Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA261108
`ESTTA Tracking number:
`01/16/2009
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91160266
`Plaintiff
`Christopher Brooks
`EVAN GOURVITZ
`FROSS ZELNICK LEHRMAN & ZISSU, P.C.
`866 UNITED NATIONS PLAZA
`NEW YORK, NY 10017
`UNITED STATES
`EGourvitz@frosszelnick.com
`Other Motions/Papers
`Evan Gourvitz
`egourvitz@frosszelnick.com,bsolomon@fzlz.com,mortiz@fzlz.com
`/Evan Gourvitz/
`01/16/2009
`Trial brief (F0403181).PDF ( 55 pages )(1861958 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 75/761,159
`Mark: CAB CALLOWAY
`
`Opposer’s Ref: CWBK 04/ 18950
`............................................................. -..x
`
`CHRISTOPHER BROOKS,
`
`Opposer,
`
`.. V_ ..
`
`CREATIVE ARTS BY CALLOWAY, LLC,
`
`Applicant.
`
`............................................................. -..X
`
`Opposition No. 91/ 160,266
`
`TRIAL BRIEF FOR OPPOSER
`
`Barbara A. Solomon
`
`Evan Gourvitz
`
`FROSS ZELNICK LEHRMAN
`
`& ZISSU, P.C.
`866 United Nations Plaza
`
`New York, New York 10017
`
`Attorneys for Opposer
`Christopher Brooks
`
`

`
`TABLE OF CONTENTS
`
`Index of Cases and Other Authorities .......................................................................................... .. iii
`
`1.
`
`INTRODUCTION ................................................................................................................ .. 1
`
`II.
`
`DESCRIPTION OF THE RECORD .................................................................................... ..2
`
`A.
`
`Stipulations of the Parties ............................................................................................ ..2
`
`B.
`
`Opposer’s Evidence ..................................................................................................... ..3
`
`C.
`
`App1icant’s Evidence ................................................................................................... .. 8
`
`III.
`
`STATEMENT OF THE ISSUES .......................................................................................... ..9
`
`IV. RECITATION OF THE FACTS ........................................................................................... ..9
`
`A.
`
`Opposer’s Rights in THE CAB CALLOWAY ORCHESTRA .................................... ..9
`
`1.
`
`2.
`
`3.
`
`Opposer and the Founding of THE CAB CALLOWAY ORCHESTRA ......... ..9
`
`Opposer’s Use of THE CAB CALLOWAY ORCHESTRA
`in Connection With Entertainment Services .................................................. ..10
`
`Opposer’s Use of THE CAB CALLOWAY ORCHESTRA
`in Connection With Recordings .................................................................... .. 12
`
`B.
`
`Applicant’s Application to Register CAB CALLOWAY .......................................... .. 13
`
`1 .
`
`2.
`
`The Applicant ................................................................................................ .. 13
`
`The Application at Issue ................................................................................ .. 13
`
`V.
`
`ARGUMENT ...................................................................................................................... .. 14
`
`A. Opposer Has Standing to Oppose Registration of CAB CALLOWAY ..................... ..14
`
`B.
`
`Opposer’s Rights in THE CAB CALLOWAY ORCHESTRA
`Pre-Date the July 23, 1999 Application Filing Date .................................................. .. 15
`
`1.
`
`Opposer Has Established Prior Use of THE CAB CALLOWAY
`ORCHESTRA as a Common Law Mark ....................................................... .. 16
`
`a.
`
`Opposer Used the Mark THE CAB CALLOWAY ORCHESTRA
`Prior to the Filing of the Application ................................................... .. 16
`
`b.
`
`The Mark THE CAB CALLOWAY ORCHESTRA
`
`is Inherently Distinctive ........................................................................ .. 18
`
`{l'"039652.4.1 ]i
`
`

`
`2.
`
`Opposer Has Established Prior Proprietary Use of
`THE CAB CALLOWAY ORCHESTRA ...................................................... ..21
`
`VI. SUMMARY ........................................................................................................................ ..24
`
`VII. CONCLUSION .................................................................................................................. ..25
`
`(P03955241 }ii
`
`

