Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1268729
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`Filing date:
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`02/28/2023
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding no.
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`91249613
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`Party
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`Correspondence
`address
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`Plaintiff
`Billy Stott
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`GLENN C ROMANO
`3830 LUKENS LANE
`HATBORO, PA 19040
`UNITED STATES
`Primary email: glenn@glennromano.com
`215-323-4949
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`Submission
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`Filer's name
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`Filer's email
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`Signature
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`Date
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`Other Motions/Submissions
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`Glenn C Romano
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`glenn@glennromano.com
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`/Glenn C Romano/
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`02/28/2023
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`Attachments
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`Reply Brief.pdf(257561 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`
`
`In re: Trademark Application Serial No. 88/181842
`Trademark: SPLIT DECISION
`Published: March 26, 2019
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`Billy Stott,
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`Opposer
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`v.
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`Split Decision Music, LLC
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`Applicant
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` )
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` ) Opposition No. 91249613
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`OPPOSER’S REPLY BRIEF
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`TABLE OF CONTENTS
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`I.
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`INTRODUCTION………………………………………………………………
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`II.
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`OWNERSHIP OF THE BAND NAME………………………………………..
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`A. The Holding In Bell v. Streetwise Records, Ltd. When Applied
`To Facts In This Case Does Not Determine Applicant’s Ownership
`Of The Band Name…………………………………………….……………
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`3
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`4
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`4
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`III.
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`B. The Holding In Boogie Kings v. Guillory When Applied To Facts
`In This Case Does Not Determine Applicant’s Ownership
`Of The Band Name …………………………………………………………. 7
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`C. The Holding In Rick v. Buchansky When Applied To Facts
`In This Case Determines That Opposer Is The Rightful Owner
`Of The Band Name ………………………………………………………….. 11
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`ENFORCEABILITY OF THE MANAGEMENT AGREEMENT ……………… 15
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`IV.. EFFECT OF APPLICANT’S NUNC PRO TUNC ASSIGNMENTS…………… 17
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`V.
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`CONCLUSION ………………………………………………………………….. 21
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`

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`TABLE OF AUTHORITIES
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`PAGE(s)
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`CASES
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`Abraxis Bioscience, Inc. v. Navinta LLC, 625 F.3d 1359, 1365–66 (Fed.Cir.2010)……………20
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`Alps South, LLC v Ohio Willow Wood Co., 787 F.3d 1379, 1384
`(Fed. Cir. 2015) ………………………………………………………………………….19, 20, 21
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`Alt. Petroleum Techs. Holdings Corp. v. Grimes, 3:20-cv-00040-MMD-CLB
`(D. Nev. Jan. 25, 2022)…………………………………………………………………………..21
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`Argentum Med., LLC v. Noble Biomaterials, 2010 U.S. Dist. LEXIS 66037 *; 2010 WL
`2650493 (M.D. Pa. July 1, 2010)……………………………………………………………18, 19
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`Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 981 F.3d 1083, 1093-94
`(Fed. Cir. 2020)…………………………………………………………………………………..21
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`Bell v. Streetwise Records, Ltd., 640 F.Supp. 575, 231 U.S.P.Q. 281 (1986)……………3, 4, 5, 6
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`Bohler-Uddeholm Am., Inc. v. Ellwood Group, Inc., 247 F.3d 79, 88,
`2001 U.S. App. LEXIS 6151, *1, 56 Fed. R. Evid. Serv. (Callaghan) 1127…………………….17
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`Boogie Kings v. Guillory, 188 So. 2d 445, 51 U.S.P.Q. 133 (La. App. 1966)……….…3, 7, 8, 10
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`In re Briggs, 229 USPQ 76, 77 (TTAB 1986)……………………………………………………3
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`Duquesne Light Co. v. Westinghouse Elec. Corp., 66 F.3d 604, 614 (3d Cir. 1995)…………...16
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`Enzo APA & Son, Inc. v. Geapag A.G., 134 F.3d 1090, 1093 (Fed.Cir.1998)……………...20, 21
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`Procter & Gamble Co. v. Paragon Trade Brands, Inc., 917 F.Supp. 305, 310 (D.Del.1995)……20
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`Rick v Buchansky, 609 F. Supp. 1522 (S.D.N.Y. 1985)………………………….……4, 6, 11, 12
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`Wonderbread 5 v. Gilles,
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`Trademark Trial and Appeal Board Cancellation No. 92052150 at pp. 12-13,
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`Decided June 30, 2015…………………………………………………………………….3
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`2
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`OTHER AUTHORITIES
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`Black's Law Dictionary 1174 (9th Ed. 2009)………………………………………………….18
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` 7
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` C.J.S. Associations § 13, Name and Seal, p. 37……………………………………………..10
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`I.
