28
Nov/11

CAVERN CLUB v CAVERN CLUB (Could Be Another Reputation Without Use Case)


But first I digress.  I was in a Hard Rock Cafe last month with colleagues who were discussing the rock and roll memorabilia on the wall (that is the decorative theme of that chain), and I expressed admiration for a Duane Eddy guitar in a glass case. My colleagues looked at me like I had three eyes.  I gave a short discourse on Duane Eddy and rockabilly, but even my remark that Duane Eddy was an influence on the early Beatles, drew blank stares.  I asked one colleague, someone from the UK, in his early twenties, to name an early Beatles song and he meekly offered “Penny Lane?” If you don’t roll your eyes at that one, I’m not going to explain.

Anyway, the Beatles played about 300 gigs at the CAVERN CLUB in Liverpool.  It’s where they were ‘discovered’ (but not where they really got going as a live band, which was in the clubs on the Reeperbahn in Hamburg).   In this appeal to the District Court of Nevada from a TTAB decision (below), plaintiff/TTAB petitioner, moved to cancel Hard Rock’s registration for CAVERN CLUB.  There appears to have been breaks in ownership since the club’s opening in 1957, but plaintiff seems to be able to establish that it has operated the club since 1991 (prior to that, petitioner had promoted tours of Liverpool which featured the Cavern Club as an attraction, which promotion reached the U.S.  However that doesn’t seem to be use of CAVERN CLUB as a trademark by petitioner).   Hard Rock filed for an ITU for CAVERN CLUB in 1995.

Petitioner moved to cancel alleging 2(a) ‘false association’ with an ‘institution.’  A textbook 2(a) refusal would be if someone without authorization filed a trademark for, for example, NEW YORK CITY POLICE DEPARTMENT or FBI.  The TTAB decision is fairly straight-forward on why petitioner failed on 2(a).

Petitioner also moved on fraud.  Now,  it is beyond the realm of coincidence that the purveyors of the Hard Rock Cafe, curators of rock and roll history, could not know that there was a Cavern Club in Liverpool.  However the fraud question asks to what extent HRC ‘knew’ that the operators of the Cavern Club had trademark rights in the US.    Interestingly, the TTAB decision doesn’t address whether plaintiff had such rights in the US, it merely holds that HRC didn’t know that they did.

The appeal to the District Court should be interesting.  Plaintiff has added an infringement claim, so it will have the opportunity to establish protectable trademark rights in CAVERN CLUB prior to HRC’s ITU filing date.  Readers of the blog know that the US doesn’t protect reputation without use.  On the other hand, cases such as Casino du Monte Carlo and the Grupo Gigante case (646 F3d 0309), give plaintiff a fighting chance to establish that it had protectable prior rights (if it is correct, for example, that plaintiff promoted the Cavern Club as part of its US advertising efforts in the 1991 to 1995 period).

At that point it seems plausible that plaintiff could establish that CAVERN CLUB is a famous mark, if I’m in the survey and young people aren’t.

John Welch on the TTAB decision here.

A UK music professor criticizes the decision (of course he does) here.

Complaint Cavern Club Nevada

Ttab Cavern Club 2(a)

 

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