applicant has Affirmatively Abandoned the Drowning Pool
`Mark Based on Applicant's Announcement and Implementation
`of a Change in Name ............................................................. ..9
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`Applicant Has Presumptively Abandoned the Drowning Pool Mark Based
`on a Lack of Bona Fide Use of the Mark for Various Three
`
`Year Periods ....................................................................... ..16
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`a.
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`b.
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`c.
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`To Maintain Trademark Rights, the Trademark Owner Must
`Demonstrate Deliberate and Continuous Use, Not Sporadic,
`Nominal or Residual Use of the Mark ............................... ..16
`
`Applicant's Rebuttal Evidence of Alleged Use Is Insufficient to
`Avoid 21 Finding of Presumptive Abandonment .................... ..17
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`Applicant Has Not Proved an Intent to Resume Use of the
`Drowning Pool Mark ................................................... ..23
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`C.
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`OPPOSER HAS MADE EXTENSIVE USE OF THE DROWNING POOL
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`MARK ...................................................................................... ..24
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`III.
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`CONCLUSION ..................................................................................... . .25
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`TABLE OF AUTHORITIES
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`CASES
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`Cerveceria Centroamericana, S.A. v. Cerveceria India, Inc.,
`892 F.2d 1021, 13 U.S.P.Q.2d 1307 (Fed. Cir. 1989) ...................................... ..21
`
`Citicorp v. Morley Cos.,
`2004 WL 838401 (T.T.A.B. Sept. 16, 2003) ..................................................... ..7
`
`Gaia Techs, Inc. v. Reconversion Techs., Inc.,
`93 F.3d 774, 39 U.S.P.Q.2d 1826 (Fed. Cir. 1996) ........................................... ..5
`
`Hilana’ Potato Chip Co. v. Culbro Snack Foods, Inc.,
`720 F.2d 981,222 U.S.P.Q. 790 (8th Cir. 1983) ............................... .. 9, 11, 14, 15
`
`Hylo Co. v. Jean Patou, Inc.,
`215 F.2d 282, 103 U.S.P.Q. 52 (C.C.P.A. 1954) ............................................... ..5
`
`IntraWest Fin. Corp. v. Western Nat’l Bank,
`610 F. Supp. 950, 227 U.S.P.Q. 27 (D. Colo. 1985) ............. ..8, 9, 10, 14, 15, 23
`
`Kingsmen v. K-Tel Int’l Ltd.,
`557 F. Supp. 178, 220 U.S.P.Q. 1045 (S.D.N.Y. 1983) ....... ..4, 15, 16, 19, 20, 22
`
`Kusek v. Family Circle, Inc.,
`894 F. Supp. 522 (D. Mass. 1995) ............................................ .. 16, 19, 20, 21, 22
`
`MB Fin. Bank, NA. v. MB Real Estate Servs., L.L. C,
`
`2003 WL 22765022 (N.D. 111. Nov. 21, 2003) .......................... ..9, 11, 12, 14, 15
`
`Marshak v. Treadwell,
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`240 F.3d 184, 57 U.S.P.Q.2d 1764 (3d Cir. 2001) ................... ..15, 16, 19,20, 22
`
`Media Techs. Licensing, LLC v. Upper Deck C0,,
`334 F.3d 1366, 67 U.S.P.Q.2d 1374 (Fed. Cir. 2003) ........................................ .. 7
`
`On-Line Careline, Inc. v. America Online, Inc.,
`229 F.3d 1080, 56 U.S.P.Q.2d 1471 (Fed. Cir. 2000) ......................................... .. 8
`
`Parklane Hosiery Co. v. Shore,
`439 U.S. 322 (1979) ........................................................................................ ..7, 8
`
`Person's C0,, Ltd. v. Christman,
`
`900 F.2d 1565, 14 U.S.P.Q.2d 1477 (Fed. Cir. 1990).