`
`INDEX OF CASES AND OTHER AUTHORITIES
`
`FEDERAL CASES
`
`Creative Arts by Calloway, LLC v. Brooks, No. 02-7050 2002 WL 31303241
`(2d Cir. Oct. 11, 2002) ........................................................................................................... ..1l
`
`Herbko International, Inc. v. Kappa Books, Inc., 64 U.S.P.Q.2d 1375
`(Fed. Cir. 2002) .................................................................................................... ..15, 22, 23, 24
`
`L & J.G Stickley, Inc. v. Cosser, 81 U.S.P.Q.2d 1956 (T.T.A.B. 2007) ........................... ..22, 23, 24
`
`Lucien Piccard Watch Corp. v. Since I868 Crescent Corp., 165 U.S.P.Q. 459
`(S.D.N.Y. 1970) ..................................................................................................................... ..20
`
`Menashe v. I/Secret Catalogue, Inc., 409 F. Supp.2d 412 (S.D.N.Y. 2006) ............................... ..16
`
`Michael S. Sachs, Inc. v. Cordon Art, B. V, 56 U.S.P.Q.2D 1132 (T.T.A.B. 2000) ...................... ..19
`
`Otto Roth & Co. v. Universal Foods Corp., 209 U.S.P.Q. 40 (C.C.P.A. 1981) ............... .. 15, 22, 24
`
`Remos v. Feierman, Opp. No. 114,000, 2001 WL 388787 (T.T.A.B. Apr. 7, 2001) .................... ..19
`
`Shalom Children ’s Wear Inc. v. In-Wear A/S, 26 U.S.P.Q.2d 1516 (T.T.A.B. 1993) ................... ..23
`
`In re St. Clair Apparel, Inc., Serial No. 75/649,3 82, 2002 WL 122616
`(T.T.A.B. Jan. 29, 2002) ........................................................................................................ ..19
`
`35 Food Corp. v. LFI, Inc, Canc. No. 19,494, 2001 WL 901992 (T.T.A.B. Aug. 9, 2001) ........ ..19
`
`West Florida Seafood Inc. v. Jet Restaurants Inc., 31 U.S.P.Q.2d 1660
`(Fed. Cir. 1994) .......................................................................................................... ..21, 22, 23
`
`15 U.S.C. § 1052 ............................................................................................................... ..2,15, 16
`
`FEDERAL STATUTES
`
`15 U.S.C.§1127 .......................................................................................................................... ..22
`
`15 U.S.C.§-1145 .......................................................................................................................... ..16
`
`37 C.F.R. § 2.122 ................................................................................................................. ..8, 9,13
`
`FEDERAL RULES
`
`TBMP § 309.03 ............................................................................................................... .. 15, 22, 24
`
`TBMP § 704.05 ............................................................................................................................. ..8
`
`TBMP § 704.06 ............................................................................................................................. ..8
`
`{F0396524.]
`
`

`
`TBMP § 704.07 ............................................................................................................................. ..8
`
`TBMP § 704.12 ............................................................................................................................. ..8
`
`TBMP § 704.13 ............................................................................................................................. ..9
`
`MISCELLANEOUS
`
`J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition
`(4th ed. 2008) ............................................................................................................. .. 16, 20, 22
`
`Restatement (Third) of Unfair Competition (1995) ..................................................................... ..20
`
`{F039652-1.I ]iV
`
`

`
`I.
`
`INTRODUCTION
`
`The issues in this case have been narrowed by stipulation of the parties to one question
`
`and one question only: whether Opposer can establish prior rights in THE CAB CALLOWAY
`
`ORCHESTRA. The similarities of the parties’ marks THE CAB CALLOWAY ORCHESTRA
`
`and CAB CALLOWAY is not disputed. The similarity of the Parties’ goods and services is not
`
`disputed. Indeed, the parties recognize and have stipulated that if Opposer satisfies its burden of
`
`proof on the issue of priority, the Opposition must be sustained.
`
`As to the sole question of priority, the evidence is clear, unambiguous, and unchallenged.
`
`Opposer Christopher Brooks (“0pposer” or “Mr. Brooks”) is Cab Cal1oway’s eldest grandson.
`
`With the blessing and approval of his grandfather Mr. Brooks founded a jazz orchestra, THE
`
`CAB CALLOWAY ORCHESTRA, of which he is and always has been the sole proprietor.
`
`Beginning in 1998, and continuously since then, Mr. Brooks has performed under the name THE
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`CAB CALLOWAY ORCHESTRA and has sold musical recordings bearing that name at various
`
`venues and events throughout the U.S. and around the world. The use that Mr. Brooks made of
`
`THE CAB ‘CALLOWAY ORCHESTRA in December 1998, in combination with his subsequent,
`
`deliberate, and continuous use, establishes his rights in THE CAB CALLOWAY ORCHESTRA
`
`as of December 1998. Applicant cannot prove rights that predate those of Opposer.
`
`On July 23, 1999, seven months afier Opposer began his use of THE CAB
`
`CALLOWAY ORCHESTRA, Applicant Creative Arts by Calloway, LLC (“Applicant”), through
`
`its predecessor in interest, filed the intent~to—use application at issue in this action, Serial No.
`
`75/761,159 (the “Application”), to register CAB CALLOWAY for various goods and services,
`
`eventually including “distribution of pre-recorded music, drama, comedy and variety shows on
`
`video tapes, cassettes, digital video and audio discs and CD-ROM,” “production and distribution
`
`of live music concerts, comedy, and dramatic series,” and “production of videotapes and sound
`
`{F0395S24.I )1
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`

