ESTTA Tracking number:
`
`ESTTA1336610
`
`Filing date:
`
`01/26/2024
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`92076883
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Plaintiff
`The Plimsouls
`
`CHRIS PAPARELLA
`STEPTOE & JOHNSON LLP
`1114 AVENUE OF THE AMERICAS
`NEW YORK, NY 10036
`UNITED STATES
`Primary email: cpaparella@steptoe.com
`Secondary email(s): mallan@steptoe.com, jfryer@steptoe.com, jbenash-
`er@steptoe.com
`212-506-3900
`
`Brief on Merits for Plaintiff
`
`Chris Paparella
`
`ipdocketing@steptoe.com, cpaparella@steptoe.com, mallan@steptoe.com,
`jbenasher@steptoe.com, jfryer@steptoe.com, trademark@steptoe.com
`
`/Chris Paparella/
`
`01/26/2024
`
`Petitioners Trial Brief.pdf(296649 bytes )
`Kathryn Morrison Pahoa Declaration ISO Trial Brief.pdf(103109 bytes )
`Paparella Declaration ISO Trial Brief.pdf(116601 bytes )
`Exhibit A.pdf(322195 bytes )
`Exhibit B.pdf(268115 bytes )
`Exhibit C.pdf(274649 bytes )
`Exhibit D.pdf(273693 bytes )
`Exhibit E.pdf(388863 bytes )
`Exhibit F.pdf(322290 bytes )
`Exhibit G.pdf(346627 bytes )
`Exhibit H.pdf(307486 bytes )
`Exhibit I.pdf(463590 bytes )
`Exhibit J.pdf(477847 bytes )
`Exhibit K.pdf(334379 bytes )
`Exhibit L.pdf(358586 bytes )
`Exhibit M.pdf(341742 bytes )
`Exhibit N.pdf(1757426 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Registration No. 4,940,705
`Date of Issue: April 19, 2016
`
`
`
`
`
`The Plimsouls,
`
`
`
`
`
`
`
`
`v.
`
`
`Edward Munoz,
`
`
`
`
`
`
`
`
`
`
`
`
`Cancellation No. 92076883
`
`
`
`
`
`Petitioner,
`
`Registrant.
`
`
`Honorable Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`
`PETITIONER’S TRIAL BRIEF
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`
`
`PRELIMINARY STATEMENT ........................................................................................ 1 
`
`STATEMENT OF ISSUE................................................................................................... 3 
`
`EVIDENCE OF RECORD ................................................................................................. 3 
`
`FACTUAL BACKGROUND ............................................................................................. 4 
`
`I. 
`
`The Plimsouls Partnership Has Pursued Its Business from 1979 to the Present ... 4 
`A.  Early 80s Heyday: Studio Albums, Touring, and Commercial Peak ............... 5 
`B.  1985-1994: First Recording/Performing Hiatus & More Album Releases ...... 6 
`C.  1994-1997: The Plimsouls Resume Recording and Performing Live .............. 7 
`D.  1997-2005: Second Recording/Performing Hiatus ........................................... 8 
`E.  2005-2007: Second Reunion Followed by Third Performing Hiatus ............... 8 
`F.  2007-Present: Third Recording/Performing Hiatus & More Album Releases . 9 
`II.  Mr. Munoz Registers the Plimsouls Mark in his Own Name ............................... 9 
`III.  Mr. Munoz Creates a Fake “Plimsouls” .............................................................. 11 
`ARGUMENT .................................................................................................................... 13 
`
`The Plimsouls is a Live Partnership with Standing to Bring This Case .............. 13 
`I. 
`II.  Mr. Munoz’s Registration Is Void Ab Initio Because the Plimsouls Partnership
`Owns the Mark .................................................................................................... 16 
`A.  The Plimsouls Partnership Has Been Active in the Music Business Since 1979
`......................................................................................................................... 17 
`B.  The Plimsouls Partnership Did Not Acquiesce to Mr. Munoz’s Registration 18 
`C.  The Plimsouls Partnership Never Abandoned the Mark ................................. 20 
`III.  Mr. Munoz’s Registration and Use of the Mark Has Caused Confusion ............ 22 
`IV.  Mr. Munoz’s Defenses Are Groundless .............................................................. 24 
`A.  The Plimsouls Partnership Has Standing ........................................................ 24 
`B.  The Abandonment Defense Fails .................................................................... 24 
`C.  The Acquiescence Defense Fails .................................................................... 25 
`D.  There Was No Laches ..................................................................................... 26 
`E.  Mr. Munoz’s Use of the Mark Is Confusing and Involves Misrepresentations
`......................................................................................................................... 27 
`CONCLUSION ................................................................................................................. 27 
`
`
`
`
`
`
`
`
`
`i
`
`