`
`.................................... ..21
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`

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`
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`Procter & Gamble Co. v. Paragon Trade Brands, Inc.,
`917 F. Supp. 305, 38 U.S.P.Q.2d 1678 (D. Del. 1995) ....................................... ..7
`
`Ritchie v. Simpson,
`170 F.3d 1092, 50 U.S.P.Q.2d 1023 (Fed. Cir. 1999) .................................... .. 1, 2
`
`Salem Trust Co v. Federal Nat'l Bank,
`
`11 F. Supp. 105 (D. Mass. 1934) ........................................................................ ..6
`
`Speier Tire Co. v. Tom Benson Chevyway Rental & Leasing, Inc.,
`643 S.W.2d 772 (Tex. App. 1982) .................................................................. ..5-6
`
`Universal Oil Prods. Co v. Rexall Drug & Chem. Co.,
`463 F.2d 1122, 174 U.S.P.Q. 458 (C.C.P.A. 1972) ........................................ ..1, 6
`
`STATUTES AND RULES
`
`15 U.S.C. § 1063 ................................................................................................. ..1
`
`15 U.S.C. § 1127 ..................................................
`
`........................................... .. 16
`
`FED. R. CIV. P. 17(a) ........................................................................................... ..7
`
`OTHER AUTHORITIES
`
`Christopher T. Micheletti, ”Preventing Loss of Trademark Rights.’ Quantitative and
`Qualitative Assessments of ”Use ” and Their Impact on Abandonment
`Determinations, ” 94 TRADEMARK REP. 634 (2004) ............................................ ..21
`
`iii
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`I.
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`INTRODUCTION
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`Applicant contends that Opposer lacks standing to prosecute this Opposition, that
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`Opposer has not demonstrated that it has used the Drowning Pool mark, and that Opposer
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`has not shown by a preponderance of the evidence that Applicant has affirmatively
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`abandoned the Drowning Pool mark or presumptively abandoned the Drowning Pool mark
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`based on non-use for periods of three years. Applicant is wrong on all counts. As a part of
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`a continuing business enterprise, as a result of a formal assignment to it, and as a result of
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`the extensive use of the Drowning Pool mark by its officers and members, Opposer clearly
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`owns the Drowning Pool mark and has standing to bring this Opposition. Further, as a
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`result of a myriad of Applicant's public announcements that it was changing its name, i. e.,
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`changing its service mark, Opposer has shown that Applicant affirrnatively abandoned the
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`Drowning Pool mark. Finally, Opposer has plainly proved that for various periods of three
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`years, Applicant has not used the Drowning Pool mark and that Applicant has failed to
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`rebut the corresponding primafacie presumption of abandonment.
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`II.
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`ARGUMENT AND CITATION OF AUTHORITY
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`A.
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`OPPOSER OWNS THE DROWNING POOL MARK AND HAS
`STANDING TO BRING THIS OPPOSITION.
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`Opposer has operated as a continuous business enterprise since 1995 and has
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`continuously used the Drowning Pool mark throughout that ten-year time-span. Based on
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`that continuous use, Opposer’s standing in the pending Opposition is beyond dispute.‘
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`1 In applying the broad language of 15 U.S.C. § 1063 regarding standing, the Federal
`Circuit has held that "an opposer must meet two judicially—created requirements in order to have
`standing --
`the opposer must have a ‘real interest’ in the proceedings and must have a ‘reasonable’
`basis for his belief of damages." Ritchie v. Simpson, 170 F.3d 1092, 1095, 50 U.S.P.Q.2d 1023,
`1025 (Fed. Cir. 1999). These two requirements have been liberally construed. See Universal Oil
`Prods. Co. v. Rexall Drug & Chem. Co., 463 F.2d 1122, 1124, 174 U.S.P.Q. 458, 459-60 (C.C.P.A.
`1972). Given Opposer‘s extensive continuous use of the mark since 1995 and Applicant's attempt
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`Applicant, however, attempts to devise a standing issue where none exists by mistakenly
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`focusing on the change in Opposer's business form in 2002. Applicant's entire standing
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`argument is based on the false premise that the LLC that was formed at that point was
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`somehow unrelated to the Texas general partnership that had existed before it. This
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`fiindamental error of fact vitiates Applicant's legal argument.
