Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA550561
`ESTTA Tracking number:
`07/25/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92052155
`Plaintiff
`Treadwell Original Drifters, LLC
`DICKERSON M DOWNING
`CROWELL MORING LLP
`590 MADISON AVE FL 20
`NEW YORK, NY 10022
`UNITED STATES
`ddowning@crowell.com, edocket@crowell.com, ckornett@crowell.com
`Brief on Merits for Plaintiff
`Dickerson M. Downing
`edocket@crowell.com, jms@bskb.com, mailroom@bskb.com,
`ddowning@crowell.com, hcostello@crowell.com, ckornett@crowell.com
`/dmd/
`07/25/2013
`Petitioner's Trial Brief (Cancellation No. 92-052,155).pdf(1894866 bytes )
`92052155 Pet. Exh. 1-6 to Treadwell Test.PDF(5463838 bytes )
`92052155 Pet. Exh. 7-15 to Treadwell Test.PDF(5675921 bytes )
`92052155 Pet. Exh. 22 to Treadwell Test.PDF(160138 bytes )
`92052155 Pet. Exh. 23-24 to Treadwell Test.PDF(4223414 bytes )
`92052155 Pet. Exh. 25-27 to Treadwell Test.PDF(4874028 bytes )
`92052155 Pet. Exh. 28 to Treadwell Test.PDF(1798099 bytes )
`92052155 Pet. Exh. 29-32 to Treadwell Test.PDF(2866076 bytes )
`92052155 Pet. Exh. 33-37 to Treadwell Test.PDF(1483042 bytes )
`92052155 Pet. Exh. 38-46 to Treadwell Test.PDF(3009460 bytes )
`92052155 Pet. Exh. 47-55 to Treadwell Test.PDF(2360130 bytes )
`92052155 Reg. Exh. 1-9 to Treadwell Test.PDF(2298984 bytes )
`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Registration No. 3,649,096
`for the Mark BILL PINKNEY’S ORIGINAL DRIFTERS
`
`TREADWELL ORIGINAL DRIFTERS,
`
`LLC,
`
`V.
`
`Petitioner,
`
`ORIGINAL DRIFTERS, INC.,
`
`Registrant.
`
`Cancellation No.: 92-052,155
`
`PETITIONER’S TRIAL BRIEF
`
`Dickerson M. Downing, Esq.
`Honor Costello, Esq.
`CROWELL & MORING LLP
`
`590 Madison Avenue
`
`20th Floor
`
`New York, New York 10022-2524
`
`(212) 223-4000
`(212) 223-4134 (facsimile)
`
`Attorneys for Petitioner
`TREADWELL ORIGINAL DRIFTERS, LLC
`
`

`
`TABLE OF CONTENTS
`
`P_ag9
`
`I.
`
`INTRODUCTION .............................................................................................. .. 1
`
`II.
`
`RECORD ON APPEAL ..................................................................................... ..2
`
`A.
`
`Evidence Offered By Petitioner .............................................................. ..2
`
`1.
`
`2.
`
`Notice of Reliance ......................................................................... ..2
`
`Testimony ..................................................................................... .. 3
`
`B.
`
`Evidence Offered By Registrant ............................................................. ..4
`
`1.
`
`2.
`
`3.
`
`Notice of Reliance ......................................................................... ..4
`
`Testimony Taken in This Proceeding .......................................... ..4
`
`Testimony Taken in Prior Proceeding ......................................... .. 5
`
`III.
`
`THE REGISTRATION AND APPLICATIONS AT ISSUE ............................. ..6
`
`A.
`
`B.
`
`Registrant’s Registration ........................................................................ ..6
`
`Petitioner’s Trademark Applications ..................................................... ..6
`
`IV.
`
`STATEMENT OF FACTS ................................................................................. ..7
`
`A.
`
`Petitioner ................................................................................................ .. 7
`
`B
`
`C.
`
`D
`
`History of The Drifters and Its Many Performers ................................. ..9
`
`Control Exercised By George Treadwell Over The Drifters ............... .. 12
`
`Mr. Pinkney’s Time With The Drifters ................................................ .. 14
`
`1.
`
`2.
`
`3.
`
`4.