`

`TABLE OF AUTHORITIES
`
`
`
`
`
`Page(s)
`
`Cases
`
`Bell v. Streetwise Recs., Ltd.,
`640 F. Supp. 575 (D. Mass. 1986) (Ex. L)...............................................................................25
`
`Columbia Mill Co. v. Alcorn,
`150 U.S. 460 (1893) .................................................................................................................22
`
`Commodores Ent’mt Corp. v. McClary,
`879 F.3d 1114 (11th Cir. 2018) (Ex. I) ........................................................................16, 17, 22
`
`Corcamore, LLC v. SFM, LLC,
`978 F.3d 1298 (Fed. Cir. 2020)................................................................................................13
`
`Complaint, Cummings v. Kale,
`No. 2:23-cv-9130, Dkt. 1 (C.D. Fla. filed Oct. 30, 2023) (Ex. N) ...........................................17
`
`HEC Enters. v. Deep Purple, Inc.,
`No. 80-02532, 1980 WL 39084 (C.D. Cal. 1980) (Ex. H) ....................................17, 20, 23, 25
`
`Herbko Int’l, Inc. v. Kappa Books, Inc.,
`308 F.3d 1156 (Fed. Cir. 2002)................................................................................................22
`
`Iodent Chemical Co. v. Dart Drug Corp.,
`207 USPQ 602 (T.T.A.B.1980) .........................................................................................18, 26
`
`Kingsmen v. K-Tel Int’l Ltd.,
`557 F. Supp. 178 (S.D.N.Y. 1983) (Ex. G)..................................................................17, 22, 23
`
`Lindsey v. Starwood Hotels & Resorts WorldWide, Inc.,
`No. 02-cv-3822 (GAF), 2008 WL 11363357 (C.D. Cal. June 13, 2008) (Ex. E) ....................14
`
`Lyons v. Am. Coll. of Veterinary Sports Med. & Rehab.,
`859 F.3d 1023 (Fed. Cir. 2017)................................................................................................16
`
`Marshak v. Green,
`746 F.2d 927 (2d Cir. 1984) (Ex. K) ..................................................................................23, 25
`
`Marshak v. Schaffner,
`No. 11-cv-1104 (DLC), 2012 WL 1658393 (S.D.N.Y. May 11, 2012) (Ex. M) .....................25
`
`Marshak v. Treadwell,
`58 F. Supp. 2d 551 (D.N.J. 1999) (Ex. J) ................................................................................21
`
`
`
`ii
`
`

`

`
`
`Meundies, Inc. v. Drew Massey,
`No. 9205558, 2014 WL 4219121 (T.T.A.B. Aug. 13, 2014) ..................................................13
`
`Moss v. Beckett,
`No. 2:18-cv-04784 (SVW)(GJS), 2018 WL 6167916 (C.D. Cal. Sept. 24,
`2018) (Ex. F) ............................................................................................................................16
`
`Nahshin v. Product Source Int’l LLC,
`107 U.S.P.Q.2d 1257 (T.T.A.B. 2013) ....................................................................................22
`
`SCSA Grp., Inc. v. Worden,
`No. G058859, 2021 WL 2644957 (Cal. Ct. App. June 28, 2021) (unpublished)
`(Ex. A)......................................................................................................................................13
`
`Wallpaper Mfrs., Ltd. v. Crown Wallcovering Corp.,
`680 F.2d 755 (C.C.P.A. 1982) .................................................................................................24
`
`Wonderbread 5 v. Gilles,
`115 U.S.P.Q.2d 1296 (T.T.A.B. 2015) ....................................................................2, 14, 16, 22
`
`Woodstock’s Enters. (California) v. Woodstock’s Enters. (Oregon),
`43 U.S.P.Q.2d 1440, 1997 WL 440268 (T.T.A.B. 1997), aff’d 152 F.3d 942
`(Fed. Cir. 1998) ........................................................................................................................24
`
`Statutes
`
`15 U.S.C. § 1064 ..................................................................................................................1, 13, 15
`
`15 U.S.C. § 1127 ............................................................................................................................24
`
`Cal. Corp. Code § 16201 (Ex. B) ...................................................................................................14
`
`Cal. Corp. Code § 16202 (Ex. D)...................................................................................................14
`
`Cal. Corp. Code § 16307 (Ex. C) ...................................................................................................14
`
`
`
`
`
`
`
`
`
`
`
`iii
`
`