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`The record in the present Opposition clearly demonstrates that Opposer Drowning
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`Pool LLC is simply the current form of the business enterprise that has been in continuous
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`operation since 1995. The record shows that from 1995 until 2002, Stevie Benton, C.J.
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`Pierce, and Mike Luce (and the latters’ predecessors) operated as a Texas general
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`partnership under the Drowning Pool mark (Opp. Ex. 10 to Childress Dep. at Tab 2).2
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`Then, on August 19, 2002, and at the direction of Opposer's manager and accountants
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`(Bassman Dep. 56:23 to 58:5), Opposer's attorneys changed the form of the business
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`enterprise to a limited liability company named Drowning Pool LLC, with Stevie Benton,
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`Mike Luce and Cl. Pierce as its members and officers. (App. Exs. 112 and 113 to Benton
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`Dep. I and Opp. Not. Rel. II).3 It is clear that the intent of all of the parties involved was
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`that the LLC would serve as the new business form for the enterprise that had previously
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`been operated as a general partnership. First, the LLC assumed the exact same name --
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`Drowning Pool -— that the Texas general partnership had used. Second, the two entities
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`to now cash in on the goodwill that Opposer has developed in the mark over those ten years, the
`fact that Opposer meets the liberal interpretation of the two broad Ritchie standards would be
`entirely self—evident if not for Applicant's misplaced focus on Opposer's change in business form.
`2 For further evidence of Opposer’s pre-2002 use of the mark, see Opp. Exs. 1-3 to Mike
`Mongillo Declaration and Opp. Exs. 1-7 to Brady Brock Declaration.
`3 That the management that directed this change assumed that the LLC would continue the
`business enterprise begun by the general partnership is evidenced by Jason Childress's response to
`the question of how long the Drowning Pool general partnership had been a client of his: "I believe
`from the middle of 2002 until it converted to an LLC or they became an LLC in 2002 - sorry, from
`the middle of 2000 to 2002." (Childress Dep. 6:5-7) (emphasis added).
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`were comprised of the same principals. This is evidenced by the LLC's August 19, 2002
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`Unanimous Consent Resolutions, which list Stevie Benton as the President of the LLC,
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`Mike Luce as the Vice President, and C.J. Pierce as the Secretary/Treasurer. (App. Exs.
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`112 and 113 to Benton Dep. I and Opp. Not. Rel. II).4 The same Resolutions also show
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`that the membership interest in the LLC was to be evenly divided between Pierce, Benton,
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`Luce, and the Estate of David Williams.5 Even more convincing are the enterprise's 2000-
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`2003 tax returns. Until 2002, Curo Financial Management, the accounting firm for the
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`continuing business enterprise, filed the enterprise's tax returns identifying the business
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`enterprise as a general partnership. (Opp. Exs. 6 and 7 to Childress Dep.). Beginning in
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`2002 and again in 2003, Curo Financial filed returns for the same business enterprise, only
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`this time designating the enterprise as an LLC. (Opp. Exs. 8 and 9 to Childress Dep.). This
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`fact in and of itself renders Applicant's factual position untenable, and it is telling that
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`Applicant omits any discussion of the band's tax returns from its standing analysis.
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`Following the creation of the LLC in August of 2002, its three named officers --
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`Stevie Benton, Mike Luce, and C.J. Pierce -- used the Drowning Pool mark to identify the
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`4 This intent is also evidenced in Stevie Benton's deposition testimony. When asked why
`he believed he was a member of Drowning Pool Touring LLC, a related entity created at the same
`time as Drowning Pool LLC to handle the "touring side" of Drowning Pool's business, Benton
`responded: "It's Drowning Pool Touring LLC. I'm in Drowning Pool.
`It kind of makes sense to
`me." (Benton Dep. I 107213-14).