`
`recordings, namely, phonograph records, pre-recorded audio tapes, compact discs, Videotapes,
`
`digital audio tapes, compact disc videos, and laser discs.” For purposes of determining the only
`
`issue in this case, priority, the only date on which Applicant does and can rely is the Application
`
`filing date. No evidence and no legal argument can change the established fact that Opposer
`
`acquired rights in THE CAB CALLOWAY ORCHESTRA prior to App1icant’s filing date.
`
`Because the unopposed and undisputed evidence Opposer has introduced shows
`
`Opposer’s use of THE CAB CALLOWAY ORCHESTRA prior to July 23, 1999, judgment
`
`should be entered in his favor, and Applicant’s application must be refused registration under
`
`Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d).
`
`II.
`
`DESCRIPTION OF THE RECORD
`
`A.
`
`Stipulations of the Parties
`
`On July 1, 2008, the parties filed a stipulation (approved by the Board by Order dated
`
`July 3, 2008, TTABVUE # 40):
`
`(1)
`
`That “the sole issue before the Board in this opposition is whether Opposer can
`
`establish rights in THE CAB CALLOWAY ORCHESTRA prior to the filing date of the opposed
`
`application, which is July 23, 1999.” (See Stipulation as to Facts and Agreement to Submit
`
`Opposer’s Testimony by Affidavit, dated and filed July 1, 2008, TTABVUE # 41, at 1.)
`
`(2)
`
`To the facts of this case other than priority.
`
`(See id., Ex. A (“Stip. of Facts”).)
`
`(3)
`
`That Opposer’s testimony could be introduced by affidavit, and to the admission
`
`into evidence without objection of Opposer’s affidavit and the exhibits thereto. (See id., Ex. B.)
`
`(4)
`
`That the testimony of three witnesses for Opposer, Kuni Mikami, Troy Burton,
`
`and Monty Zullo, could be submitted by declaration, and to the admission into evidence without
`
`objection of those witnesses’ declarations and the exhibits thereto.
`
`(See Stipulation and
`
`[F0396524. I }2
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`

`
`Agreement to Submit Testimony of Witnesses Called by Opposer by Declaration, dated and
`
`filed July 1, 2008; TTABVUE # 39.)
`
`B.
`
`1.
`
`0pposer’s Evidence
`
`Opposer submitted testimony and exhibits through a trial affidavit and trial
`
`declarations of the following witnesses:
`
`(A)
`
`Christopher Brooks, the Opposer in this Action and the sole proprietor of
`
`THE CAB CALLOWAY ORCHESTRA, by the Affidavit of Opposer Christopher Brooks to
`
`be Submitted as Trial Testimony dated June 30, 2008, together with the Exhibits referenced therein
`
`and identified below (“Brooks Aff.,” TTABVUE #41 at 8-95):
`
`El_)_(_._l — Opposer’s press packet for THE CAB CALLOWAY ORCHESTRA.
`
`(TTABVUE #41 at 12-59.)
`
`Egg; — Redacted copies of contracts for services by THE CAB CALLOWAY
`
`ORCHESTRA entered into prior to July 23, 1999, and carbon receipts of checks paid
`
`to the members of the Orchestra, dated April 21, 1999, for one such performance.
`
`(TTABVUE #41 at 60—68.)
`
`fl(._3 — March 21, 2001 letter from the manager of the Sleepy Hollow Country Club
`
`noting performances of THE CAB CALLOWAY ORCHESTRA since 1998.
`
`(TTABVUE #41 at 69-70.)
`
`_£,«:_x“.__z_i_ - January 7, 1999 invoice from the Eubie Blake National Jazz Institute & Cultural
`
`Center identifying THE CAB CALLOWAY ORCHESTRA. (TTABVUE #41
`
`at 71-72.)
`
`{F0396524.I )3
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`