`

`
`
`Pursuant to 37 C.F.R. § 2.128(a), Petitioner the Plimsouls hereby files its Trial Brief in this
`
`proceeding. The Plimsouls respectfully requests that its Petition for Cancellation of U.S.
`
`Trademark Registration No. 4,940,705 be granted on the basis of non-ownership and likelihood of
`
`confusion pursuant to Section 14 of the Trademark Act of 1946, 15 U.S.C. § 1064.
`
`PRELIMINARY STATEMENT
`
`Petitioner the Plimsouls is a four-member California partnership that has pursued its
`
`business in the music industry for 45 years. In 2015, one member of the partnership—Registrant
`
`Edward Munoz—chose to register the group’s name for himself, falsely representing that he alone
`
`owned the name. Mr. Munoz’s goal was to falsely hold himself out as “The Plimsouls” to the
`
`public and trade on a reputation the Plimsouls partnership had spent years developing. Mr. Munoz
`
`did not own the “Plimsouls” mark; the Plimsouls partnership does. Thus, the Plimsouls partnership
`
`commenced this action to cancel Mr. Munoz’s registration.
`
`The Plimsouls is a “pioneering rock band of the New Wave era,” famous for its 1982 hit
`
`“A Million Miles Away” and influence on the “power pop” genre.1 The Plimsouls has always
`
`been a California partnership. The partnership was originally formed by Peter Case (lead singer,
`
`songwriter, and guitar player), David Pahoa (bassist), and Louis Ramirez (drummer). Registrant
`
`Edward Munoz later joined the partnership and became the band’s lead guitarist. Messrs. Case,
`
`Pahoa, and Ramirez began playing together as the Plimsouls in early 1979; Mr. Munoz joined later
`
`that year. Since they formed, the Plimsouls have toured periodically, released studio and live
`
`recordings, licensed their recorded music for release on various formats (including vinyl, cassette
`
`tape, compact disc, and electronic download and streaming), protected their intellectual property,
`
`
`1 Dkt. 26, Exhibit A to the Declaration of Chris Paparella, dated April 14, 2023 (North County Times, Jan. 19,
`1996). Hereinafter, all citations to “Dkt. 26, Ex. __” refer to documents annexed to the Declaration of Chris
`Paparella filed with Petitioners’ Motion for Summary Judgment.
`
`
`
`

`

`
`
`and earned revenue as a partnership. Mr. Pahoa passed away on September 22, 2023. Mr. Pahoa’s
`
`wife and five children inherited his share of the Plimsouls partnership.
`
`The Plimsouls commenced this proceeding because Registrant Edward Munoz obtained a
`
`trademark registration for the band’s name and is now falsely holding himself out as “The
`
`Plimsouls.” In 2015, Mr. Munoz applied to register “The Plimsouls” mark without including his
`
`partners and fellow band members and without getting their permission to exclude them. After
`
`the Patent and Trademark Office (“PTO”) granted the application in April 2016, Mr. Munoz began
`
`playing live shows as “The Plimsouls” with pickup musicians. Mr. Munoz’s fake “Plimsouls”
`
`Facebook page describes the band as “a resurgence of the 1980’s California rock band, but with a
`
`new look.” Mr. Munoz states he is “[teaming] up with Cool and talented Friends from The
`
`Plimsouls Collective Of Random Bitchin’ Musicians to bring The Plimsouls’ Music to the
`
`people.”2
`
`The overwhelming evidence in this case, including Mr. Munoz’s admissions in his
`
`deposition, shows the Plimsouls is entitled to cancellation of Mr. Munoz’s mark on two grounds:
`
`First, Mr. Munoz’s registration is void ab initio because he never owned the mark. It is well-
`
`settled that a band’s name belongs to the band, not its individual members. See Wonderbread 5 v.
`
`Gilles, 115 U.S.P.Q.2d 1296 (T.T.A.B. 2015). Second, Mr. Munoz’s registration and use of the
`
`mark has caused and will continue to cause confusion. Plimsouls fans have repeatedly complained
`
`about being hoodwinked into buying tickets to see a fake “Plimsouls” consisting of Mr. Munoz
`
`and “random musicians”, and not Messrs. Case, Pahoa, and Ramirez.3
`
`
`2 Dkt. 26, Ex. FF (“About The Plimsouls,” FACEBOOK.COM (accessed Apr. 14, 2023), archived at
`https://web.archive.org/web/20230411035536/https://www.facebook.com/theplimsouls.now/about_details).
`
`3 The Petition also asserted a claim that Mr. Munoz obtained the registration through fraud. The Plimsouls hereby
`withdraw their fraud claim, which is subsumed by their claim based on Mr. Munoz’s non-ownership of the mark.
`
`
`
`2
`
`