`
`Mr. Pinkney’s Role in the Early Drifters .................................. .. 14
`
`Mr. Pinkney Was an Employee of The Drifters, Inc. With
`No Ownership Rights in THE DRIFTERS Mark ..................... .. 15
`
`Mr. Pinkney Was Fired From The Drifters By George
`Treadwell .................................................................................... .. 16
`
`Many of the Hits of The Drifters Were Recorded After Mr.
`Pinkney Left the Group ............................................................. .. 19
`
`

`
`Cancellation No.: 92052155
`
`Page
`
`E.
`
`F.
`
`All of the Members of The Drifters Have Been Employees With
`No Rights in THE DRIFTERS Mark ................................................... .. 19
`
`The Drifters Recording Contracts, Television Appearances and
`Royalty Receipts ................................................................................... .. 21
`
`G.
`
`Recent Activities of The Drifters .......................................................... ..24
`
`1.
`
`The Decision to Move to London and Overseas Activities
`
`Continue to This Day ................................................................. ..24
`
`2.
`
`3.
`
`4.
`
`1993 White House Performance ................................................ ..26
`
`Licensed Use in US 2003 - 2005 ................................................ ..27
`
`The Drifters Litigation .............................................................. ..27
`
`H.
`
`Use by Registrant of BILL PINKNEY’S ORIGINAL DRIFTERS ...... ..28
`
`V.
`
`ARGUMENT .................................................................................................... .. 29
`
`A.
`
`Petitioner Has Rights in THE DRIFTERS Mark That Are
`Superior to the Rights of Registrant, If Any, in the BILL
`PINKNEY’S ORIGINAL DRIFTERS Mark ......................................... ..29
`
`1.
`
`2.
`
`3.
`
`Petitioner Has Rights in THE DRIFTERS Mark that Date
`Back to 1953 ............................................................................... ..29
`
`Registrant Was an Employee With No Rights in
`Variations of THE DRIFTERS Mark ........................................ .. 32
`
`To The Extent Registrant Has Any Rights in BILL
`PINKNEY’S ORIGINAL DRIFTERS, Those Rights Only
`Date Back to 1983 ...................................................................... ..32
`
`B.
`
`C.
`
`Petitioner Has Standing to Bring This Proceeding ............................. .. 33
`
`There is a Likelihood of Confusion Between BILL PINKNEY’S
`
`ORIGINAL DRIFTERS and THE DRIFTERS .................................... ..33
`
`1.
`
`2.
`
`In General .................................................................................. ..33
`
`THE DRIFTERS Mark Is Famous and Strong ......................... ..34
`
`-11-
`
`

`
`Cancellation No.: 92052155
`
`Page
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`The Goods, Channels of Trade, Class of Customers and
`Conditions of Sale Are Very Similar If Not Identical ............... .. 34
`
`Similarity/Dissimilarity of the Marks ....................................... .. 35
`
`Actual Confusion ........................................................................ .. 35
`
`Intent .......................................................................................... .. 36
`
`Balancing the Factors ................................................................ .. 36
`
`VI.
`
`CONCLUSION ................................................................................................ ..38
`
`-iii-
`
`

`
`TABLE OF AUTHORITIES
`
`CASES
`
`Page(s)
`
`Century 21 Real Estate Corp. v. Century Life ofAmerica,
`970 F.2d 874, 23 U.S.P.Q.2d 1698 (Fed Cir. 1992) .............................................................. ..35
`
`Cunningham v. Laser GolfCorp,
`222 F.3d 943, 55 U.S.P.Q.2d 1842 (Fed. Cir. 2000) ............................................................. ..33
`
`Federal Bureau ofInvestigation v. Societe: “M Bril & C0,,” 172 U.S.P.Q. 310 (TTAB
`1971) ...................................................................................................................................... "34
`
`Giammarese v. Delfno,
`197 U.S.P.Q. 162 (N.D. Ill. 1977) ......................................................................................... ..30
`
`Giant Food, Inc. v. Nation ’s Foodservice, Inc.,
`710 F.2d 1565, 218 U.S.P.Q. 390 (Fed. Cir. 1983) ............................................................... ..36
`
`Hard Rock Cafe’ Int ’l (USA) Inc. v. Elsea,
`56 U.S.P.Q.2d 1504 (TTAB 2000) ........................................................................................ ..36
`
`HEC Enters., Ltd v. Deep Purple, Inc.,
`213 U.S.P.Q. 991 (C.D. Cal. 1980) .................................................................................. ..30, 31