`
`_EL.___5_ — Redacted copies of Opposer’s 1998 and 1999 Schedule C tax forms for “Cab
`
`Calloway Orchestras,” the business name used for performing groups including THE
`
`CAB CALLOWAY ORCHESTRA. (TTABVUE #41 at 73-77.)
`
`E2_(_.__6_ — 1999 CD branded with the mark THE CAB CALLOWAY ORCHESTRA.
`
`(TTABVUE #41 at 78-79 [hard copy provided to the Board on July 1, 2008] .)
`
`_E2(j_ - March 20, 1999 invoice showing manufacture of compact discs under the mark
`
`THE CAB CALLOWAY ORCHESTRA; March 30, 1999 production memo for the
`
`recording of CD and video; and April and May 1999 receipts for the sale of CDs bearing
`
`the mark THE CAB CALLOWAY ORCHESTRA.
`
`(TTABVUE #41 at 80-86.)
`
`E_)_(_.__8 - 1999 video bearing the mark THE CAB CALLOWAY ORCHESTRA.
`
`(TTABVUE #41 at 87-88 [hard copy provided to the Board on July 1, 2008].)
`
`B_)_{;_9 - March 20, 1999 invoice showing the manufacture of videotapes under the mark
`
`THE CAB CALLOWAY ORCHESTRA; March 30, 1999 production memo for the
`
`recording of CD and video, and April and May 1999 receipts for the sale of videotapes
`
`bearing the mark THE CAB CALLOWAY ORCHESTRA. (TTABVUE #41 at 89-95.)
`
`(B)
`
`Kuni Makami, a professional jazz pianist who has performed with Mr. Brooks
`
`in THE CAB CALLOWAY ORCHESTRA since 1998, by the Declaration of Kuni Mikami to be
`
`Submitted as Trial Testimony dated June 16, 2008 (“Mikami Decl.,” TTABVUE #39 at 4-6).
`
`(C)
`
`Troy Burton, the Executive Director of the Eubie Blake National Jazz Institute
`
`and Cultural Center, who booked and attended a performance of THE CAB CALLOWAY
`
`ORCHESTRA in 1999 prior to the filing date of the Application, by the Declaration of Troy Burton
`
`to be Submitted as Trial Testimony dated June 18, 2008, together with the Exhibits referenced
`
`therein and identified below (“Burton Decl.,” TTABVUE #39 at 8-13):
`
`{F039fiSZ4.l )4
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`

`
`ELA— Redacted March 2, 1999 contract for the Orchestra’s performance under the
`
`mark THE CAB CALLOWAY ORCHESTRA on May 19, 1999. (TTABVUE #39 at 10-
`
`11.)
`
`_ELB_— May 19, 1999 receipt for Mr. Burton’s purchase of CDs and videos bearing the
`
`mark THE CAB CALLOWAY ORCHESTRA. (TTABVUE #39 at 12-13.)
`
`(D) Monty Zullo, a Broadway producer and entrepreneur who distributed a press
`
`packet concerning THE CAB CALLOWAY ORCHESTRA, attended a performance of THE
`
`CAB CALLOWAY ORCHESTRA, and purchased recordings sold under the mark THE CAB
`
`CALLOWAY ORCHESTRA all in 1999 and all prior to the filing date of the Application, by the
`
`Declaration of Monty Zullo to be Submitted as Trial Testimony dated June 17, 2008, together with
`
`the Exhibit referenced therein and identified below. (“Zullo Dec1.,” TTABVUE #39 at 15-18).
`
`EX_.__A_— May 22, 1999 receipt for Mr. Zu1lo’s purchase of CDs and videos bearing the
`
`mark THE CAB CALLOWAY ORCHESTRA. (TTABVUE #39 at 17—l8.)
`
`Applicant chose not to cross-examine any of Opposer’s witnesses, and offers no evidence
`
`to rebut the facts set forth in their sworn declarations.
`
`2.
`
`On July 1, 2008, Opposer submitted a Notice of Reliance on (i) articles
`
`concerning Opposer’s use of and media coverage of THE CAB CALLOWAY ORCHESTRA, (ii)
`
`admissions by Applicant that the individual Cab Calloway was “an international jazz icon” and
`
`that Opposer had used THE CAB CALLOWAY ORCHESTRA mark in connection with CDs
`
`and videos prior to the Application filing date, and (iii) third-party applications and ensuing
`
`registrations for other ORCHESTRA marks, together with the Exhibits referenced therein and
`
`identified below. (Opposer’s Notice of Reliance, dated and filed July 1, 2008 (“0pp. Notice”),
`
`TTABVUE #38 at 1-93):
`
`IF0396S24.l )5
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`

