ESTTA Tracking number:
`
`ESTTA1343808
`
`Filing date:
`
`03/04/2024
`
`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 LLP
`1114 AVENUE OF THE AMERICAS
`NEW YORK, NY 10036
`UNITED STATES
`Primary email: ipdocketing@steptoe.com
`Secondary email(s): cpaparella@steptoe.com, mallan@steptoe.com, jbenash-
`er@steptoe.com, jfryer@steptoe.com, trademark@steptoe.com
`212-506-3900
`
`Other Motions/Submissions
`
`Chris Paparella
`
`ipdocketing@steptoe.com, cpaparella@steptoe.com, mallan@steptoe.com,
`jbenasher@steptoe.com, jfryer@steptoe.com, trademark@steptoe.com
`
`/Chris Paparella/
`
`03/04/2024
`
`Plimsouls Reply in Further Support of Trial Brief.pdf(217286 bytes )
`Peter Case Declaration ISO Reply Trial Brief.pdf(116229 bytes )
`Louis Ramirez Declaration ISO Reply Trial Brief.pdf(118069 bytes )
`Paparella Declaration ISO The Plimsouls Reply Trial Brief.pdf(111561 bytes )
`Exhibit O.pdf(276753 bytes )
`Exhibit P.pdf(353642 bytes )
`Exhibit Q.pdf(314361 bytes )
`Exhibit R.pdf(489684 bytes )
`Exhibit S.pdf(360185 bytes )
`Exhibit T.pdf(779179 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 REPLY TRIAL BRIEF
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`
`
`PRELIMINARY STATEMENT ................................................................................................... 1
`
`ARGUMENT ................................................................................................................................. 2
`
`I.
`
`The Plimsouls, a California Partnership, Is Entitled to Petition for Cancellation ............. 2
`
`A.
`
`B.
`
`C.
`
`Petitioner is the Plimsouls, a California Partnership ............................................. 2
`
`The Plimsouls Partnership Is Capable of Suing and Being Sued .......................... 4
`
`The Plimsouls Partnership Has Not Been Dissolved ............................................. 5
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`Mr. Munoz Has the Burden of Proving the Plimsouls Partnership
`Dissolved.................................................................................................... 5
`
`Mr. Munoz’s Statements Regarding Dissolution Are Not Credible .......... 6
`
`There Is No Evidence the Plimsouls Dissolved Their Partnership ............ 7
`
`The Evidence Shows the Plimsouls Partnership Has Always Been
`Active ......................................................................................................... 8
`
`If the Plimsouls Dissolved Their Partnership, They Re-Formed It ......... 10
`
`Clem Burke Was Not a Plimsouls Partner ............................................... 11
`
`II.
`
`The Plimsouls Did Not Abandon Their Mark .................................................................. 12
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`A Trademark Cannot Be Split Between Live Performance and Other
`Activities .............................................................................................................. 13
`
`The Plimsouls Did Not Abandon Their Mark Because Mr. Case Did Not
`Perform Live ........................................................................................................ 13
`
`A Band Does Not Abandon Its Name Merely Because It Stops Performing
`Live ...................................................................................................................... 14
`
`The Presumption of Abandonment Does Not Apply ........................................... 14
`
`Wonderbread 5, Kingsmen, HEC, and Commodores Are Directly on Point ...... 14
`
`CONCLUSION ............................................................................................................................ 15
`
`
`
`
`
`
`
`i
`
`