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`INTRODUCTION
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`There is no issue with respect to the Mark itself. It is clear that the Applicant’s Mark
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`“SPLIT DECISION” and the Opposer’s Mark “SPLIT DECISION” both refer to a band name
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`and/or musical act performing entertainment services. This issue which has been argued at
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`length in both the Opposer’s Main Brief and Applicant’s Brief is: Who is the rightful owner of
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`the Mark.
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`“In cases … where parties have either a prior or current relationship, the question of
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`whether the individual or the business entity is, in fact, the owner of the mark “must be
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`determined on a case-by-case basis dependent on the particular facts adduced in each case.”
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`Wonderbread v. Gilles, TTAB Cancellation No. 92052150 at p.at 16, Decided June 30, 2015
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`citing, In re Briggs, 229 USPQ 76, 77 (TTAB 1986).
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`Applicant relies primarily on the holdings in Bell v. Streetwise Records, Ltd., 640 F.Supp.
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`575, 581, 231 U.S.P.Q. 281 (1986) (group who was first performing commercially under the
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`trademark, although for nominal amounts of money, was the priority and rightful owner of the
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`trademark and not record label who was later associated with the group), and Boogie Kings v.
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`Guillory, 188 So.2d 445,448, 51 U.S.P.Q. 133 (La. App. 1966), (the band as an entity rather than
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`band’s founding members owned the name of the group because the band as a group first used
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`the name in commerce) to argue that because it is the standard in the music industry that an artist
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`or group generally owns its own name that Applicant is the rightful owner of the Mark. A close
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`3
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`examination of the facts in the instant case distinguishes it from both Bell and Boogie Kings.
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`The instant case more closely resembles the facts in Rick v Buchansky, 609 F. Supp. 1522
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`(S.D.N.Y. 1985) which determined that a band’s manager owned the band’s trademark.
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`An underlying issue raised by Applicant is the enforceability of the management
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`agreement between Opposer and most of the leaving band members, including Douglas Moore,
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`the sole member of the registered owner of the Mark, Split Decision Music LLC. Applicant
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`argues that the management agreement is inherently ambiguous and therefore is not enforceable.
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`Opposer counters that Applicant has failed to offer any evidence to support its argument
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`A fourth issue addressed in this Brief is Applicant’s filing of two nunc pro tunc
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`Assignments of the Mark in the Trademark Application Record which purport to grant all
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`ownership in the Mark to Applicant. Applicant expressly down plays the effect of the nunc pro
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`tunc documents as non-determinative. Applicant further argues that the nunc pro tunc
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`assignment recordation was not fraudulent because it clarified the chain of title for the record and
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`its filing with the PTO is not determinative of the outcome of this case. Opposer in its Main
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`Brief raised the issue of Applicant’s fraudulent statements made in its registration of the Mark
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`and further objected to the filing of the nunc pro tunc assignments as an attempt to manufacture
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`evidence in the course of litigation.
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`II.
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`OWNERSHIP OF THE BAND NAME
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`A.
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`The Holding In Bell v. Streetwise Records, Ltd. When Applied To Facts In
`This Case Does Not Determine Applicant’s Ownership Of The Band Name.