`
`Hewlett-Packard Co. v. Packard Press Inc.,
`62 U.S.P.Q.2d 1001 (Fed. Cir. 2002) ..................................................................................... ..36
`
`Hilson Research, Inc. v. Soc 32for Human Resource Mgmt.,
`27 U.S.P.Q.2d 1423 (TTAB 1993) ........................................................................................ ..34
`
`In re E.I. du Pont de Nemours and C0,,
`476 F.2d 1357, 177 U.S.P.Q. 563 (CCPA 1973) ................................................................... ..33
`
`In re Majestic Distilling Co. Inc.,
`315 F.3d 1311, 65 U.S.P.Q.2d 1201 (Fed. Cir. 2003) ..................................................... ..33, 34
`
`.I.C. Hall Co. v. Hallmark Cards, Inc.,
`
`340 F.2d 960, 144 U.S.P.Q. 435 (CCPA 1965) ..................................................................... ..35
`
`1
`Kingsmen v. K-Tel Int ’l, Ltd,
`557 F. Supp. 178 (S.D.N.Y. 1983) .................................................................................. ..30, 31
`
`Larry Marshak v. Faye Treadwell,
`58 F. Supp. 2d 551 (S.D.N.Y. 1999) .................................................................................. ..9, 31
`
`Lipton Industries, Inc. v. Ralston Purina Co.,
`670 F.2d 1024, 213 U.S.P.Q. 185 (CCPA 1982) ................................................................... ..33
`
`-1V_
`
`

`
`Cancellation No.: 92052155
`
`Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En,
`1772, 396 F.3d 1369, 73 U.S.P.Q.2d 1689 (Fed. Cir. 2005) ................................................. ..35
`
`Rick v. Buchansky,
`609 F. Supp. 1522 (S.D.N.Y. 1985) ....................................................................................... ..29
`
`Robi v. Reed,
`
`173 F.3d 736 (9th Cir. 1999) ................................................................................................. ..30
`
`Sealed Air Corp. v. Scott Paper Co.,
`190 U.S.P.Q. 106 (TTAB 1975) ............................................................................................ ..35
`
`W. R. Grace & Co. v. HerbertJ. Meyer Industries, Inc.,
`190 U.S.P.Q. 308 (TTAB 1976) ............................................................................................ ..36
`
`OTHER AUTHORITIES
`
`37 CFR § 2.120(j) .......................................................................................................................... ..3
`
`37 CFR § 2.122(6) ...................................................................................................................... ..2, 3
`
`37 CFR § 2.122(1) .......................................................................................................................... ..5
`
`37 CFR § 2.116(a) ...................................................................................................................... ..5
`
`Fed. R. Civ. P. 32(a)(8) .............................................................................................................. ..5
`
`Fed. R. Evid. 804(a)(4) .............................................................................................................. ..5
`
`Fed. R. Evid. 804(b)(1) .................................................................................................................. ..5
`
`TBMP 704.03(b)(2) .................................................................................................................... ..2
`
`TBMP 704.08(b) ......................................................................................................................... ..3
`
`TBMP 704.09 .............................................................................................................................. ..3
`
`

`
`I.
`
`INTRODUCTION
`
`This proceeding is brought by Petitioner Treadwell Original Drifters, LLC
`
`(“Petitioner” or “Treadwell”),
`
`the exclusive owner of the name and mark THE
`
`DRIFTERS, seeking to cancel
`
`the registration owned by Registrant Original
`
`Drifters,
`
`Inc.
`
`(“Registrant”)
`
`for BILL PINKNEY’S ORIGINAL DRIFTERS for
`
`“entertainment services in the nature of live performances by a musical group,”
`
`(Reg. No. 3,649,096).
`
`The Drifters, as both sides will agree, were one of the great vocal groups in
`
`the early days of rock and roll. From the early ‘50s and into the ‘60s and beyond,
`
`The Drifters turned out a string of hits including, “White Christmas,” “Under the
`
`Boardwalk,” “Up On the Roof’ and “Save the Last Dance for Me,” that are still
`
`played today.
`
`Although The Drifters produced a constant stream of popular music,
`
`the
`
`lineup of performers has constantly changed as old performers left and new
`
`performers joined. These performers included Bill Pinkney, the predecessor-in-
`
`interest to Registrant.