`

`TABLE OF AUTHORITIES
`
`
`
`
`
`Page(s)
`
`Cases
`
`Asamen v. Thompson,
`55 Cal. App. 2d 661 (1942) (Ex. P) ...........................................................................................5
`
`Credit Bureaus of Merced Cnty., Inc. v. Fuller,
`199 Cal. App. 2d 495 (1962) (Ex. Q) ........................................................................................5
`
`Eng v. Brown,
`21 Cal. App. 5th 675 (2018) (Ex. R) ..........................................................................................5
`
`Kingsmen v. K-Tel Int’l Ltd.,
`557 F. Supp. 178 (S.D.N.Y. 1983) (Trial Br., Ex. G) ........................................................14, 15
`
`Lindsey v. Starwood Hotels & Resorts WorldWide, Inc.,
`No. 02-cv-3822 (GAF), 2008 WL 11363357 (C.D. Cal. June 13, 2008) (Trial
`Br., Ex. E) ............................................................................................................................9, 11
`
`Marshak v. Treadwell,
`58 F. Supp. 2d 551 (D.N.J. 1999) (Trial Br., Ex. J) .................................................................13
`
`Massaji v. Rofeh,
`No. B250315, 2015 WL 667868 (Cal. Ct. App. Feb. 17, 2015) (unpublished)
`(Ex. S) ........................................................................................................................................7
`
`SCSA Grp., Inc. v. Worden,
`No. G058859, 2021 WL 2644957 (Cal. Ct. App. June 28, 2021) (unpublished)
`(Trial Br., Ex. A) ........................................................................................................................4
`
`Wonderbread 5 v. Gilles,
`115 U.S.P.Q.2d 1296 (T.T.A.B. 2015) ..................................................................11, 13, 14, 15
`
`Statutes
`
`15 U.S.C. § 1064 ..........................................................................................................................2, 4
`
`15 U.S.C. § 1127 ..............................................................................................................................4
`
`California Corporations Code § 16202 ............................................................................................2
`
`California Corporations Code § 16801 (Ex. O) ..................................................................... passim
`
`
`
`ii
`
`
`
`

`

`
`
`PRELIMINARY STATEMENT
`
`The evidence makes clear Edward Munoz did not trademark the Plimsouls name in 2015
`
`because he believed the Plimsouls partnership had dissolved or abandoned its name. Mr. Munoz
`
`knew neither of these things was true. Mr. Munoz grabbed the Plimsouls name because he was
`
`angry that the band’s lead singer and songwriter Peter Case had rejected Mr. Munoz’s request to
`
`tour Australia as the Plimsouls in 2014. Whether Mr. Munoz was right to be angry at Mr. Case is
`
`irrelevant. Mr. Case’s decision to pass on a Plimsouls tour did not dissolve the 35-year- old
`
`Plimsouls partnership or cause the partnership to abandon its name. In fact, Mr. Munoz admits he
`
`did not tell Mr. Case about his trademark application because he knew Mr. Case would object that
`
`the name was owned by the Plimsouls, and Mr. Case did indeed object the minute he found out.
`
`Because Mr. Munoz’s defense is built on false premises, it does not withstand scrutiny.
`
`Mr. Munoz does not identify any evidence that he, Mr. Case, Mr. Pahoa, or Mr. Ramirez ever
`
`intended to dissolve the Plimsouls partnership or abandon its name. The evidence shows only that
`
`Peter Case (like the other Plimsouls) balanced a solo career with Plimsouls work. Far from
`
`showing dissolution or abandonment, Mr. Munoz admits that during the 35 years before he sought
`
`his trademark, the Plimsouls partners engaged in all the standard activities of a rock and roll band:
`
`playing live, recording and releasing music, releasing new albums of old concerts, giving
`
`interviews, licensing music to streaming services, protecting copyrights, chasing royalties, and
`
`dealing with record companies.
`
`It is settled law that a band retains ownership of its name if its partners engage in band-
`
`related activities, which may or may not include performing live. Mr. Munoz concedes the
`
`Plimsouls partnership has continuously engaged in band-related activities. He has offered no
`
`
`
`