`

`
`
`STATEMENT OF ISSUE
`
`The issue in this case is whether U.S. Trademark Registration No. 4,940,705 should be
`
`canceled because (1) Registrant Edward Munoz does not own the Plimsouls mark; and (2) the
`
`Plimsouls mark covered by that Registration is likely to cause confusion, mistake or otherwise
`
`deceive consumers under Sections 2(d) and 43(a) of the Trademark Act as to the source of
`
`goods/services.
`
`EVIDENCE OF RECORD
`
`The record in this proceeding consists of: the Board’s orders, the pleadings, the Declaration
`
`of Kathryn Morrison Pahoa submitted herewith, and the following declarations and exhibits
`
`attached to the briefing on Petitioner’s Motion for Summary Judgment (Dkt. 26, 28, 32):
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`the Declaration of Chris Paparella filed in support of Petitioners’ Motion for
`Summary Judgment (Dkt. 26), dated April 14, 2023, and the exhibits attached
`thereto;
`
`the Declaration of David Pahoa filed in support of Petitioners’ Motion for Summary
`Judgment (Dkt. 26), dated April 14, 2023;
`
`the Declaration of Louis Ramirez filed in support of Petitioners’ Motion for
`Summary Judgment (Dkt. 26), dated April 14, 2023;
`
`the Declaration of Peter Case filed in support of Petitioners’ Motion for Summary
`Judgment (Dkt. 26), dated April 14, 2023;
`
`the Declaration of Edward Munoz filed in support of Registrant’s Opposition to
`Petitioners’ Motion for Summary Judgment (Dkt. 28), dated May 12, 2023, and the
`exhibits attached thereto;
`
`the Declaration of Tareef Chamaa filed in support of Registrant’s Opposition to
`Petitioners’ Motion for Summary Judgment (Dkt. 28), dated May 12, 2023, and the
`exhibit attached thereto;
`
`the Supplemental Declaration of Chris Paparella filed concurrently with
`Petitioners’ Reply in Further Support of Motion for Summary Judgment (Dkt. 32),
`dated June 5, 2023, and the exhibit attached thereto.
`
`
`
`3
`
`

`

`
`
`FACTUAL BACKGROUND
`
`I.
`
`The Plimsouls Partnership Has Pursued Its Business from 1979 to the Present
`
`The Plimsouls is a California partnership with four founding members: Peter Case, David
`
`Pahoa, Louis Ramirez, and Edward Munoz.4 Mr. Pahoa passed away on September 22, 2023, and
`
`his wife Kathryn Morrison Pahoa and his five children have inherited his share of the Plimsouls
`
`partnership.5 Mr. Case, the lead singer, songwriter, and guitar player, formed the band in Los
`
`Angeles in 1979 with Mr. Pahoa on bass guitar and Mr. Ramirez on drums.6 The Plimsouls
`
`performed as a trio throughout 1979.7 Mr. Munoz attended a practice session in early 1979,8 and
`
`became the full-time lead guitarist later that year.9
`
`The Plimsouls became an “influential Power Pop group.”10 Over the years, they have
`
`played hundreds of live shows, released three studio and three live albums, re-released albums and
`
`singles, and licensed their music to, among others, streaming services. Through their more than
`
`forty-year career, the Plimsouls have taken long breaks from performing and releasing albums, but
`
`have always reconvened. The band last performed live in 2007 and last released an album in 2012.
`
`However, due to the partnership’s efforts, the Plimsouls’ music has always been available on vinyl,
`
`compact disc, and digital download, and more recently on music streaming services.11 The
`
`partners have received royalties throughout the band’s career as members in the Plimsouls
`
`
`4 Dkt. 26, Ex. B (Deposition of Edward Munoz, dated January 9, 2023, at Tr. 30:2-16 (“Munoz Dep.”)); Dkt. 26,
`Declaration of Peter Case, dated April 14, 2023, at ¶ 3 (“Case Decl.”).
`
`5 Declaration of Kathryn Morrison Pahoa, dated January 25, 2024, at ¶¶ 5-6. (“Morrison Pahoa Decl.”).
`
`6 Dkt. 26, Ex. B (Munoz Dep.) at 14:9-15:22; Dkt. 26, Case Decl. ¶ 2; Dkt. 26, Ex. A (North County Times, Jan. 19,
`1996).
`
`7 Dkt. 26, Ex. B (Munoz Dep.) at 17:11-20:5; Dkt. 26, Ex. A (North County Times, Jan. 19, 1996).
`
`8 Dkt. 26, Ex. B (Munoz Dep.) at 10:10-14.
`
`9 Id. at 27:24-25; Dkt. 26, Case Decl. ¶ 2.
`
`10 Dkt. 26, Ex. C at D012 (AMP Magazine, Feb. 17, 2012).
`
`11 Dkt. 26, Case Decl. ¶¶ 4, 6.
`
`
`
`
`
`4
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`