`
`As the band members came and went, the one element that always remained
`
`the same was the control exercised over the group by the family of George
`
`Treadwell and the companies run by the Treadwells including, most recently,
`
`Petitioner. Mr. Treadwell was The Drifters’ manager from 1953 until his death in
`
`1967. After his death, his wife Faye Treadwell assumed that role and now Tina
`
`Treadwell,
`
`their daughter,
`
`is the President of Petitioner.
`
`It was and is the
`
`Treadwells who controlled The Drifters, their sound and their business dealings
`
`

`
`Cancellation No.: 92052155
`
`regardless of the composition of the group. It was and is the Treadwells who made
`
`the decisions as to who was in the group and who was not.
`
`It was and is the
`
`Treadwells and the Treadwell-controlled companies, including Petitioner, who have
`
`always owned THE DRIFTERS Mark.
`
`The Various members of the group, although Very talented, were all
`
`employees of companies controlled by the Treadwell family and all of them signed
`
`employment
`
`agreements
`
`acknowledging
`
`their
`
`employment
`
`status
`
`and
`
`acknowledging that they did not own any rights in THE DRIFTERS Mark. This
`
`included Mr. Pinkney.
`
`Petitioner has the highest respect for Mr. Pinkney and for the role Mr.
`
`Pinkney played in the history of The Drifters when he was a member of the group in
`
`the 1950s. However, it is Petitioner who owns THE DRIFTERS Mark and, as a
`
`result, this cancellation proceeding should be sustained and the registration for
`
`BILL PINKNEY’S ORIGINAL DRIFTERS should be cancelled.
`
`II.
`
`RECORD ON APPEAL
`
`The Record on Appeal consists of the following:
`
`A.
`
`Evidence Offered By Petitioner
`
`1.
`
`o
`
`Notice of Reliance
`
`Petitioner’s Amended First Notice of Reliance:
`
`Petitioner’s
`
`Trademark Applications, filed in accordance with 37 CFR § 2.122(e) and TBMP
`
`704.03(b)(2), consisting of copies of the file histories and related official status
`
`

`
`Cancellation No.: 92052155
`
`documents
`
`for Petitioner’s pending trademark applications
`
`to register THE
`
`DRIFTERS as printed from the USPTO database at www.uspto.gov.
`
`0
`
`Petitioner’s Amended Second Notice of Reliance:
`
`Internet
`
`Materials,
`
`filed in accordance with 37 CFR § 2.122(e) and TBMP 704.08(b),
`
`consisting of copies of pages taken from the Internet website with the home page at
`
`http.'//www.thedrifters.co.uk. This website is operated by a licensee of Petitioner
`
`for THE DRIFTERS Mark and is relevant to show examples of some of the current
`
`uses of the mark.
`
`0
`
`Petitioner’s Third Notice of Reliance: Deposition Transcript of
`
`Maxine Porter, filed in accordance with 37 CFR § 2.1200) and TBMP 704.09,
`
`consisting of excerpts and exhibits from the discovery deposition transcript of
`
`Maxine Porter, an Officer of the Registrant, as taken on August 4, 2011.
`
`2.
`
`Testimony
`
`The transcript of the testimony of Tina Treadwell was taken on January 6,
`
`2012. (“Treadwe1lTest.”).
`
`Tina Treadwell is the President of Petitioner. As she testified, Petitioner
`
`manages THE DRIFTERS brand and the licensing of the name.
`
`(Treadwell Test.
`
`4:8-4:22). Ms. Treadwell is the daughter of George Treadwell, the original manager
`of The Drifters and Faye Treadwell.
`
`The testimony of Ms. Treadwell was based on the corporate records of
`
`Petitioner as successor—in-interest to all relevant corporate entities and her own
`
`personal knowledge. As Ms. Treadwell testified, although she was born in 1953 and
`
`-3-
`
`

`
`Cancellation No.: 92052155
`
`became President of Petitioner in 2005, she has been involved with The Drifters her
`
`entire life as the daughter of George and Faye Treadwell. She personally knew a
`
`number of the members of The Drifters, including Clyde McPhatter, Johnny Moore,
`
`Charlie Thomas, Ben E. King and Bill Davis. (Treadwell Test. 9:18-11:4).