`

`
`
`credible evidence of dissolution or abandonment. Hence, the Plimsouls partnership owns the
`
`Plimsouls name and is entitled to cancellation of Mr. Munoz’s trademark.
`
`ARGUMENT
`
`I.
`
`The Plimsouls, a California Partnership, Is Entitled to Petition for Cancellation
`
`Contrary to Mr. Munoz’s assertion,1 Petitioner the Plimsouls is a California partnership
`
`entitled to petition for cancellation under 15 U.S.C. § 1064.2
`
`Mr. Munoz alternately labels this question as one of “entitlement to a statutory cause of
`
`action,” or its former label, “standing.”3 Petitioner’s Trial Brief addressed the question as
`
`“standing.”4 As the Response Brief states, the question is whether The Plimsouls is a “person”
`
`entitled to petition for cancellation under Section 1064—that is, is it an “organization capable of
`
`suing and being sued in a court of law”?5 There is no serious dispute that it is.6
`
`A.
`
`Petitioner is the Plimsouls, a California Partnership
`
`As Mr. Munoz concedes, the Petition is brought by “named Petitioner”7 The Plimsouls.8
`
`Mr. Munoz admits that the four members of the Plimsouls—Messrs. Case, Pahoa, Ramirez, and
`
`Munoz—formed a partnership in California in the early 1980s, and that the partnership is governed
`
`by California law.9 He further admits that under California Corporations Code § 16202(a), “the
`
`
`1 Registrant’s Response Brief at 15-16 (“Resp. Br.”).
`
`2 See Petitioner’s Trial Brief at 13-15 (“Trial Br.”).
`
`3 See Resp. Br. at 14 n.4, 15.
`
`4 See Trial Br. at 13.
`
`5 See Resp. Br. at 15 (quoting 15 U.S.C. §§ 1064, 1127).
`
`6 See Trial Br. at 13-15.
`
`7 Resp. Br. at 4.
`
`8 See Dkt. 1; see also Trial Br. at 13.
`
`9 See Resp. Br. at 11, 16.
`
`
`
`
`
`
`
`2
`
`

`

`
`
`association of two or more persons to carry on as co-owners a business for profit forms a
`
`partnership, whether or not the persons intend to form a partnership.”10 Mr. Munoz admits the
`
`four members of the Plimsouls carried on activities of the band, for profit, for years,11 and that
`
`“even in the absence of a written partnership agreement, the four members of The Plimsouls—
`
`Case, Pahoa, Ramirez, and Munoz—arguably formed an implied partnership under California law
`
`by associating together to form a band.”12
`
`There is nothing “arguable” about it: the admitted facts show a jointly-conducted for-profit
`
`enterprise—a band—and Mr. Munoz offers no facts on which to conclude that such an implied
`
`partnership was never formed, “even in the absence of a written partnership agreement.”13 The
`
`existence or nonexistence of any written partnership agreement, or of any other corporation or
`
`other enterprise organization registered with the state of California,14 is thus irrelevant. Mr.
`
`Munoz’s contention that Mr. Case individually is the real petitioner here is baseless and of no
`
`moment.15
`
`Mr. Munoz further admits that under California Corporation Code § 16801(1), a
`
`partnership without fixed duration continues unless and until it is dissolved “by the express will to
`
`
`10 Id. at 16; accord Trial Br. at 13-14.
`
`11 Resp. Br. at 5-11.
`
`12 Id. at 16.
`
`13 Id.
`
`14 See id. at 11.
`
`15 See id. at 4. The evidence makes clear that Mr. Case, Mr. Pahoa, and Mr. Ramirez, acting in their capacity as
`Plimsouls partners, caused the Plimsouls partnership to bring this proceeding. Messrs. Case, Pahoa, and Ramirez
`have played an active role in their partnership’s pursuit of this case, including submitting witness statements and
`attending Mr. Munoz’s deposition. It is undisputed that Mr. Pahoa’s wife Kathryn and his five children will inherit
`his share in the Plimsouls partnership following his death in September 2023, and Ms. Morrison Morrison Pahoa has
`affirmed that Mr. Pahoa’s heirs fully support the Plimsouls’ pursuit of this action.
`
`
`
`
`
`
`
`3
`
`

