{MM
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`TTAB
`
`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.
`
`-
`
`V
`Opposition No. 91/160,266
`
`”‘*"‘*-*——w
`IllllllHllllllllllllllllllHlflllllllllllllllllll
`
`1 2-30-2004
`
`---------------------------------------------------------------X
`
`US. Patent & TMOfcITM Man ficpt pt #77
`
`OPPOSER’S MOTION FOR SUMMARY JUDGMENT
`
`Opposer, Christopher Brooks, hereby moves for summary judgment in this Opposition
`
`pursuant to Fed. R. Civ. P. 56 and Rule 2.127 of the Trademark Rules of Practice on the
`
`grounds that his rights in the common law mark THE CAB CALLOWAY ORCHESTRA used
`
`in connection with entertaimnent services in the nature of live musical performances by an
`
`orchestra, and prerecorded media including both compact discs and videotapes, are prior to
`
`Applicant’s rights in its intent-to-use Application Serial No. 75/761,159 to register CAB
`
`CALLOWAY for certain services in International Classes 35 and 41, and that Applicant’s
`
`registration and use of the applied-for mark on the services set forth in the Application are likely
`
`to cause confusion with Opposer’s prior-used mark, in violation of Section 2(d) of the Lanham
`
`Act, 15 U.S.C. § 1052(d).
`
`In support of this motion Opposer relies upon the undisputed facts set forth in the
`
`Declarations of Christopher Brooks and Evan Gourvitz and their attached exhibits, the judicial
`
`

`
`
`
`admissions of Applicant, the file of the Application, the pleadings and proceedings herein, and
`
`on the Memorandum and the Statement of Undisputed Material Facts filed herewith.
`
`Dated:
`
`New York, New York
`December 30, 2004
`
`Respectfully submitted,
`
`for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.
`
`_
`
`Certificate of Express Mailing
`I hereby certify that this correspondence is being deposited with the
`&
`United States Postal Service "Express Mail Post Office to Addressee"
`service on the date indicated below and is addressed to: Commissioner B _ %
`“Express Mail” mailing label No. EV 608124563 Us
`A' Sflornon
`01.lI'V1 Z
`.
`.
`1 2/ 3 0/ 2004
`(Date of Deposit)
`866 Umted Nations Plaza
`New York, New York 10017
`Phone: (212)813-5900
`Fax: (212) 813-5901
`Attorneys for Potential Opposer
`
`_
`_
`M r1° 0””
`(Name of person signing Certificate)
`
`
`
`van
`
`,
`
`I:\egourvitz\CWBK\041207-0100500-calloway-sjmotion-motion.doc
`
`

`
`
`
`CERTIFICATE OF MAILING
`
`The undersigned hereby certifies that he caused a copy of the foregoing Opposer’s
`
`Motion for Summary Judgment, Memorandum in Support of Motion for Summary Judgment,
`
`Statement of Undisputed Material Facts, Declaration of Christopher Brooks, Declaration of Evan
`
`Gourvitz, and their attached exhibits to be served by first class mail postpaid this 30th day of
`
`December 2004 on App1icant’s attorney of record in this Opposition, William R. Golden, Jr.,
`
`Kelly Drye & Warren, 101 Park Avenue, New York, NY 10178.
`
`
`
`

`
`
`
`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
`
`MEMORANDUM IN SUPPORT OF
`OPPOSER’S MOTION FOR SUMMARY JUDGMENT
`
`