`
`_E_X_.__1_- October 5, 1984 article from The Boston Globe noting Opposer’s upcoming
`
`concert performance with his grandfather Cab Calloway. (TTABVUE #38 at 6-9.)
`
`L — May 25, 1992 excerpt from Jet magazine noting Opposer’s charity performance
`
`with his grandfather Cab Calloway. (TTABVUE #38 at 10-11.)
`
`B_)_(_._3_ - October 5, 2000 article from The New York Amsterdam News noting the
`
`upcoming performance of Opposer, “Cab’s heir,” and his band THE CAB CALLOWAY
`
`ORCHESTRA at the “Al1Nite Soul Jazzfest.” (TTABVUE #38 at 12-14.)
`
`Efij - October 14, 2000 article from The Washington Times discussing Opposer and his
`
`band THE CAB CALLOWAY ORCHESTRA and noting its upcoming performance at the
`
`opening ceremony for the new Eubie Blake National Jazz Institute and Cultural Center in
`
`Baltimore, Maryland. (TTABVUE #38 at 15-18.)
`
`E_}_{_.__5_ - September 20, 2002 article from The Chicago Tribune discussing Opposer and
`
`his band THE CAB CALLOWAY ORCHESTRA and noting its upcoming performance at
`
`the Prairie Center for the Arts in Schaumburg, Illinois. (TTABVUE #38 at 19-21.)
`
`EX. 6 — November 8, 2002 article from The Boston Globe discussing Opposer and his
`
`band THE CAB CALLOWAY ORCHESTRA and noting its upcoming performance at a
`
`charitable event in Boston, Massachusetts. (TTABVUE #38 at 22-25.)
`
`E_X_.__Z - June 23, 2005 article from The Charleston Gazette discussing Opposer and his
`
`band THE CAB CALLOWAY ORCHESTRA and noting its upcoming performance at the
`
`Charleston Marriott in Charleston, North Carolina. (TTABVUE #38 at 26-27.)
`
`_E_2(_._8 - July 2, 2005 article from The Charleston Gazette noting the performance of
`
`Opposer’s band, the “[n]ationa1ly known act[]” THE CAB CALLOWAY ORCHESTRA,
`
`at the FestiVALL in Charleston, North Carolina. (TTABVUE #38 at 28-30.)
`
`{F0396S24.1 ]6
`
`

`
`_l';‘,)_(_,“_9“ - February 19, 2006 article from The Paducah Sun discussing Opposer and his
`
`band THE CAB CALLOWAY ORCHESTRA and noting its two performances at a
`
`Kentucky college. (TTABVUE #38 at 31-33.)
`
`E_}_(;lQ - November 9, 2007 article from The St. Petersburg Times discussing Opposer
`
`and his band THE CAB CALLOWAY ORCHESTRA, observing that “[t]he orchestra is
`
`in the process of wrapping up a centennial anniversary tour that has taken it around the
`
`globe,” and noting its upcoming performance in Brooksville, Florida. (TTABVUE #38 at
`
`34-36.)
`
`_E_}_{._1_l - April 4, 2008 article from The Albuquerque Journal discussing Opposer and his
`
`band THE CAB CALLOWAY ORCHESTRA, describing THE CAB CALLOWAY
`
`ORCHESTRA as “world famous” and “a big time jazz band” that will “give the kids an
`
`experience of live music and big band jazz because it’s kind of a lost art,” and noting its
`
`upcoming performance at a high school in New Mexico. (TTABVUE #38 at 37-39.)
`
`EX. 12 - Applicant’s July 8, 2005 Response to Opposer’s Statement of Undisputed
`
`Material Facts in connection with its opposition to Opposer’s motion for summary
`
`judgment in this proceeding, admitting (at 111] 9-11) that Opposer sold CD3 and videos
`
`bearing the mark THE CAB CALLOWAY ORCHESTRA prior to the July 23, 1999
`
`Application filing date. (TTABVUE #38 at 40-54.)
`
`gag - Applicant’s June 24, 2005 Declaration of Cabella Calloway Langsam in
`
`Support of Applicant’s Opposition to Opposer’s Motion for Summary Judgment in this
`
`proceeding, admitting (at ‘H11 2-7) Cab CaIloway’s fame, and that he was
`
`an “international jazz icon.” (TTABVUE #38 at 55-61.)
`
`{F0396524.l )7
`
`