`

`
`
`dissolve and wind up the partnership business of at least half of the partners.”16 Thus, unless
`
`Mr. Munoz can prove the Plimsouls partnership dissolved by the express will of at least half of its
`
`four partners (which he cannot, see Section I.C, infra), the Plimsouls remain an existing
`
`partnership.
`
`B.
`
`The Plimsouls Partnership Is Capable of Suing and Being Sued
`
`The Plimsouls partnership may petition for cancellation under § 1064 if it is a “juristic
`
`person,” defined as a “firm, corporation, union, association, or other organization capable of
`
`suing and being sued in a court of law.”17 Under the California Corporations Code, which Mr.
`
`Munoz concedes applies,18 a “partnership is a distinct entity which can sue and be sued in its
`
`own name.” SCSA Grp., Inc. v. Worden, No. G058859, 2021 WL 2644957, at *3 (Cal. Ct. App.
`
`June 28, 2021) (unpublished) (Trial Br., Ex. A) (citing Cal. Corp. Code §§ 16201, 16307) .19
`
`That is all that is required under 15 U.S.C. § 1127. (Mr. Munoz’s invocation of authorities
`
`involving whether an association has standing based on its members20 is irrelevant. Under
`
`California law, Petitioner the Plimsouls is a partnership, not a membership association.)
`
`Mr. Munoz does not contest that the Plimsouls’ commercial interest in the band’s name
`
`gives the partnership standing, falling within the zone of interests protected by § 1064.21 Thus,
`
`the Plimsouls implied partnership may petition for cancellation under § 1064.
`
`
`16 Id. at 16; see Cal. Corp. Code § 16801(1) (Ex. O). All citations in the form “Ex. __” refer to documents annexed
`to the Supplemental Declaration of Chris Paparella, dated March 4, 2024, filed contemporaneously with this brief.
`
`17 Resp. Br. at 15 (quoting 15 U.S.C. § 1127) (emphasis added).
`
`18 See id. at 16.
`
`19 The parties agree that California law governs because the partnership was formed in California by California
`residents.
`
`20 See Resp. Br. at 18.
`
`21 See Trial Br. at 13.
`
`
`
`
`
`
`
`4
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`

`

`
`
`C.
`
`The Plimsouls Partnership Has Not Been Dissolved
`
`Under California law, a partnership at will of no fixed duration, such as The Plimsouls
`
`implied partnership, can be dissolved “only … by the express will to dissolve and wind up the
`
`partnership business of at least half of the partners.”22 Mr. Munoz admits this governing law.23
`
`He has not shown that any of the four Plimsouls partners—much less half of them—have expressed
`
`the will to dissolve and wind up the Plimsouls partnership.
`
`1.
`
`Mr. Munoz Has the Burden of Proving the Plimsouls Partnership
`Dissolved
`
`Because Mr. Munoz admits there was a partnership, he has the burden of proving his
`
`contention that it dissolved. Mr. Munoz is wrong that the Plimsouls have the burden to prove their
`
`partnership did not dissolve.
`
`Under California law (which Mr. Munoz concedes governs the Plimsouls partnership24),
`
`“[a] partnership once shown to exist is presumed to continue until the contrary is shown, and the
`
`burden of proof is upon him who asserts its termination.” Asamen v. Thompson, 55 Cal. App.
`
`2d 661, 668–69 (1942) (Ex. P) (emphasis added); see also Credit Bureaus of Merced Cnty., Inc. v.
`
`Fuller, 199 Cal. App. 2d 495, 496 (1962) (Ex. Q) (“Inasmuch as there is a presumption that a
`
`partnership once proved to exist continues in being unless and until the contrary is shown, it
`
`follows logically that the burden of proof of dissolution of the partnership fell squarely upon” the
`
`party arguing the partnership dissolved (citations omitted)); cf. Eng v. Brown, 21 Cal. App. 5th
`
`675, 695 (2018) (Ex. R) (“Because [a] partnership once shown to exist is presumed to continue
`
`
`22 Cal. Corp. Code § 16801(1) (Ex. O) (emphasis added).
`
`23 Resp. Br. at 16.
`
`24 See id. at 16.
`
`
`
`5
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`