`5 Applicant notes that Paul Bassman was originally listed as the founding member of the
`LLC (App. Not. Rel. Ex. 180), but this does not, as Applicant suggests, contradict the basic fact
`that the intent of all of the parties involved was for the LLC to continue the business enterprise of
`the Texas general partnership. Bassman's testimony shows that the inclusion was an oversight, as
`he stated "I would never be a member of Drowning Pool LLC. That's not what I do. I'm a manager
`of the band, not a member of the company." (Bassman Dep. 53:6-8). This oversight was corrected
`by the redemption of membership interest that Bassman signed effective from August 19, 2002, the
`date of the LLC's incorporation. (Opp. Ex. 205 to Pierce Dep.).
`In any event, Bassman, as the
`band's manager (Bassman Dep. 5:5 to 6:22), clearly was not a disinterested interloper, as Applicant
`suggests.
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`services rendered by them as officers of the LLC.6 The three officers first collaborated
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`with singer Rob Zombie to record a song for the "Daredevil" movie soundtrack in late
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`2002. (Benton Dep. I 58:2 — 59:4). Next, the three officers,‘ with new lead singer Jason
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`Jones, recorded a new album, entitled “Desensitized,” that was released in April of 2004.
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`(Benton Dep. I 67:15-24). The three officers (plus Jones) then toured approximately 30-40
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`cities across the United States as part of the "Headbangers Ball" tour before leaving to tour
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`Europe for a month.
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`(Benton Dep.
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`I 68:5-24). The three officers (plus Jones) then
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`returned to complete their U.S. tour, which ended on December 8, 2004, and was followed
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`by a show in Mexico City on January 15, 2005.
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`(Benton Dep.
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`I 69:6—l3). The three
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`officers are currently working on songs for a new album, which the President of the LLC,
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`Stevie Benton, anticipates will be released in late 2005 or early 2006.
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`(Benton Dep. I
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`69:18-24).
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`There is no evidence in the record that any of the above listed tour
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`performances or album releases under the Drowning Pool mark were conducted by anyone
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`other than the officers of Drowning Pool LLC as a continuation of the business enterprise
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`begun in 1995. This continuous use by the officers of the LLC clearly establishes the
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`requisite standing under the liberal standard the Board and the Federal Circuit have
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`adopted.7
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`6 This use, coupled with the prior use of the mark by the general partnership, is sufficient in
`and of itself to establish ownership of the mark for purposes of this Opposition. However,
`Applicant asserts, on pages 20 and 21 of its Trial Brief, that alleged technical deficiencies in
`Opposer's application to register the Drowning Pool mark vitiate the ownership interest that had
`already attached through the continuous use. This argument is not only incorrect as a matter of
`law, it is dubiously misleading, given that the rule to the contrary was explicitly cited in Kingsmen,
`upon which Applicant so heavily relies throughout its Trial Brief. As Kingsmen stated:
`"[I]t is
`settled law that a trademark such as Kingsmen need not be registered. .
`.
`. ‘Usage, not registration,
`confers the right to a trademark.’ ” Kingsmen v. K-Tel Int’! Ltd., 557 F. Supp. 178, 181, 220
`U.S.P.Q. 1045, 1047 (S.D.N.Y. 1983) (citations omitted) (emphasis added).
`7 In addition, Drowning Pool LLC's standing is in no way affected by its temporary
`suspension in 2004. (Opp. Not. Rel. 11). Under Texas law, a corporation that obtains reinstatement
`of its corporate privileges upon paying its delinquent taxes, as Drowning Pool LLC did in 2005
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`3- ..
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`Based on this corrected factual background, Applicant's
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`reliance on Gaia
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`Technologies, Inc. v. Reconversion Technologies, Inc., 93 F.3d 774, 39 U.S.P.Q.2d 1826
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`(Fed. Cir. 1996) is misplaced. Gaia dealt with two unrelated parties who had conducted an
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`arms-length negotiation to transfer intellectual property rights from one to the other, and
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`the Gaia court held that the party bringing the infringement suit did not have the requisite
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`standing because, while the transfer of rights had been contemplated at the time the suit
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`was brought, the transfer had not yet actually occurred.