`
`
`
`TABLE OF CONTENTS
`
`Table of Authorities ...................................................................................................................... .. ii
`
`Introduction .................................................................................................................................... .. 1
`
`Statement of Facts .......................................................................................................................... ..3
`
`App1icant’s Application ........................................................................................................... ..4
`
`ARGUMENT ................................................................................................................................. ..6
`
`I.
`
`The Standard for Summary Judgment .................................................................................. ..6
`
`II. Opposer Should be Granted Summary Judgment Because There Is No Dispute of
`Material Fact That Applicant’s Application is Likely to Cause Confusion With
`Opposer’s Prior Use of THE CAB CALLOWAY ORCHESTRA ....................................... ..7
`
`A. Opposer Has Priority in His Use of the Common Law Mark THE CAB
`CALLOWAY ORCHESTRA For His Goods and Services .................................. ..7
`
`B. App1icant’s Use of CAB CALLOWAY for the Goods and Services Set
`Forth in Its Application is Likely to Cause Confusion With Opposer’s
`Mark ..................................................................................................................... .. 10
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`Similarity of the Marks ............................................................................... ..l2
`
`Similarity of the Parties’ Goods and Services ............................................ ..l3
`
`The Parties’ Channels of Trade and Consumers ......................................... ..16
`
`Purchaser Sophistication ............................................................................. .. 16
`
`Fame of Opposer’s Mark ............................................................................ ..17
`
`Third-Party Uses ......................................................................................... .. 17
`
`Actual Confusion ........................................................................................ .. 1 8
`
`Other Factors ............................................................................................... .. 1 8
`
`CONCLUSION ............................................................................................................................ .. 1 9
`
`

`
`
`
`TABLE OF AUTHORITIES
`
`FEDERAL CASES
`
`Bakers Franchise Corp. v. Royal Crown Cola Co., 160 U.S.P.Q. 192 (C.C.P.A. 1969) ...... ..11, 19
`
`Brookfield Communications, Inc. v. West Coast Entertainment Corp., 50 U.S.P.Q.2d
`1545 (9th Cir. 1999) ............................................................................................................ .. 9
`
`Century 21 Real Estate Corp. v. Century Life ofAmerica, 23 U.S.P.Q. 1698 (Fed. Cir.
`1992) .................................................................................................................................. .. 12
`
`Corporate Document Servs., Inc. v. I.C.E.D. Mgmt., Inc., 48 U.S.P.Q.2d 1477 (T.T.A.B.
`1998) ................................................................................................................................... .. 7
`
`Creative Arts by Calloway, LLC v. Brooks, No. 01 Civ. 3192 (CLB) (S.D.N.Y.
`Dec. 11, 2001) (Exhibit fl) ........................................................................................ ..passim
`
`Creative Arts by Calloway, LLC v. Brooks, No. 02-7050, 2002 WL 31303241 (2d Cir.
`Oct. 11, 2002) (Exhibit 1_5) ......................................................................................... ..passim
`
`Cunningham v. Laser Golf Corp., 55 U.S.P.Q.2d 1842 (Fed. Cir. 2000) ................................. .. 7, 8
`
`In re Denisi, 225 U.S.P.Q. 624 (T.T.A.B. 1985) .................................................................. .. 12, 13
`
`In re Dixie Restaurants, 41 U.S.P.Q.2d 1531 (Fed. Cir. 1993) .................................................. .. 13
`
`In re E. I. du Pont de Nemours & Co., 177 U.S.P.Q. 563 (C.C.P.A. 1973) ........................ ..passim
`
`In re Elbaum, 211 U.S.P.Q. 639 (T.T.A.B. 1981) ...................................................................... .. 16
`
`Giant Food, Inc. v. Nation ’s Foodservice, Inc., 218 U.S.P.Q. 390 (Fed. Cir. 1983) ................. .. 12
`
`Han Beauty, Inc. v. Alberto-Culver Co., 57 U.S.P.Q.2d 1557 (Fed. Cir. 2001) ........................ .. 11
`
`Herbko International, Inc. v. Kappa Books, Inc., 64 U.S.P.Q. 1375 (Fed. Cir. 2002) ................. .. 7
`
`Hewlett Packard Co. v. Packard Press Inc., 62 U.S.P.Q.2d 1001 (Fed. Cir. 2002)....... .. 11, 12, 18
`
`In re Hyper Shoppes (Ohio) Inc., 6 U.S.P.Q.2d 1025 (Fed. Cir. 1988) ................................ .. 11, 14
`
`In re James Raymond Bevan, Serial No. 75/810,317, 2002 WL 257400 (T.T.A.B. Fed.
`21, 2002) (non-precedential) ..................................................................................... .. 15
`
`Maremont Corp. v. Air Lift Co., 174 U.S.P.Q. 395 (C.C.P.A. 1972) ................................... .. 11, 19
`
`