`
`In addition, Ms. Treadwell has seen hundreds of performances by The
`
`Drifters all over the world including Hong Kong, Ireland, Bermuda, the UK and
`
`across the United States and has seen them perform on television shows, including
`
`The Ed Sullivan Show, The Dick Clark Show, American Bandstand and others-
`
`(Treadwell Test. 1 10: 16-1 11:17).
`
`B.
`
`Evidence Offered By Registrant
`
`1.
`
`Notice of Reliance
`
`None.
`
`2.
`
`0
`
`Testimony Taken in This Proceeding
`
`The testimony of Maxine Porter (Volumes 1 - 4)
`
`taken by
`
`Registrant in this proceeding on March 21, 2012. (“Porter Test. Vol. __”).
`
`0
`
`The Confidential Testimony of Maxine Porter (Volume 5 of 5)
`
`taken by Registrant in this proceeding on March 21, 2012.
`
`[Note: This has been
`
`incorrectly labeled as it includes significant non-confidential testimony].
`
`(“Porter
`
`Test. Vol. 5”).
`
`0
`
`The Testimony of Morgan Bobby Robinson taken by Registrant
`
`in this proceeding on March 21, 2012. (“Robinson Test.”).
`
`

`
`Cancellation N0.: 92052155
`
`0
`
`The Testimony of Earthalee Pinkney Johnson taken by
`
`Registrant in this proceeding on March 21, 2012. (“Johnson Test.”).
`
`3.
`
`0
`
`Testimony Taken in Prior Proceedingl
`
`The testimony of Bill Pinkney taken on behalf of the Opposer on
`
`September 18, 2003 in the matter of Willie B. Pinkney v. Treadwell’s Drifters, Inc.,
`
`Opposition No. 91-151,984.? (“Pinkney Prior Test.”).
`
`0
`
`The testimony of Isiah Council taken on behalf of the Opposer
`
`on September 18, 2003 in the Prior Proceeding.
`
`(“Council Prior Test.”).
`
`0
`
`The testimony of Charles Cockerham taken on behalf of the
`
`Opposer on September 18, 2003 in the Prior Proceeding. (“Cockerham Prior Test.’’).
`
`0
`
`The testimony of Maxine Porter taken on behalf of the Opposer
`
`on September 18, 2003 in the Prior Proceeding. (“Porter Prior Test.”).
`
`0
`
`The testimony of Charlie Thomas taken on behalf of the Opposer
`
`on September 18, 2003 in the Prior Proceeding.
`
`(“Thomas Prior Test.”).
`
`1 Pursuant to the Order of the Trademark Trial and Appeal Board (TTAB) issued
`December 31, 2012, granting the Motion of the Original Drifters, Inc. pursuant to 37 CFR §
`2.116(a) and 2.122(f), Fed. R. Civ. P. 32(a)(8) and Fed. R. Evid. 804(a)(4) and 804(b)(1),
`Registrant was permitted to rely on the testimony given in a prior proceeding by the
`individuals listed.
`
`2 Hereinafter referred to as the “Prior Proceeding.”
`
`

`
`
`
`Cancellation No.: 92052155
`
`III.
`
`THE REGISTRATION AND APPLICATIONS AT ISSUE
`
`A.
`
`Registrant’s Registration
`
`Petitioner seeks to cancel the registration owned by Registrant for the mark
`
`BILL PINKNEY’S ORIGINAL DRIFTERS for “entertainment services in the nature
`
`of live performances by a musical group,” (Reg. No. 3,649,096). The relevant
`
`application to register the mark was filed on April 16, 1998 (SN 75-469,250) and
`
`registration issued on July 7, 2009. The registration claims a date of first use and
`
`date of first use in commerce of 1958, but Petitioner will demonstrate the date is
`
`incorrect. The application to register the mark was originally filed by Bill Pinkney
`
`and was purportedly assigned, by Mr. Pinkney’s estate, to the Registrant on August
`
`1, 2007.
`
`B.
`
`Petitioner’s Trademark Applications
`
`Petitioner is the owner of two United States trademark applications to
`
`register THE DRIFTERS.
`
`(See Petitioner’s Amended First Notice of Reliance).
`
`Petitioner is owner of United States application to register THE DRIFTERS
`
`for “prerecorded records, audio tapes and compact discs featuring music and
`
`electronic music,” in International Class 9 and “entertainment services namely live
`
`performances by a musical band in presentation of musical performances; music
`
`publishing services; using production services,” in International Class 41 (U.S.
