In a 55-page opinion issued one week after the oral hearing, the Board granted Plaintiff UMG Recordings’ petition for cancellation of a registration for the mark J5 for various clothing items, on the grounds of nonuse, abandonment, and likelihood of confusion with the registered mark JACKSON 5 and the common law marks JACKSON 5IVE and J5, for musical sound recordings. The Board also sustained UMG’s opposition to the same J5 mark for various goods in classes 3, 14, 16, 18, 21, and 28, on the ground of likelihood of confusion. UMG Recordings, Inc. v. Siggy Music, Inc., Opposition No. 91200616 and Cancellation No. 92053622 (July 16, 2018) [not precedential] (Opinion by Judge Marc A. Bergsman).
Plaintiff UMG and Defendant Siggy – whose president is Sigmund “Jackie” Jackson, one of the Jackson Brothers – entered into a settlement agreement in 1980 regarding rights in the JACKSON 5 marks and recordings. The Board found that the agreement “does not provide that the Jackson brothers collectively or individually own or have the right to use the trademark J5 or any other marks.”
Nonuse: Defendant Siggy provided no documentary evidence that it sold clothing under the J5 mark prior to the expiration of time for filing its statement of use in the underlying application, and so the Board granted the petition for cancellation on that ground.
Abandonment: Defendant’s J5 registration issued in February 2006, but it did not use the mark in commerce until August 2010. This 4.5 year gap establishes a prima facie case of abandonment. In response, Defendant offered “unsubstantiated assertions of vaguely defined efforts to market or license J5 products,” and there was no credible evidence of use of the J5 trademark or of a clear intent to resume (or even begin) use during that period. And so the Board upheld the abandonment claim.
Likelihood of Confusion: Because UMG’s registration for the mark JACKSON 5 for “musical sound recordings” was of record, priority was not an issue as to those goods. As to the marks JACKSON 5IVE and J5, UMG relied on its common law rights (and had to prove priority in that context, which was not a problem). UMG argued in its briefs that Siggy’s products are related to musical sound recordings, and so the Board focused on those goods.
Defendant Siggy conceded that the JACKSON 5 mark is famous, and in fact “is one of the most famous trademarks in connection with recordings in the United States.” Plaintiff’s evidence also established the fame of that mark, as well as of the JACKSON 5IVE mark. However, the evidence did not show that J5 is famous or commercially strong.
The Board found that Siggy’s J5 mark is legally identical to the stylized J5 mark (shown above) used by Plaintiff UMG. The parties agreed that consumers will shorten JACKSON 5 and JACKSON 5IVE to J5. The Board concluded that these mark have the same meaning and engender the same commercial impression.
The Board acknowledged that UMG’s musical sound recordings differ from Defendant Siggy’s identified goods. However, the test is not whether the goods are likely to be confused but whether confusion is likely as to source or sponsorship. The Board found that “consumers will be confused into mistakenly believe that Defendant’s products are somehow sponsored by or associated with Plaintiff.”
Siggy Jackson conceded that it is common for record companies to sell merchandise featuring the name of a group. In fact, UMG sold t-shirts bearing the JACKSON 5 mark and board games under the J5 logo. Third-party registration evidence confirmed the relatedness of sound recordings and promotional items such as clothing, cosmetics, and plush toys. Furthermore, the Board observed that the licensing of trademarks for “collateral” products has become a common practice in recent years.
Defendant contended that the lack of evidence of actual confusion requires a finding of no likelihood of confusion, but the Board noted that Siggy has not used its mark on the goods listed in its applications. As to clothing items, only t-shirts have been offered for sale during the 2012-2014 time period. The Board observed that “[i]t is unlikely that consumers are going to register complaints about inexpensive t-shirts from which incidents of confusion might be identified.”
The Board concluded that Defendant’s mark J5 is likely to cause confusion with UMG’s registered mark JACKSON 5 and its common law marks JACKSON 5IVE and J5 (stylized) for musical sound recordings. And so it granted the petition for cancellation on that additional ground, and it sustained the opposition on that Section 2(d) ground.
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TTABlog comment: I wonder what the WONDERBREAD 5 think of all this?