`
`
`
`In re Melville Corp., 18 U.S.P.Q.2d 1386 (T.T.A.B. 1991) ....................................................... .. 14
`
`Michael S. Sachs, Inc. v. Cordon Art, B. V., 2000 WL 1052061 (T.T.A.B. July 19, 2000) .......... .. 9
`
`Mother ’s Restaurant, Inc. v. Mama ’s Pizza, Inc., 221 U.S.P.Q. 394 (Fed. Cir. 1983) .............. .. 10
`
`Octocom Systems, Inc. v. Houston Computer Services, Inc., 16 U.S.P.Q.2d 1783 (Fed.
`Cir. 1990) ..................................................................................................................... ..13, 17
`
`Otto Roth & Co. v. Universal Foods, Corp., 209 U.S.P.Q. 40 (C.C.P.A. 1981) .......................... .. 8
`
`Packard Press, Inc. v. Hewlett—Packard Co., 62 U.S.P.Q.2d 1001 (Fed. Cir. 2002) ................ .. 11
`
`Recot Inc. v. MC. Becton, 54 U.S.P.Q.2d 1894 (Fed. Cir. 2000) ............................................... .. 16
`
`Remos v. Feierman, Opp. No. 114,000, 2001 WL 388787 (T.T.A.B. Apr. 7, 2001)
`(non-precedential) ................................................................................................................ .. 9
`
`In re Saint Clair Apparel, Inc., Serial No. 75/649,382, 2002 WL 122615 (T.T.A.B. Jan.
`29, 2002) (non-precedential) ................................................................................................ .. 9
`
`Sealed Air Corp. v. Scott Paper Co., 190 U.S.P.Q. 106 (T.T.A.B. 1975) .................................. .. 12
`
`In re Splendor Products, Inc., Serial No. 76/152,209, 2004 WL 1294382 (T.T.A.B.
`June 1, 2004) (non-precedential) ....................................................................................... .. 15
`
`Sweats Fashions Inc. v. Pannill Knitting Co., 4 U.S.P.Q.2d 1793 (Fed. Cir. 1987) .................... .. 6
`
`TBC Corp. v. Holsa, Inc., 44 U.S.P.Q.2d 1315 (Fed. Cir. 1997) ................................................ .. 11
`
`Tuxedo Monopoly, Inc. v. General Mills Fun Group, Inc., 209 U.S.P.Q. 986 (C.C.P.A.
`1981) .................................................................................................................................. .. 13
`
`In re The US. Shoe Corp., 229 U.S.P.Q. 707 (T.T.A.B. 1985) .................................................. .. 13
`
`FEDERAL STATUTES AND RULES
`
`15. U.S.C. § 1052(d) ............................................................................................................ ..passim
`
`15 U.S.C. § 1057(c) ...................................................................................................................... .. 9
`
`FED. R. CIV. P. 56(c) ..................................................................................................................... .. 6
`
`FED. R. CIV. P. 56(e) ..................................................................................................................... .. 6
`
`37 C.F.R. § 2.122(b) ..................................................................................................................... .. 4
`
`iii
`
`

`
`
`
`37 C.F.R. § 2.116(a) ...................................................................................................................... .. 6
`
`TBMP § 309.03(c) ........................................................................................................................ .. 8
`
`TBMP § 528 ................................................................................. ..\. .............................................. .. 6
`
`TBMP § 704.03(a) ........................................................................................................................ .. 4
`
`TBMP § 704.04 ............................................................................................................................. .. 4
`
`TBMP § 704.06(a) ................................................................................................................ .. 11, 19
`
`TBMP § 1207.01(a)(ii) ............................................................................................................... .. 14
`
`OTHER AUTHORITIES
`
`J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 16:4
`(3d Ed. 2004) ................................................................................................................................ .. 9
`
`iv
`
`