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`
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`Applicant cites Bell v. Streetwise Records, Ltd., 640 F.Supp. 575, 581, 231 U.S.P.Q. 281
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`(1986) for the proposition that it is the standard in the music industry that an artist or group
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`generally owns its own name. Applicant’s Brief 29. (73 TTABVUE ¶35). Applicant further
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`4
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`contends that the controlling law in this case regarding trademark ownership of a band name
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`establishes that a band’s name belongs to the band and the individuals involved in the creation of
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`the name do not have an individual vested interested in the name. Bell v. Streetwise Records,
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`Ltd., Supra.. Applicant’s Brief 34. (73 TTABVUE ¶40). Applicant argues that Bell applies
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`based on its determination that “[A] their respective roles, and they were paid accordingly for
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`their contributions). A musical group performing under a trademark prior to input from other
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`contributors, no matter how substantial, has the priority to the trademark over those contributors.
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`Bell, 640 F.Supp. 575, 585-586 (the Court analyzed both producer’s role and record label’s role
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`in the creation of the musical group “New Edition” and determined that while their roles were
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`substantial, they did not own the trademark because their contributions were standard functions
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`of their respective roles, and they were paid accordingly for their contributions). Applicant’s
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`Brief 36-37. (73 TTABVUE ¶42-43).
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`Applicant’s reliance on Bell is misguided as the instant case is distinguished by the
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`manner in which Opposer acquired the mark. Applicant argues that “Opposer … obtained
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`priority of the Applied-for-Mark under theory that he received priority upon his association with
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`the Band as its manager. Opposer started to manage the Band after the Band was already using
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`the Applied-for-Mark and Opposer was paid for his management services. (Zajac Declaration 22
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`TTABVUE ¶9). Opposer does not have a basis to claim trademark ownership of the Applied-
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`for- Mark based on his subsequent contributions to the Band.” Applicant’s Brief 37. (73
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`TTABVUE ¶43).
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`Opposer claims ownership of the mark based on the consent of the then current band
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`members (and in particular the two original band members who created the band name) and
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`Opposer’s adoption of the band name to create a “brand” for marketing the band. Opposer’s
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`Main Brief 11-13. (72 TTABVUE ¶12-13).
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`Another distinguishing fact in the instant case is that Opposer, from his initial agreement
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`with the original band members in 1991, controlled every aspect of the band and had final
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`authority on the adoption of the band name. Opposer had recommended, and the original band
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`members agreed to originally change the band name. During a period in which the Opposer and
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`members of the band were conducting a comprehensive search and considering other band
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`names, Opposer had already been pursuing opportunities for the band to perform in better paying
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`venues. At that time Opposer was still using Split Decision to identify the band and in doing so
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`the band name had taken on the identity of the brand being developed by Opposer. It was then
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`that Opposer ultimately decided to formally adopt the band name as the mark for marketing the
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`band. Thus, even though the band name was used in commerce prior to Opposer’s association
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`with the band, the then current band members consented to Opposer’s adoption of the mark.
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`Opposer’s Main Brief 11-13. (72 TTABVUE ¶12-13). The only time ownership of the mark
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`was questioned is when Applicant, through the actions of Douglas Moore, a leaving band
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`member who was the sole member of Applicant, attempted to register the mark on behalf of
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`Applicant after he had disassociated from Opposer. Opposer’s Main Brief 10-11. (72
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`TTABVUE ¶11-12).
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`The court in Bell found that the membership of the musical act had been essentially
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`constant where the individual members had become known to the public in contrast to the
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`finding in Rick v Buchansky, 609 F. Supp. 1522 (S.D.N.Y. 1985), where the musical act had had
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`twenty-two different members, including ten different frontmen to its one manager who was
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`found to own the name.) Bell, supra at 582. In the instant case, as in Rick, more than thirty
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`6
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`musicians had performed at one time or another with Split Decision. Stott Decl. ¶77 (25
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`TTABVUE 16). Each were selected (and at times discharged) by Opposer who had the final
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`authority on the make up of the band. Id. The band also had at several frontmen, none of whose
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`names were specifically marketed or promoted. Opposer’s Main Brief. 11, 29; (72 TTABVUE
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`¶12, 30); Applicant’s Brief 22. (73 TTABVUE ¶28). None of the original band members are
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`currently performing as Split Decision. Opposer’s Main Brief 11, 27-28. (72 TTABVUE ¶12,
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`28-29). Opposer is the longest tenured member from the date he became the primary member to
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`the date the leaving members disassociated themselves from Opposer. Opposer’s Main Brief 20-
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`21. (72 TTABVUE ¶21-22)
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`B.