`

`
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`until the contrary is shown, the party seeking to rebut the partnership relationship has the burden
`
`of showing subsequent incorporation or other reorganization” (citation omitted)).
`
`Mr. Munoz does not come close to meeting his burden.
`
`2.
`
`Mr. Munoz’s Statements Regarding Dissolution Are Not Credible
`
`Mr. Munoz’s account of the Plimsouls’ supposed dissolution is a potpourri of vague,
`
`conclusory, and contradictory assertions. Mr. Munoz does not provide any specific details in
`
`support of his assertions. He does not say when the partners voted to dissolve, how they voted,
`
`and why they voted. He is not even able to specify the year the partnership dissolved. He offers
`
`various years, some decades apart, with no explanation.
`
`Mr. Munoz begins by asserting the Plimsouls partnership dissolved in “early 1984” after
`
`Mr. Case left the band.25 However, a few paragraphs later, Mr. Munoz states the Plimsouls
`
`partnership filed tax returns for years in the late 1990s.26 Mr. Munoz does not explain why a
`
`partnership that dissolved in early 1984 was filing tax returns in the late 1990s.
`
`Mr. Munoz then states he has been the “de facto manager” of the Plimsouls since summer
`
`1984.27 Mr. Munoz does not explain how he could become the manager of a partnership that no
`
`longer existed.
`
`Further on in his brief, Mr. Munoz states the partnership was actually dissolved in 1983 or
`
`1984.28 Mr. Munoz does not reconcile this statement with his statements that the partnership
`
`
`25 Resp. Br. at 11.
`
`26 Id.
`
`27 Id. at 13.
`
`28 Id. at 16.
`
`
`
`
`
`
`
`6
`
`

`

`
`
`dissolved in early 1984, that the partnership was filing tax returns for years in the late 1990s, o that
`
`he began managing the partnership in the summer of 1984.
`
`Finally, Mr. Munoz states that the partnership dissolved in 2000.29 Mr. Munoz makes no
`
`effort to reconcile this statement with his earlier assertions that the partnership ended in 1983 or
`
`1984.
`
`The Board can and should conclude that the reason Mr. Munoz is not able to tell a
`
`consistent, coherent story is because his contention that the Plimsouls dissolved is false. The
`
`falsehood of Mr. Munoz’s assertions is also demonstrated by the evidence.
`
`3.
`
`There Is No Evidence the Plimsouls Dissolved Their Partnership
`
`Dissolution of a California partnership requires at least half the partners to provide notice
`
`of their “express will to dissolve and wind up the partnership business.” Cal. Corp. Code
`
`§ 16801(1) (West 2023). A partner’s statement that he is leaving the business does not satisfy this
`
`requirement. Massaji v. Rofeh is directly on point. No. B250315, 2015 WL 667868 (Cal. Ct. App.
`
`Feb. 17, 2015) (unpublished) (Ex. S). There, a partner quit working for the partnership and
`
`“stat[ed] that [he] would not return to the business.” Id. at *8. The court found this did not
`
`constitute notice of the partner’s “express will to dissolve and wind up the partnership business,”
`
`id. at *7 (citation omitted), because the partner “did not indicate he intended to end his ownership
`
`interest or request a winding up of partnership affairs.” Id. at *8.
`
`Mr. Munoz does not offer any evidence that Mr. Case, Mr. Ramirez, Mr. Pahoa, or Mr.
`
`Munoz ever provided a notice of express will to dissolve the Plimsouls’ partnership. To the
`
`
`29 Id. at 18.
`
`
`
`
`
`
`
`7
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`

`

`
`
`contrary, Mr. Munoz contends Mr. Ramirez left the Plimsouls because he was fired in 1983.30 Mr.
`
`Munoz admits that when Mr. Case announced he wanted to pursue a solo career, he told Mr. Munoz
`
`and Mr. Pahoa that the Plimsouls could continue to perform live without him.31
`
`4.
`
`The Evidence Shows the Plimsouls Partnership Has Always Been Active
`
`In fact, the evidence contradicts Mr. Munoz’s assertion that the partnership dissolved in
`
`early 1984 or thereafter. This contradictory evidence begins with Mr. Munoz himself, who asserts
`
`he began managing the Plimsouls partnership in summer 1984, after it supposedly dissolved, that
`
`the Plimsouls partnership was filing tax returns in the late 1990s, and that in 2014 Mr. Munoz was
`
`trying to get the Plimsouls to tour Australia. Mr. Munoz’s public statements similarly contradict
`
`his position here. For example, when the Plimsouls began performing live again in 1994 after a
`
`ten-year hiatus, Mr. Munoz insisted in interviews that the band had never broken up because he
`
`and Mr. Case had never stopped playing music together.32
`
`More importantly, there is a mountain of evidence, uncontested by Mr. Munoz, that during
`
`the 35 years between the Plimsouls’ 1979 formation and Mr. Munoz’s 2015 trademark registration
`
`the partnership engaged in the typical activities a rock band engages in to pursue its business.
`
`Among other things, the partnership released new albums, re-released old albums in new formats,
`
`performed live, gave interviews, signed autographs, appeared at fan events, filed tax returns,
`
`
`30 Resp. Br., Ex. A (Declaration of Edward Munoz) at ¶ 3. Mr. Munoz offers no refutation or explanation for Mr.
`Ramirez’s continuing participation in the affairs of the Plimsouls partnership, including receiving a share of its income,
`up through the present day. See Trial Br. at 6; Resp. Br. at 8-9 (admitting the Plimsouls released live recordings in
`2010 and 2012; “continued to collect royalties on the Plimsouls music and took steps to protect the band’s copyrights”;
`and that Mr. Ramirez was a member who took such actions in 2019 and 2021); see also Sec. I.C.4, infra.
`
`31 Dkt. 32, Ex. HH (Munoz Dep.) at 52:12-54:6.
`
`32 Trial Br. at 8 (citing Dkt. 26, Ex. B (Munoz Dep.) at 84:2-11; Dkt. 26, Ex. W (Contra Costa Times, Jan. 1996)).
`
`
`
`
`
`
`
`8
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`