`
`
`
`Opposer, Christopher Brooks (“Opposer” or “Mr. Brooks”), hereby moves for
`
`summary judgment in this Opposition pursuant to Fed. R. Civ. P. 56 and Rule 2.127 of the
`
`Trademark Rules of Practice on the grounds that his rights in the common law mark THE CAB
`
`CALLOWAY ORCHESTRA used in connection with entertainment services in the nature of live
`
`musical performances by an orchestra, and prerecorded media including both compact discs and
`
`videotapes, are prior to Applicant’s rights in its intent-to-use Application Serial No. 75/761,159
`
`to register CAB CALLOWAY for certain services in International Classes 35 and 41 (the
`
`‘‘Application’’), and that Applicant’s registration and use of the applied-for mark on the services
`
`set forth in the Application are likely to cause confusion with Opposer’s prior-used mark, in
`
`violation of Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d).
`
`INTRODUCTION
`
`This is a simple case and one ideally suited for summary judgment. On the two
`
`fundamental issues on this motion, priority and likelihood of confusion, the relevant facts have
`
`already been established and admitted in prior litigation between these very parties.
`
`In 2001, Applicant filed suit against Opposer in the United States District Court for the
`
`Southern District of New York, Creative Arts by Calloway, LLC v. Brooks, No. 01 Civ. 3192
`
`(CLB) (S.D.N.Y. Dec. 11, 2001) (mem.), afl’d, No. 02-7050, 2002 WL 31303241 (2d Cir. Oct.
`
`11, 2002) (the “Civil Action”).l
`
`In the Civil Action, Applicant claimed it had prior rights in the
`
`mark CAB CALLOWAY for entertainment services and that Opposer’s use of the mark THE
`
`CAB CALLOWAY ORCHESTRA for his own entertainment services — notably, orchestra
`
`1 The decisions of the United States District Court for the Southern District of New York and the
`United States Court of Appeals for the Second Circuit in the Civil Action are attached as
`Exhibits 1_4_ and Q, respectively, to the Declaration of Evan Gourvitz dated December 30, 2004
`(“Gourvitz Decl.”). For the sake of brevity they are referred to herein as Exhibits E and l_5.
`
`

`
`
`
`performances and the distribution of compact discs and videos of those performances — was
`
`likely to cause confusion. (Gourvitz Decl., Ex. Q at 2-4.) However, Applicant did not dispute
`
`in the Civil Action that Opposer had been using THE CAB CALLOWAY ORCHESTRA in
`
`connection with his entertainment services since 1998, and in connection with his compact discs
`
`and videotapes since 1999.
`
`Applicant’s suit was dismissed on summary judgment and the dismissal was affirmed by
`
`the Second Circuit. The basis for the dismissal was that as of the time of the suit Applicant had
`
`no rights in and had made no use of CAB CALLOWAY as a mark. (Id., Ex. L1 at 10; Ex. Q at
`
`1-2.) These decisions make it impossible for Applicant to now claim rights predating Opposer’s
`
`acquisition of rights in the mark THE CAB CALLOWAY ORCHESTRA, given Opposer’s own
`
`use of THE CAB CALLOWAY ORCHESTRA as his own mark for entertainment services since
`
`1998, as confirmed by both the Southern District of New York and Second Circuit. (Id., Ex. H
`
`at 3, Ex. Q at 1-2.) At most, Applicant can rely on the filing date of its intent-to-use application,
`
`July 23, 1999, which is after Opposer established his rights.
`
`As to the issue of likelihood of confusion, the most powerful evidence is Applicant’s own
`
`admission in the Civil Action. In its complaint Applicant admitted that a likelihood of confusion
`
`exists between Applicant’s alleged mark CAB CALLOWAY used in connection with
`
`entertainment services and Opposer’s mark THE CAB CALLOWAY ORCHESTRA used in
`
`connection with goods and entertainment services. (Id., Ex. Q at 4.)
`
`Opposer’s clear priority, as found in the Civil Action, combined with Applicant’s
`
`admission of likelihood of confusion, mandate that the opposition be granted and that
`
`Applicant’s registration of the mark CAB CALLOWAY be refused. Even without Applicant’s
`
`admission, the undisputed facts discussed herein and set forth in the attached declarations and
`
`