`

`
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`partnership12 and have always actively taken steps to protect their copyrights and intellectual
`
`property, continuing to the present day.13 Messrs. Case and Ramirez intend to perform live as the
`
`Plimsouls again in the future.14
`
`A.
`
`Early 80s Heyday: Studio Albums, Touring, and Commercial Peak
`
`In 1980, the Plimsouls released their first recording, a five-song EP titled Zero Hour.15
`
`Mr. Case wrote four of the five songs on the EP,16 and would continue to write the vast majority
`
`of the Plimsouls’ original songs.17 Zero Hour reached number 153 on the Billboard charts.18
`
`From 1980 through early 1984, the Plimsouls played hundreds of shows across the
`
`country.19 During this period, in addition to the Zero Hour EP, the Plimsouls released two albums
`
`and recorded concerts that the partnership released in later years. The two albums were The
`
`Plimsouls and Everywhere at Once.20 Everywhere at Once featured a single called “A Million
`
`Miles Away,” which would ultimately become the Plimsouls’ most popular song, reaching number
`
`62 on the Billboard charts.21 The band’s fame grew further when they were featured playing
`
`several of their songs, including “A Million Miles Away,” in the 1983 movie Valley Girl.22
`
`
`12 Id.
`
`13 See, e.g., Factual Background § I.F, infra.
`
`14 Dkt. 26, Case Decl. ¶ 7; Dkt. 26, Declaration of Louis Ramirez, dated April 14, 2023, at ¶ 5 (“Ramirez Decl.”).
`
`15 Dkt. 26, Ex. D (Zero Hour record covers).
`
`16 Id. (indicating Mr. Case wrote all of the EP’s songs except “I Can’t Turn You Loose,” by Otis Redding); Dkt. 26,
`Case Decl. ¶ 8.
`
`17 See Dkt. 26, Case Decl. ¶ 8; Dkt. 26, Ex. B (Munoz Dep.) at 33:5-7 (“Q. Was there a primary songwriter in the
`Plimsouls? A. It was Peter at the time, yeah.”).
`
`18 Dkt. 26, Ex. E (“The History Of Peter Case Part 2: The Plimsouls,” Fall 1997); Dkt. 26, Case Decl. ¶ 8.
`
`19 See Dkt. 26, Ex. B (Munoz Dep.) 47:3-48:8.
`
`20 Id. at 39:24-44:19; Dkt. 26, Ex. F (The Plimsouls record covers); Dkt. 26, Ex. G (Everywhere at Once record
`covers).
`
`21 Dkt. 26, Ex. B (Munoz Dep.) at 44:20-46:3; Dkt. 26, Case Decl. ¶ 10.
`
`22 Dkt. 26, Ex. B (Munoz Dep.) at 44:20-46:3; Dkt. 26, Case Decl. ¶ 11.
`
`
`
`
`
`5
`
`

`

`
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`In 1983 the band’s drummer, Mr. Ramirez, stopped performing live. However,
`
`Mr. Ramirez has remained part of the Plimsouls partnership.23 Mr. Ramirez continued to be
`
`featured on all cover art (with one exception) for subsequently released Plimsouls material,24 he
`
`continued to receive royalties, and he joined with his partners to protect the partnership’s
`
`intellectual property.25
`
`B.
`
`1985-1994: First Recording/Performing Hiatus & More Album Releases
`
`On New Year’s Eve 1985, the Plimsouls played their last live show for nearly a decade.26
`
`Mr. Munoz testified Mr. Case told him in a phone call in January 1985 that he no longer wished
`
`to perform with the band and “you guys can have the name.”27 As will be seen, Mr. Case meant
`
`that the Plimsouls name belonged to the Plimsouls partnership, not to him or any other individual
`
`partner. He had no objection to his partners recruiting a new lead singer so they could continue to
`
`perform as the Plimsouls. At that time, Mr. Case wanted to pursue a solo career in which he could
`
`focus on folk-inflected music.28
`
`The other Plimsouls partners decided they did not wish to play live and record as the
`
`Plimsouls without Mr. Case.29 This was a logical decision. Mr. Case was the Plimsouls’ leader
`
`and a uniquely talented musician. He wrote nearly all the Plimsouls’ songs, he sang lead on all the
`
`Plimsouls’ songs, and he was featured prominently on every photograph of the Plimsouls. Neither
`
`
`23 Dkt. 26, Ex. B (Munoz Dep.) at 31:22-32:12, 70:8-71:9; Dkt. 26, Case Decl. ¶ 12.
`
`24 Dkt. 26, Ex. B (Munoz Dep.) at 37:7-22, 39:20-40:11, 42:6-43:3, 58:18-59:13, 86:10-87:10, 96:16-97:15, 98:22-
`99:14.
`
`25 Dkt. 26, Ex. H (Ramirez royalty statements).
`
`26 Dkt. 26, Ex. B (Munoz Dep.) at 52:3-11.
`
`27 Id. at 52:12-53:8.
`
`28 See Dkt. 26, Ex. E at D009 (“The History Of Peter Case Part 2: The Plimsouls,” Fall 1997); Dkt. 26, Ex. C at
`D018 (AMP Magazine, Feb. 17, 2012).
`
`29 Dkt. 26, Ex. B (Munoz Dep.) at 64:10-14; Dkt. 26, Case Decl. ¶ 15.
`
`
`
`
`
`6
`
`