`
`Serial No. 77-119,123). This application was filed on February 28, 2007 and is
`
`based on a date of first use in both classes of January 1, 1953.
`
`

`
`
`
`Cancellation No.: 92052155
`
`Petitioner also has acquired, by assignment, a second application which seeks
`
`to register the mark THE DRIFTERS for “downloadable music in electronic format
`
`via global computer networks; computer software for processing music in digital
`
`format; musical
`
`sound recordings; prerecorded videotapes
`
`featuring musical
`
`performances; parts and fitting for all the aforesaid goods,” in International Class 9
`
`and “presentation of musical performance services, entertainment, namely live
`
`band performance; entertainment, live music concert series; entertainment in the
`
`nature
`
`of dance performance
`
`services; providing information,
`
`advice
`
`and
`
`consultancy in relation to the aforementioned,” in International Class 41 (U.S.
`
`Serial. No. 77-097,306). This application was filed on February 1, 2007 and is based
`
`on an intent to use the mark. This application was originally filed by The Drifters 1
`
`UK Ltd. and was assigned to Treadwell Original Drifters, LLC on or about April 30,
`
`2008 following the resolution of the dispute with Petitioner.
`
`Both of
`
`the above-referenced applications have been suspended, and
`
`effectively refused registration, by the United States Patent and Trademark Office,
`
`in part, on the ground that they are deemed to be confusingly similar to the
`
`application owned by Registrant that has become the BILL PINKNEY’S ORIGINAL
`
`DRIFTERS Registration. See Petitioner’s Amended First Notice of Reliance.
`
`IV.
`
`STATEMENT OF FACTS
`
`A.
`
`Petitioner
`
`Tina Treadwell is the President of Petitioner. As she testified, Petitioner
`
`owns THE DRIFTERS trademark and manages THE DRIFTERS brand and the
`
`

`
`Cancellation No.1 92052155
`
`licensing of the brand.
`
`(Treadwell Test. 4:8-4:22). Ms. Treadwell is the daughter of
`
`George Treadwell,
`
`the original manager of The Drifters and Faye Treadwell.
`
`(Treadwell Test. 4:23-5:5; 29:13-29:29).
`
`As Ms. Treadwell
`
`testified, Petitioner is the successor-in-interest, with
`
`respect to the ownership of THE DRIFTERS Mark, to a number of predecessor
`
`corporations and entities that date back to her father, George Treadwell, in 1953.
`
`The corporate entities include:
`
`(1) The Drifters, Inc. which was incorporated in the
`
`State of New York on or about November 18, 1954 (see Pet. Exh. P-34);
`
`(2) Treadwell’s Drifters, Inc. which was incorporated in the State of New Jersey in
`
`approximately in 1976 (Pet. Exh. P-38) and a later successor company incorporated
`
`under the same name in the State of New Jersey in 1993 (Pet. Exh. P-39); and
`
`(3) Petitioner Treadwell Original Drifters, LLC, a company incorporated in the
`
`State of California in 2005 (Pet. Exh. P-40).
`
`As Ms. Treadwell also testified, George Treadwell founded The Drifters with
`
`Clyde McPhatter and managed them until he died in 1967. After his death, Faye
`
`Treadwell took over the business of what was then Drifters, Inc., the corporate
`
`entity behind The Drifters group. When Faye Treadwell became ill in 2001, Tina
`
`Treadwell began to assume more duties with a successor company until she took
`
`over as President in 2005.
`
`(Treadwell Test. 7:19-9:10). Prior to his death in 1967,
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`George Treadwell executed his last will and testament bequeathing all his property
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`of whatever nature and description to his wife, Faye Treadwell.
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`(Pet. Exh. P-43).
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`Cancellation No.: 92052155
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`Prior to her death, Faye Treadwell assigned all of her rights and interest
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`in
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`Petitioner to Tina Treadwell. (Pet. Exh. P-41).
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`B.
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`History of The Drifters and Its Many Performers
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`The Drifters were created in 1953 by Clyde McPhatter and George Treadwell
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`under the auspices of Ahmet Ertegun,
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`the founder of Atlantic Records.