`
`EX. 14 - A TARR printout of Reg. No. 2,459,428, for COUNT BASIE ORCHESTRA,
`
`together with a TARR printout of the prosecution history for the application (Serial No.
`
`75/906,651), and the application, office action, and response. (TTABVUE #38 at 62-76.)
`
`EX. 15 4 A TARR printout of Reg. No. 2,438,337 for TOMMY DORSEY ORCHESTRA,
`
`together with a TARR printout of the prosecution history for the application (Serial No.
`
`75/890,818), and the application, office actions/amendments, and response. (TTABVUE
`
`#38 at 77-93.)
`
`C.
`
`Applicant’s Evidence
`
`Applicant’s evidence consists solely of a Notice of Reliance on (i) the parties’ stipulation
`
`of facts (identical to (A)(2) above), and (ii) certain excerpts from Mr. Brooks’ legal memoranda
`
`submitted in prior litigation between the parties in the U.S. District Court for the Southern
`
`District of New York and the U.S. Court of Appeals for the Second Circuit, which Applicant
`
`claims serve as admissions against interest. (See Applicant’s Notice of Reliance, dated and filed
`
`October 6, 2008 (“App. Notice”), TTABVUE #45.)
`
`The “admissions” Applicant seeks to introduce and rely upon should not be considered
`
`by the Board. While Applicant cites in its Notice various provisions from the Trademark Rules
`
`of Practice and Trademark Trial and Appeal Board Manual of Procedure in support of the
`
`Board’s consideration of these excerpts (App. Notice 1] 2), most of those provisions relate to the
`
`submission of exhibits to pleadings or briefs (37 C.F.R. § 2.122(0), TBMP § 704.05), statements
`
`in pleadings (TBMP § 704.06(a)), official records (TBMP § 704.07), or “adjudicative facts” of
`
`which the Board might take judicial notice (TBMP § 704.12). The statements in the Notice fit
`
`into none of these categories. While they are “statements in briefs,” they are not “[i]actual
`
`statements,” see TBMP § 704.06(b), let alone factual statements made by Opposer in this
`
`{P03965241 )8
`
`

`
`proceeding about Opposer’s own rights in THE CAB CALLOWAY ORCHESTRA in connection
`
`with his goods or services. Cf 37 C.F.R. § 2.l22(f); TBMP § 704.13 (even sworn testimony
`
`from another proceeding not admissible as evidence at trial except by motion granted by the
`
`Board). Rather, they are legal arguments from rnemoranda submitted to the U.S. District
`
`Court for the Southern District of New York and U.S. Court of Appeals for the Second Circuit
`
`concerning whether Applicant’s or its predecessors’ purported use of “Cab Calloway” to refer to
`
`the individual Cab Calloway or his works was protectable under the law ofthat circuit. Opposer
`
`therefore objects to the introduction into evidence of these irrelevant and immaterial statements
`
`concerning his interpretation of the law of the Second Circuit, and to the Board's reliance on
`
`such materials.
`
`III.
`
`STATEMENT OF THE ISSUES
`
`The only issue before the Board is whether Opposer can establish rights in THE CAB
`
`CALLOWAY ORCHESTRA prior to App1icant’s filing date for the Application, July 23, I999.
`
`(Stipulation as to Facts and Agreement to Submit Opposer’s Testimony by Affidavit, dated and
`
`filed July 1, 2008, TTABVUE # 41 at 1.) As shown below, the uncontroverted evidence proves
`
`that Opposer has in fact established rights in THE CAB CALLOWAY ORCHESTRA at least as
`
`early as December 1998, prior to the Application filing date.
`
`IV.
`
`RECITATION OF THE FACTS
`
`A.
`
`()pp0ser’s Rights in THE CAB CALLOWAY ORCHESTRA
`
`1.
`
`Opposer and the Founding of THE CAB CALLOWAY ORCHESTRA
`
`Opposer is the eldest grandson of the internationally famous jazz musician Cab
`
`Calloway, who died in 1994. (Stip. of Facts 1] 1; see Opp. Notice Ex. Q, ‘W 2-7) (noting Cab
`
`Calloway’s extraordinary fame, and describing him as “international jazz icon”).) Opposer is a
`
`professionally-trained musician who has performed with various jazz greats and jazz orchestras,
`
`{FD396524.I 39
`
`