`
`
`
`exhibits require a finding of likelihood of confusion and the grant of Opposer’s motion for
`
`summary judgment.
`
`STATEMENT OF FACTS
`
`Opposer, who uses the stage names Calloway Brooks or C. Calloway Brooks, is the
`
`eldest grandson of the internationally famous jazz musician Cab Calloway, who died in 1994.
`
`(Declaration of Christopher Brooks, dated December 28, 2004 (“Brooks Decl.”) 1111 1-2, 6.) A
`
`full—time musician, Mr. Brooks performs with his musical ensemble THE CAB CALLOWAY
`
`ORCHESTRA (the “Orchestra”).
`
`(Id. at 1111 2, 8.) Opposer is a 1980 Dean’s List graduate of the
`
`New England Conservatory of Music who, from 1978 to 1993, repeatedly performed
`
`professionally with his grandfather at venues ranging from private parties to the Kennedy Center
`
`and Lincoln Center. (Id. at 111] 3-4; Ex. _2_.)
`
`Since December 1998, and prior to any date upon which Applicant can rely, Opposer has
`
`been using the mark THE CAB CALLOWAY ORCHESTRA continuously in connection with
`
`the Orchestra’s live musical performances. (Brooks Decl. 11 7; Ex. §.) Mr. Brooks is the sole
`
`proprietor, musical director and lead performer of the Orchestra. (Brooks Decl. 1] 1 1; see Ex. 1.)
`
`The Orchestra has performed professionally hundreds of times throughout the United States at
`
`venues ranging from New York to Illinois to California, including at such world-famous venues
`
`as Carnegie Hall, Lincoln Center and Birdland. (Brooks Decl. 1] 8; Ex. 4.) Its performances have
`
`been advertised and promoted nationwide, including through Opposer’s website, and have
`
`received favorable notices. (Brooks Decl. 1111 10, 14; Exs. Q, Q.) The Orchestra performs songs
`
`written and/or recorded by Cab Calloway, jazz standards by a variety of other artists, and
`
`Opposer’s own original songs and arrangements. (Brooks Decl. 1] 6.) Since at least April 1999,
`
`and again prior to any date upon which Applicant can rely, Opposer also has been using the mark
`
`

`
`
`
`THE CAB CALLOWAY ORCHESTRA continuously in connection with the sale of compact
`
`discs and videotapes. (Id. at1l1[ 12-13; Exs. §-ll.) Opposer has released two different compact
`
`discs to date, and roughly 2,000 copies have been sold throughout the United States. (Brooks
`
`Decl. 1] 12.) Opposer also has sold roughly 300-400 copies of his videotape to date throughout
`
`the United States. (Id. at 1] 13.)
`
`Agglicam,‘ ’s Application
`
`Applicant is a Delaware limited liability company founded by its predecessor, Cab
`
`Calloway’s third wife and widow Zulme Calloway, and her relatives to manage whatever rights
`
`she acquired (by will or otherwise) in Cab Calloway’s name, likeness, voice and intellectual
`
`property. (See id., Ex. 145 at 2-3; Ex. 15 at 1.)
`
`On July 23, 1999, Applicant’s predecessor filed intent-to-use application Serial No.
`
`75/761,159 to register CAB CALLOWAY.2 The services in the Application as published are
`
`“[r]etail stores, retail outlets and on-line retail store services featuring compact discs, records,
`
`video tapes, cassettes, digital video and audio discs, and other home entertainment related
`
`products; distribution ofpre-recorded comedies, musicals and dramas on video tapes, cassettes,
`
`digital video and audio discs, CD-ROM; distribution ofpre-recorded theatrical musicals,
`
`comedies and dramas on video tapes, cassettes, digital video and audio discs, CD-ROM; and
`
`distribution ofpre-recorded music, drama, comedy and variety shows on video tapes, cassettes,
`
`digital video and audio discs and CD-ROM” in International Class 35, and “[e]ntertainment
`
`services in the nature of multimedia entertaimnent software production services, scheduling of
`
`
`
`2 The file of the Application “forms part ofthe record ofthe proceeding without any action by
`the parties and reference may be made to the file for any relevant and competent purpose.” 37
`C.F.R. § 2.122(b); TBMP § 704.03(a). The allegations made and things filed in an application
`are not evidence on behalfof the applicant, but may be used as evidence against the applicant
`“as admissions against interest and the like.” TBMP § 704.04.
`
`