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`The
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`corporate entity was formed with Mr. Treadwell and Mr. McPhatter as executives
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`and Mr. Treadwell as the manager. Ms. Treadwell testified that George Treadwell
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`officially became manager of the group in 1953. For the purposes of full disclosure,
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`Petitioner notes that in the Opinion in the case entitled Larry Marshak v. Faye
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`Treadwell, 58 F. Supp. 2d 551, 554 (S.D.N.Y. 1999) (‘Marshak 1”), Judge Politan of
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`the Southern District of New York found that Mr. Treadwell officially became
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`manager in 1954 shortly after The Drifters first appeared in New York in 1953.
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`Petitioner submits that it is irrelevant whether Mr. Treadwell became manager in
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`1953 or 1954 as he clearly succeeded to all rights in the trademark that date back to
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`1953 and either date is earlier than the claimed, but not proven date of 1958 for
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`BILL PINKNEY’S ORIGINAL DRIFTERS. Mr. McPhatter left The Drifters in
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`about May of 1954 and sold his share to Mr. Treadwell. Mr. Ertegun continued to
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`work with The Drifters on their songs while they recorded with Atlantic Records.
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`(Treadwell Test. 4:23-5:5; 25:6-25:23; 26:14-27:24; Pet. Exh. P—6).
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`The Drifters have been a tremendous success. Since 1953, The Drifters have
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`sold in excess of 50 million records.
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`(Treadwell Test. 30:12-30:18). This includes
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`such hits as “White Christmas,” “Under the Boardwalk,” “Up On the Roof’ and
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`Cancellation No.: 92052155
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`“Save the Last Dance for Me.” (Treadwell Test. 16:3-17:2, 30:12-35:14; Pet. Exh. P-
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`4). The Drifters received a number of Gold Records — the industry standard for a hit
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`— for such songs as “Save the Last Dance for Me” and “There Goes My Baby,” the
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`latter of which was co-written by George Treadwell.
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`(Treadwell Test. 14:19-15:18;
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`Pet. Exh. P-2). They also received at least one nomination for a Grammy Award for
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`“Up On the Roof’ in 1962. (Treadwell Test. 15:19-17:2; Pet. Exh. P-3).
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`The Drifters have been in existence since 1953 and their records are still
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`being sold in the United States and played on the radio in this country. Petitioner
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`and its predecessors have received royalties from the sale of records in the United
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`States from 1954 until the current date. (Treadwell Test. 5:6-7:18).
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`As Ms Treadwell testified, there has never been a moment in the last fifty
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`years when recordings by The Drifters were not available for purchase in the
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`United States or being played on the radio and during that entire time period the
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`Treadwell interests have received royalties from those recordings.
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`(Treadwell Test.
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`160:14-161:4).
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`While
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`their
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`sound remained consistently great,
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`their personnel was
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`constantly changing. Ms. Treadwell estimates that there have been over 50 artists
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`who have performed as part of The Drifters.
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`(Treadwell Test. 18:9-20:9; 26:19-
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`27:10; 28:17-29:5; 30:12-30:18; Reg. Exh. D-5, D-6).
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`Over the years, a number of remarkable performers have been members of
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`The Drifters. They included, Bill Pinkney, who was part of the first lineup with The
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`Drifters and who performed with The Drifters in the mid 1950s.
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`(Treadwell 35:16-
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`-10-
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`Cancellation No.: 92052155
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`36:17). Also included were (1)
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`the brothers Andrew Thrasher and Gerhart
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`Thrasher, who left the group in the 1950s; (2) Clyde Brown, who Worked with The
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`Drifters for five or six years during the 1970s; (3) Bill Frederick, who was with the
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`group approximately five years; (4) Rudy Lewis was only with the group for three or
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`four years, but he was part of a Golden Era of The Drifters and sang a number of
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`their hits; (5) Johnny Moore, who was a godfather to Tina Treadwell, who was the
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`lead singer on “Up on the Roof,” “On Broadway” and ‘‘I Will Take You Home”; and
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`(6) Ben E. King was also a member of the group for a period of time.
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`(Treadwell
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`Test. 30:12-35:14).
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`A number of the former members of The Drifters have been inducted into the
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`Rock and Roll Hall of Fame for their work with The Drifters including Bill Pinkney,
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`Gerhart Thrasher, Clyde McPhatter, Johnny Moore, Rudy Lewis and Ben E. King.
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`(Treadwell Test. 31:22-36:12).