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`The Holding In Boogie Kings v. Guillory When Applied To Facts In This
`Case Does Not Determine Applicant’s Ownership Of The Band Name
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`Applicant cites Boogie Kings v. Guillory, 188 So. 2d 445, 51 U.S.P.Q. 133 (La. App.
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`1966) for the holding that the band as an entity rather than band’s founding members owned the
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`name of the group because the band as a group first used the name in commerce. Applicant
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`further relies on its holding that a proprietary interest in the trade name “vested in the band, as an
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`unincorporated association, and not in any individual member of that band.” Boogie Kings v.
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`Guillory, supra. at 448. Applicant’s Brief 29, 34. (73 TTABVUE ¶35, 40).
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`Applicant argues that it “was the trademark owner at the time of filing because the
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`trademark was owned by the Band as an unincorporated association up until the formation of the
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`Applicant. Once the Applicant was formed to control the Band’s business, title to the trademark
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`automatically passed from the unincorporated association to the Applicant. Additionally, the
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`Band consented to the formation of the Applicant. (Birchard Declaration 38 TTABVUE ¶8,
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`7
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`Pierson Declaration 22 TTABVUE ¶7) Opposer even agreed to the formation of the Applicant.
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`(Moore Declaration 40 TTABVUE ¶19) Assuming arguendo that Opposer, the Band’s manager,
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`was a “band member” any rights that he had to the name of the Band expired upon his
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`termination by the Band.” Applicant’s Brief 35. (73 TTABVUE ¶41).
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`This could not be further from the facts. In 1991, Opposer, with the consent of the
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`original band members, adopted the original Split Decision Mark to create s a brand for the
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`musical act Spit Decision, 24 years prior to Applicant’s formation. Notice of Opposition ¶¶ 5, 6
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`16; Opposer’s Main Brief 12-13, 33 (72 TTABVUE ¶13-14, 34). Opposer Billy Stott, an
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`individual, has used the Mark (as its mark) for over 27 years. Notice of Opposition ¶6:
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`Opposer’s Main Brief 11-15. (72 TTABVUE ¶12-16). Applicant never had an ownership
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`interest in the mark. Opposer’s Main Brief 17. (72 TTABVUE ¶18) . Applicant was formed
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`solely for purposes of reporting taxes as the sole member of Applicant, Douglas Moore, who was
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`delegated by Opposer the responsibility of collecting band receivables and then paying the
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`individual band members and third parties for services provided at band performances.
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`Opposer’s Main Brief 33-34. (72 TTABVUE ¶34-35).
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`The instant case is further distinguished from Boogie Kings with respect to the finding
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`that the band was an "unincorporated association," that it was governed by a majority vote of its
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`members, that defendant Guillory "was never more than a featured vocalist with this band," and
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`that he "never acquired the trade name as such." Also, the Court in Boogie Kings determined,
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`that “this band, when first organized in 1955, became an unincorporated association, and it has
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`continued to be such an organization since that time. The original trade name, "The Boogie
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`Kings," was adopted by mutual agreement of the members of the band, that a proprietary interest
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`in that name became vested in the band, as an unincorporated association, and that it did not
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`become vested in any individual member of that band. Miller, therefore, had no right or authority
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`to "give" or to transfer to defendant Guillory the exclusive right to use that name.” Boogie
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`Kings, supra.