`

`
`
`Mr. Munoz nor any of the other partners took any action to register the mark in their own names.30
`
`They knew that the partnership, not they as individuals, owned the mark.
`
`Notwithstanding their hiatus from performing live and recording new material, the
`
`Plimsouls partnership continued to pursue its business in other ways. The Plimsouls partners
`
`collected royalties and, in 1988, released a live album, One Night in America, of a show recorded
`
`in 1981.31 In 1992, the Plimsouls partners re-released on compact disc their earlier album
`
`Everywhere at Once32 and a new version of The Plimsouls that included their EP Zero Hour.33 Mr.
`
`Munoz himself denied that the partnership had broken up during this period.34
`
`C.
`
`1994-1997: The Plimsouls Resume Recording and Performing Live
`
`The Plimsouls reconvened in 1994 to re-record “A Million Miles Away” for the soundtrack
`
`for the movie Speed.35 In February 1995, they played their first live show in a decade36 and
`
`continued to play shows throughout 1995 and 1996.37 Mr. Case told a reporter, “we kept playing
`
`after that, and still play whenever we feel like it: no sense in breaking up a perfectly good rock and
`
`roll band twice!”38 Mr. Case told another reporter that he did not see the Plimsouls’ touring as
`
`
`30 Dkt. 26, Ex. B (Munoz Dep.) at 55:14-22; Dkt. 26, Case Decl. ¶ 15.
`
`31 See Dkt. 26, Ex. B (Munoz Dep.) at 58:18-59:5, 63:25-64:14; Dkt. 26, Ex. K (One Night in America record
`covers); Dkt. 26, Case Decl. ¶ 16.
`
`32 Dkt. 26, Ex. B (Munoz Dep.) at 61:4-10; Dkt. 26, Ex. L (Everywhere at Once reissue record covers).
`
`33 Dkt. 26, Ex. B (Munoz Dep.) at 63:4-17; Dkt. 26, Ex. M (The Plimsouls…Plus record covers).
`
`34 Dkt. 26, Ex. B (Munoz Dep.) at 84:2-11; Dkt. 26, Ex. W (Contra Costa Times, Jan. 1996).
`
`35 Dkt. 26, Ex. B (Munoz Dep.) at 64:18-66:19; Dkt. 26, Case Decl. ¶ 17; Dkt. 26, Ex. N (Press Democrat, May 26,
`1994 ).
`
`36 Dkt. 26, Ex. B (Munoz Dep.) at 71:22-72:17; Dkt. 26, Case Decl. ¶ 18; Dkt. 26, Ex. O (Los Angeles Times, Feb.
`20, 1995 ).
`
`37 Dkt. 26, Case Decl. ¶ 17; see, e.g., Dkt. 26, Ex. P (San Francisco Bay Guardian, May 24-30, 1995); Dkt. 26, Ex. Q
`(MOJO, Sept. 1995); Dkt. 26, Ex. B (Munoz Dep.) at 80:22-81:10; Dkt. 26, Ex. R (San Jose Mercury News, Jan.
`19, 1996); Dkt. 26, Ex. A (North County Times, Jan. 19, 1996); Dkt. 26, Ex. S (Oregonian, Mar. 1, 1996); Dkt.
`26, Ex. T (Austin Chronicle, Mar. 22, 1996); Dkt. 26, Ex. U (Los Angeles Reader, Apr. 12, 1996); Dkt. 26, Ex. V
`(Hollywood Reporter, Mar. 19, 1996).
`
`38 Dkt. 26, Ex. C at D017 (AMP Magazine, Feb. 2012).
`
`
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`7
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`merely a “reunion jaunt,” and that he thought “the time might be right for the band.”39 Mr. Munoz
`
`told a reporter, “I don’t really look upon it as a reunion because I never really stopped getting
`
`together with Peter to play music.”40
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`The Plimsouls returned to the studio. They recorded and released a studio album called
`
`Kool Trash in 1997 on a French label41 and the following year in the United States.42 Kool Trash
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`featured ten new songs Mr. Case had written or co-written.43
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`D.
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`1997-2005: Second Recording/Performing Hiatus
`
`In late 1997, the Plimsouls took another hiatus from recording and performing live.44
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`However, Mr. Case made clear in a 2001 interview that the Plimsouls were a going concern. He