`
`and who has taught music theory classes and given music workshops at, among other locales,
`
`Harvard University and the New England Conservatory of Music. (Brooks Aff. 1]1] 2-3.) Prior
`
`to Cab Ca1loway’s death, Opposer repeatedly performed with his grandfather at venues ranging
`
`from private parties to the Kennedy Center and Lincoln Center. (Id. 1]1] 3-4; Opp. Notice, Exs.
`
`Lg (articles discussing Opposer’s performances with Cab Calloway).)
`
`By December 1998 Opposer, with the encouragement and permission of Cab
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`Calloway, had created and named his jazz orchestra THE CAB CALLOWAY ORCHESTRA
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`(“the Orchestra”) in his grandfather’s honor. (Brooks Aff. 1] 5.) Mr. Brooks is the sole
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`proprietor, musical director, and lead performer of the Orchestra, which performs a variety of
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`jazz music, including songs written and recorded by Cab Calloway, standards by a number of
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`other artists, and Opposer’s own original songs and arrangements.
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`(Id. 1]1] 5, 7, Ex. §; Stip. of
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`Facts 1] 3; see generally Brooks Aff. 1] 2, Ex. 1 (Orchestra press packet)). Opposer has used THE
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`CAB CALLOWAY ORCHESTRA in connection with the Orchestra’s musical performances in
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`the U.S. continuously and deliberately from the date of its adoption. (Stip. of Facts 1] 4.)
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`2.
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`Opposer’s Use of THE CAB CALLOWAY
`ORCHESTRA in Connection With Entertainment Services
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`In December 1998, seven months prior to the July 23, 1999 filing of the Application, Mr.
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`Brooks performed with his orchestra under the name THE CAB CALLOWAY ORCHESTRA at
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`the Sleepy Hollow Country Club in Scarborough, New York. (Brooks Aff. 1] 6, Exs. 2 (fully
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`executed 9/25/98 contract for 12/ 19/98 performance by Opposer and “the Cab Calloway
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`Orchestra”); 3_ (3/21/O1 letter from Sleepy Hollow Country Club manager noting performances
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`of “the Cab Calloway Orchestras” there “since 1998”); Mikami Decl. 1]1] 4, 6 (noting December
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`' 19, 1998 Orchestra show and use of THE CAB CALLOWAY ORCHESTRA in connection with
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`]F0396524.] 1 10
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`