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`In the instant case, only prior to Opposer’s association with Split Decision, one could
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`argue that the band was an "unincorporated association," and that it was governed by a majority
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`vote of its members. Opposer’s Main Brief 11. (72 TTABVUE ¶12). The original name was
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`created by its two founding members Christian Zajac and Scott Kinka. Zajac Decl. ¶2 (22
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`TTABVUE 2). Kinka RDecl. ¶1 (50 TTABVUE 2. Under Boogie Kings one could argue that the
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`trade name, Split Decision, was adopted by mutual agreement of the members of the band, that a
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`proprietary interest in that name became vested in the band, as an unincorporated association,
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`and that it did not become vested in any individual member of that band. However, as a
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`condition of Opposer’s agreement to work with the band, and with the consent of all of the
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`original band members, Opposer was made a primary, non-performing band member, with
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`complete creative control and ultimate authority over all matters pertaining to the band.
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`Opposer’s Main Brief 12-13. (72 TTABVUE ¶13-14) .
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`At that point, the band effectively became a sole proprietorship with all ultimate authority
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`exercised by Opposer. All band members were independent contractors. Opposer’s Main Brief
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`27-29. (72 TTABVUE ¶28-30). Opposer’s plan was to create a “brand” identified by the band
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`name. Opposer’s Main Brief 12-13. (72 TTABVUE ¶13-14). This included a determination on
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`whether to continue to use the current band name or to change it. Opposer’s Main Brief 20. (72
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`TTABVUE ¶21).
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`As set forth at length in Opposer’s Main Brief, the band members agreed to change the
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`band name but that ultimately Opposer decided that the brand, through his initial efforts, had
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`acquired a connection to the name Split Decision and Opposer then adopted it for his brand. Id.
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`The Split Decision name became solely associated with Opposer and not with any individual
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`band member. Opposer’s Main Brief 20-21. (72 TTABVUE ¶21-22).
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`Opposer never agreed to the formation of Applicant. Opposer’s Main Brief 33-34. (72
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`TTABVUE ¶34-35). Rather Opposer agreed with Douglas Moore that some type of legal entity,
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`as recommended by Moore’s tax accountant, was desirable to protect Moore from personal
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`liability for income taxes for the band members. Id. Opposer never consented to the use of the
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`band name for Moore’s business entity. Id. Applicant and all leaving band members testified
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`that Opposer was “terminated” by the band. Applicant’s Brief 25-26. (73 TTABVUE ¶31-32).
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`Even if we accept that Opposer was “terminated”, there was nothing to prevent the leaving band
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`members from continuing as a musical act under a different name. The only issue is whether
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`they misappropriated the band name and consequently Opposer’s mark. That issue is discussed
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`at length in Opposer’s Main Brief and does not require a reiteration here. Opposer’s Main Brief
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`31-36. (72 TTABVUE ¶32-37).
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`It is significant that the Court in Boogie Kings further held that “Dissatisfied members of
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`an association cannot deprive it of the right to use its own name by incorporating themselves
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`thereunder, and enjoining it from using the same." Boogie Kings v. Guillory, supra at 448,
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`(citing, 7 C.J.S. Associations § 13, Name and Seal, p. 37).
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`No band member had a longer period of association with the Mark than Opposer.
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`Opposer’s Main Brief 20-21. (72 TTABVUE ¶21-22). Opposer enforced his sole right to the
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`band name via “cease and desist” letters and management contracts with most of the leaving
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`band members. Opposer’s Main Brief 30-31. (72 TTABVUE ¶31-32). Opposer also demanded
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`the leaving band members who continued to perform as Split Decision to cease and desist using
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`the name or face a legal challenge. Opposer’s Main Brief 36. (72 TTABVUE ¶37). Under
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`Boogie Kings, they had no right to deprive Opposer from the use of his own mark.
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`C.
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`The Holding In Rick v. Buchansky When Applied To Facts In This Case
`Determines That Opposer Is The Rightful Owner Of The Band Name
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`The facts in Rick v Buchansky, 609 F. Supp. 1522 (S.D.N.Y. 1985), by comparison more
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`closely resemble the instant case which supports Opposers position on ownership of the mark.
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`Applicant identifies Rick v Buchansky, supra, in a footnote as “a rare case where a Court
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`determined that a band’s manager owned the band’s trademark” Applicants Brief 37. (73
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`TTABVUE ¶43). Applicant goes on to characterize the facts of the instant case as “remarkably
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`different than Rick.” Id.