`
`denied the Plimsouls were merely part of his past: “I have a band like the Plimsouls in my present.
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`The Plimsouls are still together. [Lead guitarist] Eddie [Munoz] just came down, he did play gigs
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`with me. We can do something at any moment if we really felt like it.”45
`
`E.
`
`2005-2007: Second Reunion Followed by Third Performing Hiatus
`
`True to Mr. Case’s words, the Plimsouls resumed performing live in 200546 and continued
`
`playing live shows in 2006 and 2007.47 They then took another hiatus from live performances.
`
`
`39 Dkt. 26, Ex. R (San Jose Mercury News, Jan. 19, 1996).
`
`40 Dkt. 26, Ex. B (Munoz Dep.) at 84:2-11; Dkt. 26, Ex. W (Contra Costa Times, Jan. 1996).
`
`41 Dkt. 26, Ex. B (Munoz Dep.) at 86:10-18; Dkt. 26, Ex. X (Kool Trash CD covers).
`
`42 Dkt. 26, Ex. B (Munoz Dep.) at 86:22-87:2.
`43 Dkt. 26, Ex. X (Kool Trash CD covers).
`
`44 Dkt. 26, Ex. B (Munoz Dep.) at 90:1-18.
`
`45 Dkt. 26, Ex. Y (News & Observer, Apr. 16, 2001) (alteration in original); Dkt. 26, Case Decl. ¶ 21.
`
`46 Dkt. 26, Ex. B (Munoz Dep.) at 94:23-95:7; Dkt. 26, Case Decl. ¶ 22.
`
`47 Dkt. 26, Ex. B (Munoz Dep.) at 86:22-87:2, 95:3-21; Dkt. 26, Case Decl. ¶ 22.
`
`
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`
`8
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`
`
`F.
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`2007-Present: Third Recording/Performing Hiatus & More Album Releases
`
`Although the Plimsouls have not performed live since 2007, the Plimsouls partnership has
`
`continued to pursue the band’s business. In 2010, the Plimsouls partnership released Live! Beg,
`
`Borrow & Steal, an album of live material recorded in 1981.48 In 2012, the Plimsouls partnership
`
`released Beach Town Confidential, a recording of a live show from 1983.49
`
`The Plimsouls partnership continued to collect royalties on the Plimsouls music50 and took
`
`steps to protect the partnership’s copyrights. In 2019, the Plimsouls partners engaged a lawyer to
`
`terminate copyrights held by record labels in the band’s recordings. The partners - Messrs. Case,
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`Munoz, Pahoa, and Ramirez - executed Notices of Termination that the partnership’s lawyer sent
`
`to Sony Music Entertainment in February 2019 and to Universal Music Group in August 2019.51
`
`In February 2021, the Plimsouls partnership’s lawyer filed Notice of Termination Cover Sheets
`
`with the U.S. Copyright Office. The Cover Sheets identified “The Plimsouls” as the Terminating
`
`Party and represented that the Plimsouls consisted of Messrs. Case, Munoz, Pahoa, and Ramirez.52
`
`Messrs. Case and Ramirez have stated—without contradiction from Mr. Munoz—that they
`
`discussed performing live as the Plimsouls again in the future, and intend to do so.53
`
`II.
`
`Mr. Munoz Registers the Plimsouls Mark in his Own Name
`
`Mr. Munoz’s testimony revealed that his trademark application was not based on a good
`
`faith belief that he alone owned the Plimsouls mark. Nor did Mr. Munoz believe that the Plimsouls
`
`
`48 Dkt. 26, Ex. B (Munoz Dep.) at 96:16-97:19; Dkt. 26, Ex. Z (Live! Beg, Borrow & Steal CD covers).
`
`49 Dkt. 26, Ex. B (Munoz Dep.) at 106:3-11.
`50 Dkt. 26, Case Decl. ¶ 27; Dkt. 26, Ex. H (Ramirez royalty statements); Dkt. 26, Ex. I (Pahoa royalty statement).
`
`51 Dkt. 26, Case Decl. ¶ 25; Dkt. 26, Ex. AA (Sony Notice of Termination); Dkt. 26, Ex. BB (UMG Notice of
`Termination).
`52 Dkt. 26, Ex. AA (Sony Notice of Termination); Dkt. 26, Ex. BB (UMG Notice of Termination).
`
`53 Dkt. 26, Case Decl. ¶ 7; Dkt. 26, Ramirez Decl. ¶ 5.