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`Id. at 779-80, 39 U.S.P.Q.2d at
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`1831. Gala is thus inapposite, given that in the present Opposition Drowning Pool LLC
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`and the Texas general partnership were not, as were the parties in Gaia, unrelated entities
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`dealing in arrns—length transactions, but rather were simply different forms of the same
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`business enterprise. The appropriate analogy is instead set forth in Hylo C0,, Inc. v. Jean
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`Patou, Inc., where the court stated:
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`There has been some question raised as to appellant's right to the mark "Joy
`Suds." However, the record shows that the original Hylo Company, Inc.,
`which was issued the mark "Joy Suds" was dissolved and its business taken
`over by a partnership composed of the persons who owned all of the stock
`in that corporation. Later, the partnership formed a new corporation, Hylo
`Company, Inc.,
`in which they owned all of the stock. Each of the business
`enterprises maintained the use of the mark "Joy Suds.” On these stated
`facts, we agree with the holding of the Examiner of Interferences that the
`present Hylo Company, Inc., is the "present successor to the business, and
`good will associated therewith,
`formerly conducted by the original
`registrant, and, therefore, it must be regarded as the owner of the mark "Joy
`Suds," used therein .
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`Hylo Co. v. Jean Patou, Inc., 215 F.2d 282, 284, 103 U.S.P.Q. 52, 54 (C.C.P.A. 1954)
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`(citations omitted) (emphasis added). Just as the business enterprise in Hylo transfonned
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`from a corporation into a partnership and subsequently into a second corporation without
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`incurring any adverse effects on its standing to protect its trademark rights, Opposer's
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`(Opp. Not. Rel. II), has standing to proceed with a suit commenced before the forfeiture. Speier
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`standing is likewise not affected by the change in business form that occurred in 2002.
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`Moreover, here the LLC was actually formed at the time of filing of the Opposition,
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`whereas in Gaia the transaction was only contemplated.
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`Opposer's standing is also affirmed by Universal Oil Products v. Rexall Drug and
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`Chemical Co., in which the court held that a parent corporation has standing to bring an
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`oppos_ition on behalf of a wholly owned subsidiary, because the parent could reasonably
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`believe that damage to the subsidiary would naturally lead to financial injury to itself.
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`Universal Oil Prods. Co v. Rexall Drug & Chem. C0,, 463 F.2d 1122, 1124, 174 U.S.P.Q.
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`458, 460 (C.C.P.A.
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`1972). Universal Oil Products rebuts Applicant's
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`formalistic
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`contention that Drowning Pool LLC does not have standing by explicitly stating that an
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`enterprise can bring an opposition so long as that enterprise could incur some financial
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`detriment from the adverse consequence in question. Clearly Drowning Pool LLC and its
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`members/officers stand to incur financial detriment if Applicant is allowed to cash in on
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`the goodwill that the LLC has created, and the LLC equally stood to incur the same
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`financial detriment on December 19, 2002, when it filed the current Opposition. Thus,
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`Applicant's focus on the 2004 nunc pro tunc assignment is misplaced, as that assignment
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`did not attempt to create standing retroactively, as Applicant asserts, but rather simply
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`confirmed what had been the case all along.8
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`Finally, important public policy considerations further support the conclusion that
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`Opposer had and has standing to bring and prosecute this Opposition. Even if the Board
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`Tire Co. v. Tom Benson Chevyway Rental & Leasing, Inc., 643 S.W.2d 772, 773 (Tex. App. 1982).
`8 Given that "[t]he law does not require futile or needless formalities," Salem Trust Co v.
`Federal Nat’! Banlg 11 F. Supp. 105, 109 (D. Mass. 1934), the nunc pro tunc assignment was not
`required, but was meant simply to effectuate the result that all parties to the continuing business
`enterprise originally intended:
`the LLC, as the business successor to the general partnership,
`continued the business enterprise and possessed the rights to the Drowning Pool mark.
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`were to find a technical defect in standing, the current matter would not end there. Instead,
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`Opposer,
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`in whatever form the Board deemed proper, would simply file a petition to
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`cancel.