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`Petitioner’s Exhibit P-5 contains a number of photographs of the members of
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`The Drifters at various points in time and is further evidence of the change in
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`personnel over time. One photograph depicts the five members of The Drifters that
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`were performing from approximately 1958 through the early 1960s, namely, Gene
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`Pearson,
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`Johnny Terry, Charles Thomas,
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`Johnny Moore and Billy Davis.
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`(Treadwell Test. 17 :3-17 :20). The exhibit also included publicity photos of the other
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`members of the band over time. The current members of The Drifters, who continue
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`to tour in the UK and in other locations outside the United States include Ryan
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`-11-
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`Cancellation No.: 92052155
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`King, Michael Williams, Carlton Powell and Damion Charles.
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`(See Petitioner’s
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`Amended Second Notice of Reliance; Pet. Exh. P-6).
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`C.
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`Control Exercised By George Treadwell Over The Drifters
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`During his time as manager, George Treadwell exercised Virtual total control
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`over The Drifters. He hired the performers. He fired the performers. He chose the
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`music. He was involved in arranging the songs and, in some cases, co-wrote the
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`songs. He selected what they wore. He had creative control over the group and was
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`in charge of maintaining the integrity of the brand.
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`(Treadwell Test. 134:11-
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`136:19). As Ms. Treadwell testified, The Drifters were never a group that just
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`started as four guys getting together and saying we’re going to be The Drifters.
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`It
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`was a corporate entity founded by Clyde McPhatter and George Treadwell and the
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`integrity of the brand was continued after George Treadwell’s death by Faye
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`Treadwell. (Treadwell Test. 42:20-43:8; 135:18-136:3).
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`The Drifters were always built around the lead singer. At first that lead
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`singer was Clyde McPhatter. Over the years, there was a succession of other lead
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`singers including Ben E. King and Johnny Moore. At one point, Mr. Treadwell
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`simply hired the Five Crowns, of which Ben E. King was a member, to substitute for
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`the existing members of The Drifters. (Treadwell Test. 137 :20-139214).
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`Not all of the performers liked that type of control being exercised by the
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`Treadwells. However, no one suggested that the Treadwells did not have the
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`authority to exercise this degree of control. (Treadwell Test. 136:17-137:9).
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`-12-
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`Cancellation No.: 92052155
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`In his book entitled, “Drifters 1: Bill Pinkney Celebrating 50 Years,” Pinkney
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`spoke disparagingly of the way Mr. Treadwell continually changed personnel in the
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`group (Reg. Exh. R-6 at 86):
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`...that personnel revolving door kept going like in the 50’s
`because of bad management wanting to own the
`entertainers,
`to not pay them decently, and to control
`their minds.
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`XXX
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`So they would use a guy just long enough to record him a
`lot and then replace him.
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`Petitioner certainly does not agree with Mr. Pinkney’s characterizations of
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`management/George Treadwell during that period. However, Petitioner notes that
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`the one thing Mr. Pinkney does not say is that the management did not have the
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`authority to take that action.
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`The turnover of performers has been widely reported. For example, an article
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`taken from www.history.com/this-day-in-history reports that Clyde McPhatter sold
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`his stake in The Drifters name to his sole partner and the group’s manager George
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`Treadwell and from that point forward “Treadwell ran The Drifters as a business.”
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`The article also reports that following McPhatter’s departure in 1956, “Treadwell
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`ran through six different lead singers in two years before firing the entire group in
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`1958 and starting from scratch.” The report goes on to note some of the other lineup
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`changes reported to have occurred in the band.
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`(Treadwell Test. 41:9—43:11; Pet.
`
`Exh. P-7).
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`-13-
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`

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`Cancellation No.: 92052155
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`Similarly as the court in Marshak I noted at 551 F. Supp. 2d at 554, 555:
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`Since the group’s inception, The Drifters has always been
`comprised of a constantly changing cast of singers...
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`XXX
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`It was undisputed that Mr. Treadwell exercised exclusive
`managerial control over the group, without interruption,
`from 1954 until his death in 1967.
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`D. Mr. Pinkney’s Time With The Drifters
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`1.
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`Mr. Pinkney’s Role in the Early Drifters
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`As noted earlier, Petitioner does not dispute the fact that Bill Pinkney played
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`an important role in the early history of The Drifters. To the contrary, on its