`
`
`
`programs on a global computer network; production and distribution of live music concerts,
`
`comedy, and dramatic series; production of live music concerts and live theatrical plays;
`
`production of radio and television programs; production of videotapes and sound recordings,
`
`namely, phonograph records, pre-recorded audio tapes, compact discs, videotapes, digital audio
`
`tapes, compact disc videos, and laser discs; production and distribution of motion pictures;
`
`production of comedies, musicals and dramas; scheduling television and radio programming;
`
`production of music, drama, comedy and variety shows; theatrical production of musicals,
`
`comedies and dramas” in International Class 41.
`
`On February 20, 2001, Applicant’s predecessor filed an amendment to the Application to
`
`allege use of the mark on “all the goods/services listed in the Application/Notice of Allowance,”
`
`claiming a first use date of January 1, 1928 and a first use in commerce date of January 1, 1929.
`
`(Application, 2/20/01 Amendment.) This amendment was false, since it asserted use of the mark
`
`since 1928 on items such as “on-line retail store services featuring compact discs .
`
`.
`
`. video tapes
`
`[and] digital video and audio discs” (e.g., id., 10/3/00 Action Letter) that clearly did not exist as
`
`of the claimed date of first use.
`
`Applicant’s attempt to claim rights pre-dating the Application filing date was dealt a fatal
`
`blow in the Civil Action when the U.S. District Court for the Southern District of New York
`
`found in a decision dated December 11, 2001 that Applicant d_id n_ot o_vv_n and @ go_t_ Lqufi
`
`any righ_ts in the mark CAB CALLOWAY. (Gourvitz Decl., Ex. _1_41 at 9-10.) This decision was
`
`affirmed on appeal on Oct. 11, 2002. (Id., Ex. Q.) Notwithstanding this determination in the
`
`Civil Action, Applicant’s counsel filed an amended statement of use on October 24, 2002,
`
`claiming use of the mark on all of the services except “[r]etail stores, retail outlets and on-line
`
`retail services,” and first use and first use in commerce dates of January 1, 1929. (Application,
`
`

`
`
`
`10/24/02 Amendment.) On December 17, 2002 Applicant requested that its amendment to allege
`
`use be withdrawn and that the Application once again proceed to publication in connection with
`
`all services exclusively as an intent-to-use application under Section l(b) of the Lanham Act.
`
`(Id., 12/17/02 Amendment.) The Application was published for opposition on March 16, 2004
`
`and Opposer timely opposed. Discovery closed on November 10, 2004, and Opposer’s
`
`testimony period is scheduled to open on January 9, 2005.
`
`ARGUMENT
`
`L
`
`The Standard for Summary Judgment
`
`A motion for summary judgment is an appropriate method for disposing of an opposition
`
`when “there is no genuine issue as to any material fact and that the moving party is entitled to
`
`judgment as a matter of law.’’ Fed. R. Civ. P. 56(c); see 37 C.F.R. § 2.116(a) (Federal Rules of
`
`Civil Procedure generally apply to opposition); TBMP § 528 (motion for summary judgment).
`
`“The summary judgment procedure is regarded as ‘a salutary method of disposition,’ and the
`
`Board does not hesitate to dispose of cases on summary judgment where appropriate.” TBMP §
`
`528.01 (citations omitted). If the moving party meets its burden, “the nonmoving party may not
`
`rest on mere denials or conclusory assertions, but rather must proffer countering evidence, by
`
`affidavit or as otherwise provided in Fed. R. Civ. P. 56, showing that there is a genuine factual
`
`dispute for trial.” Id. (citations omitted); see Fed. R. Civ. P. 56(e); see also Sweats Fashions Inc.
`
`v. Pannill Knitting Co., 4 U.S.P.Q.2d 1793, 1797 (Fed. Cir. 1987) (“[m]ere conclusory
`
`statements and denials do not take on dignity by placing them in affidavit form”) (citation
`
`omitted). Simply put, Applicant cannot create a genuine factual dispute merely by denying or
`
`contradicting Opposer’s sworn statements, or by claiming without proof that Opposer’s evidence
`
`is not accurate.
`
`