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`holding on standing is not a judgment on the merits and thus does not have any
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`preclusive effect for later adjudication. See Media Techs. Licensing, LLC v. Upper Deck
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`Co., 334 F.3d 1366, 1369-70, 67 U.S.P.Q.2d 1374, 1376 (Fed. Cir. 2003); Procter &
`
`Gamble Co. v. Paragon Trade Brands, Inc., 917 F. Supp. 305, 311, 38 U.S.P.Q.2d 1678,
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`1683 (D. Del. 1995) ("A decision regarding standing is not a decision on the merits.").
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`Given that this case has been fully discovered, nothing new would happen, and the Board
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`would simply have to consider the exact same evidence once more, in its entirety.9 This
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`would do nothing more than delay the inevitable conclusion, thus placing a significant
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`burden on both the Board and the parties, without benefiting any. Such an outcome
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`squarely contradicts the established public policy of promoting judicial economy through
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`the prevention of needless, duplicative litigation. See Parklane Hosiery Co. v. Shore, 439
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`9 On this point, it should be noted that Applicant did not raise standing as an affirmative
`defense in its Answer to the Notice of Opposition, but has instead raised it later in the proceedings
`after extensive discovery had been taken on the substantive issues of the Opposition. Applicant's
`standing contention is therefore not only wrong, it is also untimely. But see Citicorp v. Morley
`Cos., 2004 WL 83 8401 (T.T.A.B. Sept. 16, 2003) (This decision may not be cited as precedent of
`the Trademark Trial & Appeal Board). Interestingly, if the Opposition had been filed in the name
`of the Texas general partnership or in the names of its individual members, as Applicant seems to
`suggest, Applicant would undoubtedly have asserted that such entities lacked standing based on the
`creation of the LLC prior to the filing of the Opposition and the filing of the 2002 and 2003
`business tax returns in the name of the LLC. Simply stated, the LLC is the real party in interest and
`the proper Opposer. Nevertheless, FED. R. CIV. P. l7(a) provides in pertinent part:
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`is not
`it
`No action shall be dismissed on the ground that
`prosecuted in the name of the real party in interest until a
`reasonable time has been allowed after objection for .
`.
`. joinder .
`.
`. of, the real party in interest; and such .
`.
`. joinder .
`.
`. shall
`have the same effect as if the action had been commenced in the
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`name of the real party in interest.
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`Thus, the Board could, on its own motion, simply add the Texas General Partnership and/or its
`individual members (residents of Texas) as parties Opposer (thus combining every "Texas" entity
`that has had rights in the Drowning Pool mark) and proceed to dispose of the Opposition.
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`U.S. 322, 326, 99 S.Ct. 645, 649 (1979). Given these public policy concerns, and the
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`Board’s and the Federal Circuit’s history of liberally interpreting the standing requirement
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`for oppositions, Opposer’s standing in the present Opposition should be beyond dispute.
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`B.
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`OPPOSER HAS PROVED APPLICANT'S ABANDONMENT OF
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`THE DROWNING POOL MARK BY A PREPONDERANCE OF
`THE EVIDENCE
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`Opposer has presented compelling cases of Applicant's affirmative abandonment of
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`the Drowning Pool mark and Applicant's presumptive abandonment of the Drowning Pool
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`mark based on Applicant's failure to make bona fide use of the mark for various three year
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`periods. To escape a finding of affirrnative abandonment, Applicant mislabels its name
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`change as the "formation of a new band," and to escape a finding of presumptive
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`abandonment, Applicant
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`ignores the requirement of ’'bona fide" use set forth in the
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`Lanham Act.