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`Opposer views the facts in Rick as remarkedly similar when determining the rightful
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`owner of the mark.
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`In Rick, Rick, who had registered the mark and who was bringing the action again the
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`performers, not only made booking arrangements and handled promotional and financial matters
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`for the group, but that he selected songs, taught vocal and dance technique, and paid all of the
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`group's expenses, including the purchase of stage apparel, meals and lodging. The Court in Rick
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`concluded “that in his [Rick’s] role as manager of "Vito and the Salutations," plaintiff had not
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`acted simply as an agent for the group, but had functioned much like the producer of a theater
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`company or owner of a sports team. Records adduced at trial demonstrate that Rick scheduled
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`the group's live performances, was responsible for the group's personnel decisions and oversaw
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`the style and substance of the group's "act." Indeed, no other party to this action or any other
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`individual of whom the Court has knowledge has been in a comparable position to influence the
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`11
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`direction of "Vito and the Salutations" from 1961 until the present. Having managed the musical
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`group continuously since 1961, Rick is, in a sense, its "longest-playing" member, albeit a behind-
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`the-scenes participant.” Rick v Buchansky, supra, at, 1538.
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`This is very similar to the facts in the instant case where in 1991, Opposer was granted
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`full creative control and ultimate authority over all matter pertaining to the band by the original
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`band members. Opposer’s Main Brief 12-13. (72 TTABVUE ¶13-14). In the instant case,
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`Opposer performed many of the same or similar functions as Rick. In addition to determining
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`the fee, place and date of each live performance, Opposer determined all promotions, all
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`marketing, all demographic analysis of local markets and venues, made all personnel decisions.
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`Opposer’s Main Brief 16-17. (72 TTABVUE ¶17-18). While Opposer never registered the
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`mark, he had been granted sole rights to the band name to use in creating a marketing “brand”.
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`Opposer’s Main Brief 12-13. (72 TTABVUE ¶13-14). During the band’s early growth and
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`beyond, Opposer delegated certain functions to certain band members and other third parties.
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`Opposer’s Main Brief 15, 18-19, 22-23. (72 TTABVUE ¶16, 19-20, 23-24). Most importantly,
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`Opposer had full authority over the make-up of the band and in the designation of the band
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`leader. Opposer’s Main Brief 12, 45. (72 TTABVUE ¶13, 46). Opposer, changed everything
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`about the band from the number and types of musicians, to song selection, and how to conduct
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`themselves during live performances. Opposer’s Main Brief 16-17. (72 TTABVUE ¶17-18).
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`There was a period of training that involved choreography and classroom type sessions. Opposer
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`even went so far as to create training materials for the band members. Opposer’s Main Brief 16,
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`23. (72 TTABVUE ¶17, 24).
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`Opposer testified that he delegated to the band leader the responsibility to collect all
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`receivables and to pay band members and third parties necessary for band performances.
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`12
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`Opposer’s Main Brief 23. (72 TTABVUE ¶24). Opposer appointed other band members to
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`perform specific functions from time to time such as designing logo’s, creating mailing lists and
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`sending out mailers of future performances, and social media. Opposer’s Main Brief 15, 18-19,
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`22-23. (72 TTABVUE ¶16, 19-20, 23-24).
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`Except for very limited situations, all promotions were paid for by Opposer including
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`mailers, poster, flyers, radio spots and the like. Opposer’s Main Brief 20-21. (72 TTABVUE
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`¶21-22). Opposer was the sole individual identified with the band in promotional materials.
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`Opposer’s Main Brief 20-22. (72 TTABVUE ¶21-23) .
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`More than thirty performers were hired by Opposer to perform in or to fill in for band
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`members. Opposer’s Main Brief 30. (72 TTABVUE ¶31). Often these performers came from
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`other bands manages by Opposer Opposer’s Main Brief 27-28. (72 TTABVUE ¶28-29). The
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`band has had at least four bandleaders. Opposer’s Main Brief 25, 30-31, (72 TTABVUE ¶31-
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`32); Stott transcripts of Deposition. Oct. 30, 2020, 18:10-11, 36: 6-8,15-16, 20-21, 24-25. at (31
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`TABBVUE 200, 218). All musicians and bandleaders were ultimately appointed by Opposer.