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`that performance)‘ Opposer reported this early use on his tax returns filed for the year 1998.
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`(Brooks Aff. 1] 7, Ex. § (noting “[b]usiness name” as “CAB CALLOWAY ORCHESTRAS”
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`and “[p]rincipa1 business or profession, including product or service” as “[m]usic.”)
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`By March 1999, still prior to the filing of the Application, Monty Zullo, a
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`Broadway producer, prepared a press packet advertising and promoting Opposer’s THE
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`CAB CALLOWAY ORCHESTRA, and distributed that packet to his various industry
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`contacts, including at Time Warner, William Morris, and ICM, among others. (Zul1o Decl. 1] 4.)
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`Performances of THE CAB CALLOWAY ORCHESTRA continued, including for the United
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`Jewish Appeal in Rye, New York on March 20, 1999 and at the Eubie Blake Cultural Center in
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`Baltimore, Maryland on May 19, 1999. (Brooks Aff. ‘H6, Exs. 2 (fully executed 12/18/98 and
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`3/2/99 contracts for 3/20/99 and 5/19/99 performances respectively by Opposer (described as
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`“Calloway Brooks") and “the Cab Calloway Orchestra;” checks paid to musicians dated April
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`21, 1999 and marked “CCO” for “CAB CALLOWAY ORCHESTRA”); 4_(January 7, 1999
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`invoice noting CAB CALLOWAY ORCHESTRA); Mikami Decl. 111] 5-6 (noting March 20
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`and May 19, 1999 Orchestra shows and use of THE CAB CALLOWAY ORCHESTRA in
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`connection with performances); Burton Decl. 111] 3-4 (noting his booking of THE CAB
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`CALLOWAY ORCHESTRA for performance at the Eubie Blake Center, and its May 19, 1999
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`performance at the Center); Zullo Decl. ‘H 3 (noting his attendance at a 2/99 performance of THE
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`CAB CALLOWAY ORCHESTRA). The Orchestra now performs between twenty-four to forty
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`I In Creative Arts by Calloway, LLC v. Brooks, No. 02-7050, 2002 WL 31303241, at *1-2 (2d
`Cir. Oct. 11, 2002), a copy of which is attached hereto for the Board’s convenience in Appendix
`_A_, the U.S. Court of Appeals for the Second Circuit noted that Opposer commenced use of THE
`CAB CALLOWAY ORCHESTRA in 1998, and that between 1999 and 2001 Opposer released
`two CDs and a video of the Orchest1'a’s performances.
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`[F0396524.l }]. ].
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`shows per year throughout the United States (Brooks Affi 111] 2, 10), and has been described as a
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`“[n]ational1y known act,” “world famous,” and “a big time jazz band.” (Opp. Notice, Exs. _3_-11.)
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`3.
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`Opposer’s Use of THE CAB CALLOWAY
`ORCHESTRA in Connection With Recordings
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`In addition to his use of THE CAB CALLOWAY ORCHESTRA for his live musical
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`performances, Opposer also uses THE CAB CALLOWAY ORCHESTRA on compact discs
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`and videos sold in the U.S., and has done so continuously from the date of the mark’s adoption.
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`(Stip. of Facts 1] 5.) Applicant has conceded not only that Opposer sold compact discs and
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`videos under the mark THE CAB CALLOWAY ORCHESTRA, but, more significantly, that he
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`sold compact discs and videos under that mark “prior to Applicant’s July 23, 1999 filing date.”
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`(Opp. Notice, Ex. Q 111] 9-11.)
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`Even without App1icant’s concession, Opposer has established without contradiction that
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`he began use of THE CAB CALLOWAY ORCHESTRA in connection with the sale of CDs
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`and videos as early as April 1999. (Brooks Aff. W 8-9, Exs. _6_ (CD), 1 (3/20/99 invoice for CD
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`mastering, 3/30/99 production memo for video, and 4/ 15/99-4/22/99 receipts for purchase of
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`CD3), § (videotape), 2 (3/9/99 invoice for video editing, 3/30/99 production memo for video, and
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`4/ 15/99-4/22/99 receipts for purchase of videos); Mikami Decl. W 7-8 (noting sale of CD3 and
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`videos branded with THE CAB CALLOWAY ORCHESTRA from 5/ 19/99 to the present);
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`Burton Decl. ‘[['|] 4-5 (noting his 5/ 19/99 purchase of CD and video branded with THE CAB
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`CALLOWAY ORCHESTRA), Ex. 3 (5/19/99 receipt for purchase); Zullo Decl. 1] 5 (noting his
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`5/22/99 purchase of CD and video branded with THE CAB CALLOWAY ORCHESTRA and
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`his circulation of the same in the entertainment industry), Bx. A (5/22/99 receipt for purchase).)
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`To date, Opposer has sold approximately 500 copies of his compact disc, and has sold
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`about 300-400 copies of his video. (Brooks Aff. W 8-9.) A second compact disc branded with
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`[F03-96524.1 } 1. 2
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`the mark THE CAB CALLOWAY ORCHESTRA issued in 2001. (Id. 1[ 8.)
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`B.
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`Applicant’s Application to Register CAB CALLOWAY
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`1.
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`The Applicant
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`Applicant is a Delaware limited liability company founded by its predecessor Zulme
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`Calloway, Cab Ca11oway’s widow, and two of Cab Cal1oway’s daughters. (Stip. of Facts 1] 6.)
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`2.
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`The Application at Issuez
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`On July 23, 1999, App1icant’s predecessor filed intent-to-use application Serial No.
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`75/761,159 to register CAB CALLOWAY. The services in that application are “[r]etail
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`stores, retail outlets and on—line retail store services featuring compact discs, records, video
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`tapes, cassettes, digital video and audio discs, and other home entertainment related products;
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`distribution of pre-recorded comedies, musicals and dramas on Video tapes, cassettes, digital
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`video and audio discs, CD-ROM; distribution of pre-recorded theatrical musicals, comedies and
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`dramas on video tapes, cassettes, digital video and audio discs, CD-ROM; and distribution of
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`pre-recorded music, drama, comedy and Variety shows on Video tapes, cassettes, digital video
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`and audio discs and CD-ROM” in International Class 35, and “[e]ntertainment services in the
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`nature of multimedia entertainment software production services, scheduling of programs on a
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`global computer network; production and distribution of live music concerts, comedy, and
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`dramatic series; production of live music concerts and live theatrical plays; production of radio
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`and television programs; production of videotapes and sound recordings, namely, phonograph
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`records, pre-recorded audio tapes, compact discs, videotapes, digital audio tapes, compact disc
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`videos, and laser discs; production and distribution of motion pictures; production of comedies,
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`2 The file of the Application forms part of the record of this proceeding without any action by
`the parties, and reference may be made to this file for any relevant and competent purpose. 37
`C.F.R. § 2.122(b).
`
`{F039fiS24.l ]13
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`musicals and dramas; scheduling television and radio programming; production of music,
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`drama, comedy and variety shows; theatrical production of musicals, comedies and dramas” in
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`International Class 41. (Id. ‘W 7-8.) The Application did not and still does not include any claim
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`that the applied-for mark had or has acquired distinctiveness.
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`In 2001, Applicant’s predecessor fi