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`As demonstrated in Opposer's Trial Brief,
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`the Lanham Act provides two
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`approaches by which a party may prove abandonment. One approach is to prove
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`affirmative abandonment,
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`z'.e., carry the burden of persuasion that use has been
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`discontinued with an intent not to resume use. See, e. g., Im‘raWest Fin. Corp. v. Western
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`Nat’! Bank, 610 F. Supp. 950, 958, 227 U.S.P.Q. 27, 33 (D. Colo. 1985). The other option
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`is to establish a prima facie case of abandonment by showing proof of nonuse for three
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`consecutive years. On-Line Careline, Inc. v. America Online, Inc., 229 F.3d 1080, 1087,
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`56 U.S.P.Q.2d 1471, 1476 (Fed. Cir. 2000).
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`Opposer has proved Applicant's abandonment of the Drowning Pool mark under
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`either approach. As set forth below, Opposer has shown that Applicant affirmatively
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`abandoned the Drowning Pool mark by unequivocally announcing and thereafter effecting
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`a change in its name. Alternatively, Opposer has shown that Applicant presumptively
`
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`abandoned the Drowning Pool mark by failing to continuously use the mark in a deliberate,
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`continuous and sufficient manner for various three year periods, a presumption that
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`Applicant has not rebutted.
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`1.
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`Applicant has Affirmatively Abandoned the Drowning Pool Mark
`Based on Applicant's Announcement and Implementation of a Change
`in Name
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`The law is clear.
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`If a trademark owner announces its intention to cease use of a
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`mark, as a result of a name change or otherwise, and proceeds to do so, abandomnent
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`results.” That is precisely what has occurred here, and the resulting conclusion is that
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`Applicant has affirrnatively abandoned the Drowning Pool mark.
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`It matters not whether
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`Applicant is in a financial business, is a producer of potato chips, or is in the musical
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`entertaimnent business. The result is the same: affirmative abandonment. MB Fin. Bank,
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`NA. v. MB Real Estate Servs., L.L.C, 2003 WL 22765022 (N.D. 111. Nov. 21, 2003);
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`IntraWest, 610 F. Supp. at 958, 227 U.S.P.Q. at 33 (D. Colo. 1985); Hiland Potato Chip
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`Co., 720 F.2d 981, 983-84, 222 U.S.P.Q. 790, 792-93 (8th Cir. 1983).
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`In IntraWest, the trademark owner announced, explained, and effected a change in
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`its name. First, it announced the name change to the public in newspapers (including The
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`Wall Street Journal), magazines, and direct mail announcements, using unequivocal
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`statements S11Ch as:
`
`0
`
`0
`
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`"The First National Bank of Denver is now IntraWest Bank of Denver";
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`"First of Denver is now lntraWest Bank of Denver"; and
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`"IntraWest Bank of Denver, formerly First of Denver."
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`10 Applicant asserts at page 24 of its Trial Brief that "[T]o prove abandonment, Opposer is
`first required to prove that Applicant did not use its ‘Drowning Pool’ mark for a period of at least
`three years." Applicant is wrong. As IntraWest, Hiland, and MB Financial teach, affirmative
`abandonment can result based on nonuse for periods as short as weeks.
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`

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`Second,
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`it explained the name change by telling its shareholders that the new name
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`"provides the flexibility to describe a number of new services we may choose to offer."
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`Third, it memorialized the name change by publishing a book titled "The Pioneer Western
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`Bank: First of Denver 1860-1980." Based on such a course of conduct, the district court
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`concluded that the trademark owner had affirmatively abandoned use of the old name.
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`Irzz‘raWest, 610 F. Supp. at 951-58, 227 U.S.P.Q. at 28-33.
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`The similarities here are uncanny. First, Applicant announced its name change to
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`the public in newspapers (including The L.A. Times), magazines, flyers and direct mail
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`record listings, using unequivocal statements such as:
`
`'
`
`°
`
`°
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`"[W]hat once was Drowning Pool, is now .
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`.
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`. MUMBLES"”
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`"MUMBLES (formerly Drowning Pool)"12
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`"MUMBLES (FORMERLY DROWNING PooL)"”
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`Second, it explained the name change by telling its fans that it "made an all-instrumental
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`album as a farewell to the old name, then decided to hang together with a new name and a
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`new approach." (Emphasis added).14 Third, it memorialized the name change by entitling
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`_
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`its scrapbook "Drowning Pool 1984-1990."