`
`
`
`Here, summary judgment is appropriate because there is no material disputed issue.
`
`Opposer has priority in his use of the mark THE CAB CALLOWAY ORCHESTRA and
`
`Applicant cannot prove anything to the contrary. Furthermore, Applicant admitted in the Civil
`
`. Action that there is a likelihood of confusion between Opposer’s use of THE CAB CALLOWAY
`
`ORCHESTRA on his goods and services and Applicant’s alleged use of CAB CALLOWAY for
`
`its services.3 Even without the findings and admissions from the Civil Action, the undisputed
`
`evidence discussed below clearly supports a finding of summary judgment in Opposer’s favor.
`
`II.
`
`Opposer Should be Granted Summary Judgment Because there is No
`Dispute of Material Fact That Applicant’s Application is Likely to Cause
`Confusion With Opposer’s Prior Use of THE CAB CALLOWAY ORCHESTRA
`
`Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d), states in part that a trademark shall
`
`be refused registration if it “so resembles .
`
`.
`
`. a mark or trade name previously used in the United
`
`States by another and not abandoned, as to be likely, when used on or in connection with the
`
`goods of the applicant, to cause confusion, or to cause mistake, or to deceive .
`
`.
`
`.
`
`A.
`
`Opposer Has Priority in His Use of the Common Law Mark
`THE CAB CALLOWAY ORCHESTRA For His Goods and Services
`
`To establish priority, an Opposer “must show proprietary rights in the mark that produce
`
`a likelihood of confusion. .
`
`.
`
`. These proprietary rights may arise from a prior registration, prior
`
`trademark or service mark use, prior use as a trade name, prior use analogous to trademark or
`
`service mark use, or any other use sufficient to establish proprietary rights.” Herbko Int '1, Inc. v.
`
`Kappa Books, Inc., 64 U.S.P.Q.2d 1375, 1378 (Fed. Cir. 2002); see also Corporate Document
`
`
`
`.
`3 Likelihood of COIlfL1Sl0I1 is a question of law that “the [B]oard may unquestionably resolve .
`on summary judgment.” Sweats Fashions, 4 U.S.P.Q.2d at 1565; see also, e.g., Cunningham v.
`Laser Golf Corp., 55 U.S.P.Q.2d 1842, 1943 (Fed. Cir. 2000) (likelihood of confusion is “a legal
`conclusion based on underlying facts”).
`
`.
`
`

`
`
`
`Servs., Inc. v. I.C.E.D. Mgmt., Inc., 48 U.S.P.Q.2d 1477, 1479 (T.T.A.B. 1998) (rights in a mark
`
`are created by its use in intrastate or interstate commerce); TMBP § 309.03 (c)(A). An opposer
`
`may rely on an unregistered mark as the basis for an opposition pursuant to Section 2(d), 15
`
`U.S.C. § 1052(d), if the mark is distinctive of his or her goods. Otto Roth & Co. v. Universal
`
`Foods Corp., 209 U.S.P.Q. 40, 45 & n.2 (C.C.P.A. 1981).
`
`Mr. Brooks is the sole proprietor, director and manager of the Orchestra, and the
`
`owner of the common law mark THE CAB CALLOWAY ORCHESTRA, which he has used
`
`continuously since December 1998 for live musical performances and since at least April 1999
`
`for compact discs and videotapes (Brooks Decl. 111} 7, 11-13, Exs. _3_, 1-11) — dates prior to the
`
`filing date of the Application.4 Indeed, in the Civil Action, both the federal district court and the
`
`appeals court found, and Applicant did not dispute, that Opposer had commenced his use of THE
`
`CAB CALLOWAY ORCHESTRA for entertainment services in 1998. (Gourvitz Decl., Ex. 1_4
`
`at 2-3, Ex. Q at 1.) Both decisions further acknowledged Opposer’s use of THE CAB
`
`CALLOWAY ORCHESTRA as a mark in connection with live musical performances since
`
`1998, as well as Opposer’s sale of compact discs and videotapes of his performances. (Gourvitz
`
`Decl., Ex. g at 3; Ex. 1_5 at 1—2.)5
`
`4 As the owner of the mark THE CAB CALLOWAY ORCHESTRA, Opposer clearly has
`standing to bring this opposition. E.g., Cunningham, 222 F.3d at 946 (standing requires that
`party believes it is likely to be damaged by the registration, as shown by establishing a direct
`commercial interest); TBMP § 309.03 (“[a] real interest in the proceeding and a reasonable belief
`of damage may be found .
`.
`. where [Opposer] pleads (and later proves): a claim of likelihood of
`confusion that is not wholly without merit”).
`
`5 The district court specifically noted that Opposer’s concert advertisements had “adopted the
`mark ‘THE CAB CALLOWAY ORCHESTRA’” (Gourvitz Decl., Ex. _l_4 at 3); while the Second
`Circuit observed that Opposer apparently was using “his own trademark, ‘The Cab Calloway
`Orchestra.”’ (Ia’., Ex. _1_§ at 1-2.)
`
`