`

`
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`licensed its music to streaming services, protected its copyrights,33 dealt with record companies,
`
`and collected royalties.34
`
`While Mr. Munoz complains that the partners (all of whom are senior citizens in their late
`
`60s) have not performed live since 2007, he concedes that the partners continued to engage in other
`
`critical activities, such as selling Plimsouls music, dealing with record companies, and collecting
`
`payments for Plimsouls music. Mr. Munoz admits that all of the Plimsouls albums are currently
`
`available for purchase and that the Plimsouls have continuously received royalties from their
`
`music.35
`
`Mr. Munoz’s reliance on the supposed absence of California Secretary of State records
`
`showing a partnership is misplaced.36 A California partnership does not require any formal act by
`
`the partners, such as registration with the state. Instead, the existence of the partnership may be
`
`inferred from the partners’ acts in furtherance of their joint enterprise. See Lindsey v. Starwood
`
`Hotels & Resorts WorldWide, Inc., No. 02-cv-3822 (GAF), 2008 WL 11363357, at *3 (C.D. Cal.
`
`June 13, 2008) (Trial Br., Ex. E).
`
`Similarly, the fact that a tax filing in 2000 had a box checked for “final return” in no way
`
`shows that any Plimsouls partner provided notice of his “express will to dissolve and wind up the
`
`partnership business.” Cal. Corp. Code § 16801(1) (West 2023).37
`
`
`33 Contrary to Mr. Munoz’s contention, the termination notice cover sheets identify the Plimsouls as the Terminating
`Party. See Dkt. 26, Ex. AA at 10; Dkt. 26, Ex. BB at 10.
`
`34 Resp. Br. at 7-9.
`
`35 Id. at 17.
`
`36 Id. at 11 (citing Resp. Br., Ex. B).
`
`37 See Resp. Br. at 18 & Ex. G.
`
`
`
`
`
`
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`9
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`