`
`
`
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`9
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`
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`partnership had dissolved or abandoned the mark. He was merely frustrated that Mr. Case did not
`
`want to perform live with the Plimsouls often enough.
`
`Mr. Munoz testified that in 2015 he was frustrated by Mr. Case’s unwillingness to perform
`
`live with the Plimsouls.54 In an effort to wrest ownership of the Plimsouls mark away from
`
`Mr. Case and the other Plimsouls partners, in July 2015 Mr. Munoz applied in his own name to
`
`register the mark “The Plimsouls.”55 Mr. Munoz admits he did not seek his partners’ permission
`
`to apply in his own name and to exclude them from his application. Far from believing that his
`
`partners had abandoned the mark, Mr. Munoz testified he did not tell Mr. Case because he knew
`
`Mr. Case would object to Mr. Munoz’s appropriation of the mark for himself.56 Mr. Munoz’s
`
`testimony flatly contradicts any assertion that his Plimsouls partners had abandoned the mark.
`
`Nor did Mr. Munoz notify Mr. Ramirez.57 Mr. Munoz did talk to Mr. Pahoa, but gave
`
`unclear and inconsistent testimony about this conversation.58 Mr. Pahoa recalled clearly that he
`
`told Mr. Munoz that a registration in his own name would violate the rights of the other
`
`Plimsouls.59 Mr. Pahoa said that he believed that after he objected, Mr. Munoz would not follow
`
`through on his plan.60
`
`
`54 Dkt. 26, Ex. B (Munoz Dep.) at 102:21-104:9, 106:12-108:15.
`55 Dkt. 26, Ex. CC (TEAS Plus Application No. 86699667, Jul. 21, 2015).
`56 Dkt. 26, Ex. B (Munoz Dep.) at 102:21-104:9, 106:12-108:15; see Dkt. 26, Case Decl. ¶ 28.
`
`57 Dkt. 26, Ex. B (Munoz Dep.) at 106:3-11.
`
`58 Id. at 115:17-118:2.
`
`59 Dkt. 26, Pahoa Decl. ¶ 4.
`
`60 Id.
`
`
`
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`
`
`III. Mr. Munoz Creates a Fake “Plimsouls”
`
`Based on Mr. Munoz’s false representations that he alone owned the Plimsouls mark, the
`
`PTO granted his application in April 2016.61 In August 2016, Mr. Munoz began performing with
`
`other musicians under the name “The Plimsouls.”62 Mr. Munoz admits Mr. Case objected as soon
`
`as he learned of these performances.63 Mr. Munoz admits Mr. Case continued to object, repeatedly,
`
`to Mr. Munoz’s registration and use of the Plimsouls mark.64 Mr. Case told Mr. Munoz that the
`
`mark belonged to the original four band members, not Mr. Munoz individually.65 When Mr.
`
`Munoz persisted in using the mark, Mr. Case’s lawyer sent Mr. Munoz a cease-and-desist letter.66
`
`When that did not work, the Plimsouls filed this proceeding.67 Mr. Case’s undisputed objections
`
`contradict any contention by Mr. Munoz that his Plimsouls partners had abandoned the mark.
`
`Mr. Munoz has continued using the Plimsouls name to the detriment of his partners’ rights.
`
`He has continued performing with other musicians under the Plimsouls’ name.68 He has created
`
`pages on Facebook, Twitter, and Bandcamp to promote his fake “Plimsouls” and trade off the
`
`Plimsouls brand that was developed by the partnership—not Mr. Munoz alone.69 Mr. Munoz
`
`states, for example, on his fake “Plimsouls” Facebook page:
`
`The Newly “Re-Souled” The Plimsouls is a resurgence of the 1980’s California
`rock band, but with a new look. Original Plimsouls guitarist Eddie Munoz teams
`
`
`61 Dkt. 26, Ex. DD (Registration Certificate, Reg. No. 4,940,705, Apr. 19, 2016).
`
`62 Dkt. 26, Ex. B (Munoz Dep.) at 118:15-119:10.
`
`63 Id. at 114:9-115:11; see Dkt. 26, Case Decl. ¶ 30.
`
`64 Dkt. 26, Ex. B (Munoz Dep.) at 123:8-15.
`
`65 Id. at 124:22-125:12; Dkt. 26,