`
`
`
`The mark THE CAB CALLOWAY ORCHESTRA, which includes the full name of
`
`Opposer’s famous late grandfather (Brooks Decl. 1111 1, 6), is inherently distinctive as applied to
`
`Opposer’s goods and services. See Michael S. Sachs, Inc. v. Cordon Art, B. V., Opp. No. 95,655,
`
`2000 WL 1052061, at *5 & n.8 (T.T.A.B. July 19, 2000) (“the name of an artist is presumptively
`
`not merely descriptive”); see also In re St. Clair Apparel, Inc., Serial No. 75/649,382; 2002 WL
`
`122616, at *3 (T.T.A.B. Jan. 29, 2002) (non-precedential) (“[p]ersonal name marks (so long as
`
`they are not primarily merely surnames) are deemed to be inherently distinctive .
`
`. .”); Remos v.
`
`Feierman, Opp. No. 114,000, 2001 WL 388787, at *7’ (T.T.A.B. Apr. 7, 2001) (non-
`
`precedential) (“[a] personal name mark, unless it is primarily merely a surname, is registrable on
`
`the Principal Register without a showing of secondary meaning, and" thus is deemed to be
`
`inherently distinctive under the Lanham Act. .
`
`.
`
`. We see no logical basis for holding that a
`
`personal name mark which is inherently distinctive for registration purposes must nonetheless be
`
`shown to have acquired secondary meaning before it can be relied upon by an opposer in an
`
`opposition proceeding”). Since the mark THE CAB CALLOWAY ORCHESTRA is not merely
`
`descriptive, Opposer’s rights in that mark for his goods and services for purposes of priority date
`
`back to his December 1998 and April 1999 uses. (Brooks Decl. 1111 7, 11-13, Exs. 3, Z-_1.) See,
`e.g., Broolg‘ield Communications, Inc. v. West Coast Entm ’t Corp., 50 U.S.P.Q.2d 1545, 1551
`
`(9th Cir. 1999) (“ownership of an inherently distinctive mark .
`
`.
`
`. is governed by priority of
`
`use”); 2 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 16:4 (3d Ed.
`
`2004) (for inherently distinctive marks, “the first to use a designation as a mark in the sale of
`
`goods or services is the ‘owner’ and ‘senior user”’).
`
`By comparison, the earliest priority date upon which Applicant can rely is the date it filed
`
`its intent-to-use application, July 23, 1999. See 15 U.S.C. § 1057(c). While Applicant alleged
`
`

`
`
`
`use of the mark for at least some services during the course of its application, this claim was
`
`rejected by the Examiner, and by the courts in the Civil Action, both of which held that
`
`Applicant and its predecessor had not made any use of CAB CALLOWAY as a mark as of 2001
`
`(Gourvitz Dec1., Ex. 15} at 10, Ex. g at 1-2), three years after Opposer acquired rights. This
`
`precludes Applicant from now claiming use of CAB CALLOWAY prior to Opposer’s December
`
`1998 and April 1999 first use dates. See M0ther’s Restaurant Inc. v. Mama ’s Pizza, Inc., 221
`
`U.S.P.Q. 394, 397 (Fed. Cir. 1983) (“issues which are actually and necessarily determined by a
`
`court of competent jurisdiction are conclusive in a subsequent suit involving the parties to the
`
`prior litigation”). Indeed, Applicant confirmed its own lack of use of the CAB CALLOWAY
`
`mark as late as December 17, 2002, when it withdrew its amendment to allege use. (Application7
`
`12/17/02 Amendment.)
`
`B.
`
`Applicant’s Use of CAB CALLOWAY for the Goods and Services Set
`Forth in Its Application is Likely to Cause Confusion With Opposer’s Mark
`
`While ge