`
`
`Mr. Munoz’s assertion that Mr. Ramirez has not performed live as a member of the
`
`Plimsouls since 1983 is incorrect and irrelevant. Mr. Ramirez joined the other three original
`
`members of the band to perform on the television show Rock Palace in 1984.38 Mr. Ramirez also
`
`performed with his three bandmates as the Plimsouls at a wedding in 1989; and at Club Lingerie
`
`in Los Angeles in the late 1980s.39 In 2021, Mr. Ramirez and Mr. Pahoa performed Plimsouls
`
`songs at an event that celebrated the movie Valley Girls, in which the Plimsouls had appeared as
`
`themselves.40 Mr. Ramirez and Mr. Pahoa have appeared at two recent Valley Girls events and
`
`were billed as members of the Plimsouls in promotional materials.41 They have participated on
`
`panels and signed autographs, all in their capacity as Plimsouls partners.42 And there is no dispute
`
`that Mr. Ramirez has always participated in other aspects of the Plimsouls business, such as issuing
`
`and re-issuing albums, licensing music, protecting copyrights, and collecting royalties.
`
`5.
`
`If the Plimsouls Dissolved Their Partnership, They Re-Formed It
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`Even assuming arguendo that the Plimsouls partnership somehow dissolved in 1984, the
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`original four partners re-formed their partnership thereafter and jointly pursued the interests of the
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`Plimsouls. Mr. Munoz’s contention that after the purported 1984 dissolution, “the members of
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`The Plimsouls did not explicitly form a legal partnership, either orally or in writing” misses the
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`point.43 As Mr. Munoz concedes, there is no requirement for an explicit oral or written formation
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`38 Declaration of Peter Case, dated March 4, 2024, at ¶ 4 (“Case Decl.”); Declaration of Louis Ramirez, dated March
`4, 2024, at ¶ 6 (“Ramirez Decl.”).
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`39 Case Decl. at ¶ 4; Ramirez Decl. at ¶ 6.
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`40 Ramirez Decl. at ¶¶ 6, 13-15; Case Decl. at ¶¶ 4, 12; Ex. T (The Viper Room Facebook post, Aug. 21, 2021).
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`41 Ramirez Decl. at ¶¶ 6, 13-15; Case Decl. at ¶¶ 4, 12; Ex. T (The Viper Room Facebook post, Aug. 21, 2021).
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`42 Ramirez Decl. at ¶ 13-14.
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`43 Resp. Br. at 11.
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`of a partnership. Under California law, a partnership is formed when two or more persons associate
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`to carry on a business for profit as co-owners, whether or not the persons intend to form a
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`partnership.44 The Plimsouls’ post-1984 activities meet this standard. See Wonderbread 5 v.
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`Gilles, 115 U.S.P.Q.2d 1296, at *1-2 (T.T.A.B. 2015); see also Lindsey, 2008 WL 11363357, at
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`*3 (Trial Br., Ex. E) (“A partnership need not be evidenced by writing and it is immaterial that the
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`parties do not designate the relationship as a partnership or realize that they are partners, for the
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`intent may be implied from their acts.” (cleaned up)).
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`Mr. Munoz’s admissions regarding the Plimsouls’ post-1984 business activities make clear
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`that even if the Plimsouls somehow dissolved their partnership, they subsequently re-formed their
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`partnership and continued to pursue the Plimsouls’ business to the present day. In the words of
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`Mr. Case, there was “no sense in breaking up a perfectly good rock and roll band twice!”45
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`6.
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`Clem Burke Was Not a Plimsouls Partner
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`Mr. Munoz’s assertion in his declaration that the Plimsouls formed a partnership in 1995
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`with new drummer Clem Burke is incorrect and irrelevant.46 The evidence shows Mr. Burke was
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`a short-term employee. It is a matter of public record that Mr. Burke has a full-time job as drummer
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`with the well-known and successful band Blondie.47 Mr. Burke’s job with the Plimsouls involved
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`playing drums on the Kool Trash album and performing at some shows. Unlike the Plimsouls
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`partners, Mr. Burke has had no involvement in subsequent releases or performances or any of the
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`partnership’s other activities. He has never claimed to be a member of the Plimsouls partnership.
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`44 Id. at 16 (citing Cal. Corp. Code § 16202).
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`45 Dkt. 26, Ex. C at D017 (AMP Magazine, Feb. 2012).
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`46 Resp. Br., Ex. A (Declaration of Edward Munoz) at ¶ 3.
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`47 See, e.g., S. Clarke, Sky Orders Rock Documentary on Blondie Drummer Clem Burke (EXCLUSIVE), VARIETY,
`Apr. 24, 2018, https://variety.com/2018/tv/news/sky-blondie-drummer-clem-burke-starline-canis-1202784468/.
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`Nor have Mr. Munoz, Mr. Case, Mr. Pahoa, or Mr. Ramirez ever contended Mr. Burke was their
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`partner.
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`The Plimsouls partners continued to pursue the partnership’s business after Mr. Burke’s
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`stint in the band. For example, in 2010 and 2012, all four Plimsouls were involved in two new