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`Opposer’s Main Brief 12, 45, 60. (72 TTABVUE ¶13, 46, 61). The band was never marketed
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`with a particular band member’s name. It was marketed as a “brand” that was recognized by
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`club owners, and venue managers, and the public. Opposer’s Main Brief 20-22. (72 TTABVUE
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`¶21-22). As such, Opposer was able to develop Split Decision as one of the premier, and top
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`grossing acts in its market. Opposer’s Main Brief 16-17. (72 TTABVUE ¶17-18). The
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`relationship between Opposer and the band members was never similar to an unincorporated
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`association or partnership. Rather, Opposer ran the band like a sole proprietorship where the
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`band members were independent contractors. Opposer’s Main Brief 17-18, 27-29. (72
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`TTABVUE ¶18-19, 28-30). Opposer’s name was associated with nearly all promotional
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`materials for the band. Opposer’s Main Brief 21. (72 TTABVUE ¶22). Opposer, enforced any
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`attempts by leaving members and third parties to capitalize or use the band name. Opposer’s
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`Main Brief 29. (72 TTABVUE ¶30). Opposer even had most of the band members enter into
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`management agreements where opposer retained all rights to the band name. Opposer’s Main
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`Brief 29-30. (72 TTABVUE ¶30-31). From 1991 to the present, Opposer was the longest
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`tenured member of the band. Opposer’s Main Brief 29-30. (72 TTABVUE ¶30-31).
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`All promotions were paid for by Opposer. Opposer’s Main Brief 20-21. (72 TTABVUE
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`¶21-22). Even the management and administration of social media outlets were delegated by
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`Opposer to band members. Opposer’s Main Brief 18-20. (72 TTABVUE ¶19-21). This
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`included registration of the band’s domain name, management of the band’s web site, and
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`Facebook page. Id. Opposer testified that he trusted the individuals and believed that he was
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`identified as the owner and registrant of the domain name, and administrator of the web site and
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`Facebook pages. Id. It was only after the initiation of the instant action that opposer learned
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`through discovery that he had been deceived by the band members. Opposer’s Main Brief 33-
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`35. (72 TTABVUE ¶34-36).
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`Finally, the Applicant was never a member of the band and never acquired legal rights to
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`the Split Decision mark. Opposer’s Main Brief 33-34, 36-38. (72 TTABVUE ¶34-35, 37-39).
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`Applicant was formed by Douglas Moore as its the sole member who was the Split Decision
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`bandleader and charged with paying the band members. Opposer’s Main Brief 33-34. (72
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`TTABVUE ¶34-35). Moore testified that he was advised by his accountant to form a separate
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`entity for tax purposes. Id. Each band member testified that they never believed that they had an
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`ownership interest in the mark and that there was never an assignment made to Doug Moore nor
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`Applicant. Opposer’s Main Brief 36-37. (72 TTABVUE ¶37-38). Moreover, Doug Moore
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`testified that if he were to leave the band he would lose all rights to the mark. Opposer’s Main
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`Brief 30. (72 TTABVUE ¶31). If we accept Applicant’s argument that the members of the
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`band owned the band name, and if Applicant were found to be the owner of the Mark, that would
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`leave Doug Moore, as sole member of Applicant, with effective ownership even after he left the
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`band. Moreover, no later member of the band would acquire rights to the mark. This is clearly
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`not the intended result of Bell nor Boogie Kings.
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`
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`III. ENFORCEABILITY OF THE MANAGEMENT AGREEMENT
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`Applicant argues that the management agreement was ambiguous because it failed to
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`specify Opponent’s exclusive ownership of the Applied for Mark. Applicant’s Brief 31-32. (73
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`TTABVUE ¶37-38). The management agreement specifies that “Musician acknowledges that
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`the names of the bands and that the trade secrets and confidential information are owned and
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`shall continue to be owned solely by the Manager.” See, Stott Decl. Exhibit 16 (25 TTABVUE
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`3). There is no ambiguity in this term as it applied to each musician who signed the agreement.