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`15
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`Just as the trademark owner's course of
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`conduct
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`in IntraWesz‘ constituted an affirmative abandonment of its former name,
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`Applicant's actions here also constitute an affirrnative abandonment of the Drowning Pool
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`mark.
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`” Opp. Ex. 44 to Elesh Dep. I (promotional flyer) (ellipsis in original).
`12 Opp. Ex. 40 to Elesh Dep. I (promotional flyer).
`13 Opp. Exs. 45 and 46 to Elesh Dep. I (promotional flyers).
`14 Opp. Ex. 48 to Elesh Dep. I (article in the L.A. Times).
`15 Opp. Ex. 39 to Elesh Dep. I (Applicant's scrapbook).
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`10
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`

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`
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`To the same effect
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`is Hiland Potato Chip C0,, where the trademark owner
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`communicated to its customers:
`
`0
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`"The Kitty Clover, Cardinal, and Clary House Brand names will be
`eliminated from Missouri and Arkansas.
`[However,
`the] decision to
`introduce a new brandto most of you will make us part of one of the largest
`regional Brands in the United States."
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`
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`In the face of such a public declaration of discontinuance of the Kitty Clover trademark,
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`the trial court found an abandonment of the mark by the trademark owner and the Eighth
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`Circuit affirrned.
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`Likewise, Applicant here communicated to its fans that:
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`'
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`"DROWNING POOL APHONIA MUMBLES: Drowning Pool's third (and
`presumably final) album .
`.
`.
`. The songs are .
`.
`. a fitting swan song .
`.
`.
`.
`However, all is not lost. The three instrumentalists have stayed together but
`16
`have renamed themselves as Mumbles .
`.
`.
`."
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`Such a
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`similar public declaration,
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`especially when combined with Applicant's
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`aforementioned announcements, compels the same conclusion in this Opposition as that
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`reached by the Eighth Circuit in Hilana’.
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`Also to the same effect
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`is the Northern District of Illinois's decision in MB
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`Financial.
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`In MB Financial, the district court affirmed the magistrate judge's finding that
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`the trademark owner had abandoned its "MB" logo mark as a result of its promotional
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`campaign to promote its new "mb" logo mark.
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`Specifically,
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`the trademark owner
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`introduced its new logo to the public by posting on its Internet web site memos entitled:
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`0
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`0
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`"Out With the Old, In With the New"; and
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`"A New Era in Banking."
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`In the same way, Applicant here introduced its new name by issuing statements such as:
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`‘6 Opp. Not. Rel. I, Opp. Resp., Ex. P, Decl. Ex. 5, Doc. AP1630 (magazine excerpt).
`
`ll
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`

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`
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`0 ‘ "Formerly known as DROWNING POOL, this first release under the new
`name [MUMBLES] .
`.
`. .";” and
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`’
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`"DEMO CRITIQUE: Formerly known as Drowning Pool,1Ԥhe guys added a
`part-time vocalist, .
`.
`. and now call themselves Mumbles."
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`As it was in MB Financial, so it should be here: the Board should find that Applicant, by
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`its own public statements, has affirmatively abandoned the Drowning Pool mark.
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`Not only did Applicant announce its intention to cease further use of the Drowning
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`Pool mark, Applicant did exactly that. It no longer toured under the Drowning Pool mark;
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`it no longer appeared publicly under the Drowning Pool mark;19 it no longer recorded new
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`music under the Drowning Pool mark; it no longer released music under the Drowning
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`Pool mark; it no longer produced new physical product under the Drowning Pool mark,
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`either records, tapes, CDs, or DVDS; it no longer produced promotional items under the
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`Drowning Pool mark; and it did not re-release any of its old product under the Drowning
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`Pool mark.2° To avoid the inescapable abandonment conclusion, Applicant relies first on
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`the false assertion that Applicant did not change its name but instead created a new band,
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`and second on the unsupportable argument that sporadic nominal and residual use of the
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`Drowning Pool mark in the form o