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`releases of live albums featuring recordings of their performances in the 1980s, Live: Beg, Borrow
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`and Steal and Beach Town Confidential. Mr. Case supervised every aspect of both album releases,
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`including the mixing, mastering, and production, cover photographs and art, and liner notes.48 He
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`consulted with and obtained input from the other Plimsouls partners.49 Mr. Ramirez provided the
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`cover photo for Beach Town Confidential from his personal collection of Plimsouls memorabilia.50
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`Further, Mr. Case, Mr. Pahoa, and Mr. Munoz performed live together as the Plimsouls with a new
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`drummer named Bryan Head between 2005 and 2007.51
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`II.
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`The Plimsouls Did Not Abandon Their Mark
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`Mr. Munoz’s argument that the Plimsouls abandoned their mark has no factual or legal
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`support. Mr. Munoz’s relies entirely on the absence of live performances by the Plimsouls since
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`2007 and Mr. Case’s unwillingness to perform as the Plimsouls in 2014. But the lack of live
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`performance does not show abandonment because the Plimsouls exploited their name
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`commercially in other ways.
`
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`48 Case Decl. at ¶¶ 7-8; Ramirez Decl. at ¶¶ 9-11.
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`49 Case Decl. at ¶ 9; Ramirez Decl. at ¶ 12.
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`50 Case Decl. at ¶ 9; Ramirez Decl. at ¶ 12.
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`51 Dkt. 26, Ex. B (Munoz Dep.) at 86:22-87:2, 94:23-95:21; Dkt. 26, Case Decl. ¶ 22.
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`A.
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`A Trademark Cannot Be Split Between Live Performance and Other
`Activities
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` The courts have consistently rejected attempts to bifurcate a musical group’s use of its
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`mark between live performances and record sales.52 As Mr. Munoz concedes, “[e]ven if a band
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`breaks up, it does not abandon its mark unless there is proof the band stopped commercially
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`exploiting the mark.”53 Under Marshak, Wonderbread 5, and other applicable authorities, the
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`Plimsouls’ continued activities make clear they never stopped commercially exploiting their mark.
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`B.
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`The Plimsouls Did Not Abandon Their Mark Because Mr. Case Did Not
`Perform Live
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`Mr. Munoz’s assertion that Mr. Case said he no longer wanted to perform as a member of
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`The Plimsouls in 2014 is inaccurate and irrelevant.54 In fact, Mr. Case said he did not wish to
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`perform with the Plimsouls at that time because he was busy with his own band and the Plimsouls
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`could not agree on a drummer.55 Indeed, Mr. Case, Mr. Pahoa, and Mr. Ramirez have all testified
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`they intend to perform as the Plimsouls again in the future.56 Mr. Munoz’s assertion that this
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`testimony is not credible is contradicted by the undisputed fact that the Plimsouls have historically
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`taken long, multi-year breaks between live performances. Moreover, Mr. Case is only one of four
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`partners. He had no authority to abandon the name on behalf of the partnership. But most
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`importantly, the evidence shows Mr. Case and the other Plimsouls partners have continued to
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`pursue the partnership’s business in other ways.
`
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`52 Trial Br. at 25 (collecting cases).
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`53 Resp. Br. at 23 (apparently quoting Trial Br. at 21, which cites Marshak v. Treadwell, 58 F. Supp. 2d 551 (D.N.J.
`1999) (Trial Br., Ex. J)) (citation and internal quotation marks omitted).
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`54 Resp. Br., Ex. A (Declaration of Edward Munoz) at ¶ 24.
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`55 Case Decl. at ¶¶ 10-11.
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`56 Dkt. 26, Case Decl. ¶ 7.
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`C.
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`A Band Does Not Abandon Its Name Merely Because It Stops Performing
`Live
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`All four Plimsouls are senior citizens in their late 60s. It would be perfectly normal if they
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`did not want to pursue a vigorous touring schedule or even, at some point, play live at all. Under
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`the applicable case law, even if the Plimsouls never performed live again, they would not be
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`deemed to have abandoned their name so long as they used it in other ways.
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`D.
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`The Presumption of Abandonment Does Not Apply
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`Mr. Munoz’s reliance on the Lanham Act’s presumption of abandonment after three years
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`of non-use is misplaced here. Mr. Munoz’s assertion t