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`At the time each band member, with the exception of Jason Thomas, entered into the agreement,
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`they were members of the Split Decision band. Opposer’s Main Brief 30-31. (72 TTABVUE
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`¶31-32). Moreover, Applicant offers no evidence that none of the signatories to the agreement
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`did not know what they were signing. Even Douglas Moore testified in his deposition that he
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`knew what he was signing. Cross Examination of Douglas Moore (August 10, 2021) 34:10-11.
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`(54 TTABVUE ¶38). Thus, when each member signed the agreement, they knew that the “band
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`name” referred directly to Split Decision and no other band. Moreover, the management
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`agreement assigned all rights, including any band name for whom the musician performed with,
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`to Opposer. See, Stott Decl. Exhibit 16 (25 TTABVUE 3). This was even more clear as it was
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`common for Opposer to move musicians from one band he managed to another either as a fill-in
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`or a replacement for a leaving band member. Opposer’s Main Brief 27-28. (72 TTABVUE ¶28-
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`29). This was the case with several of the band members of Split Decision. Id. Applicant
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`further argues that there was no “meeting of the minds between the Band and Opposer that
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`Opposer was the exclusive owner of the Applied-for-Mark upon execution of these agreements”
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`Applicant offers no evidence to support this argument. The evidence is that since the musicians
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`had an opportunity to review the agreement with an attorney and then signed the agreement, a
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`meeting of the minds had occurred.
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`The Agreement specifies that “This Agreement shall be construed under and in
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`accordance with the laws of the Commonwealth of Pennsylvania.” See, Stott Decl. Exhibit 16
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`(25 TTABVUE 3). Under Pennsylvania law, a contract that is unambiguous on its face must be
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`interpreted according to the natural meaning of its terms, unless the contract contains a latent
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`ambiguity, whereupon extrinsic evidence may be admitted to establish the correct interpretation.
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`However, a claim of latent ambiguity must be based on a "contractual hook": the proffered
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`extrinsic evidence must support an alternative meaning of a specific term or terms contained in
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`the contract, rather than simply support a general claim that the parties meant something other
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`than what the contract says on its face. In other words, the ambiguity inquiry must be about the
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`parties' "linguistic reference" rather than about their expectations.” Duquesne Light Co. v.
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`Westinghouse Elec. Corp., 66 F.3d 604, 614 (3d Cir. 1995). Furthermore, a proffered alternative
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`meaning for the contractual hook must be reasonable; that is, it must be supported by contractual
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`evidence that goes beyond the party's claim that the contractual hook has a certain meaning, and
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`the interpretation cannot contradict the standard meaning of a term when the parties could have
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`easily used another term to convey this contradictory meaning. In determining whether latent
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`ambiguity exists in a facially unambiguous contract, a court must consider whether the extrinsic
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`evidence that the proponent of the alternative interpretation seeks to offer is the type of evidence
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`that could support a reasonable alternative interpretation of the contract, given the foregoing
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`principles. Finally, a court can consider an alternative interpretation of a facially unambiguous
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`contract term when the plain meaning interpretation of the contract would lead to an absurd and
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`unreasonable outcome. Bohler-Uddeholm Am., Inc. v. Ellwood Group, Inc., 247 F.3d 79, 88,
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`2001 U.S. App. LEXIS 6151, *1, 56 Fed. R. Evid. Serv. (Callaghan) 1127
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`The term “band name” is unambiguous. It only refers to a band name. Each musician
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`when he signed the agreement was in a band managed by Opposer. Opposer’s Main Brief 30-31.
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`(72 TTABVUE ¶32-33). Applicant offers no evidence that when they signed the agreement,
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`they did not know that they agreed that Opposer owned the band name. To argue that because
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`the agreement failed to specify a band name it is inherently ambiguous is specious. Moreover,
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`the plain meaning of “band name” in the context of the agreement is both logical and reasonabl