“A Not So Small Trademark Dispute, ft. The Rascals”

In 1994, Spanky and Alfalfa’s friendship hit a tumultuous time when Alfalfa ditched the “boys only” club to spend time with his beloved, Darla. Alfalfa’s departure threatened the club’s existence. Much to the delight of moviegoers, Alfalfa’s return to the club reconciled any threat of disbandment, leading to a happy ending forever.

Before Spanky and Alfalfa’s all-boys club, there was 1960s rock band The Rascals (originally known as The Young Rascals). The original band members were Dino Danelli, Felix Cavaliere, Gene Cornish and Eddie Brigati. The quartet enjoyed widespread success in the mid to late 1960s, including having nine singles reaching the top 20 of the Billboard Hot 100 between 1966 and 1968. Despite their success, Brigati left the group in 1970, followed by Cornish in 1971.

In 1988 Cavaliere and his managers produced a reunion tour of the Rascals – Cornish and Danelli were hired as contractors. Brigati did not participate. In 1989, Danelli and Cornish sued Cavaliere for permission to perform as the Rascals. This lawsuit was resolved in 1990 via a settlement, which granted Danelli and Cornish the ability to perform as “The New Rascals, featuring Dino Danelli and Gene Cornish”. Cavaliere could play the role of “Felix Cavaliere’s Rascals”. Brigati was not a party to the lawsuit or the settlement agreement.

In 1990, Brigati filed a separate lawsuit regarding the rights to certain Rascals records and other assets. In 1992, all band members entered into a settlement agreement, which established the procedures for the distribution of the proceeds from the sale of the Rascals recordings and the disposition of the Rascal assets. The band members have also entered into a partnership agreement, under which the partnership owns the rights to the RASCALS and YOUNG RASCALS brands. for musical recordings.

From 1970 to 2012, Cavaliere, Danelli and Cornish each played under a variation of the name Rascals. Brigati no. In 2012 and 2013, Brigati joined the other three members in the performance of the musical “The Rascals: Once Upon a Dream”. It was the first time the four members had performed and toured together since 1970.

In 2017, Cavaliere and Cornish formed a touring company, Beata Music, LLC (“Beata”), and transferred to Beata “all rights they had to the RASCALS trademark”. for live shows.” Beata then sought to register the mark RASCALS. In 2018, Brigati and Danelli filed an opposition to Beata’s trademark application. Beata then filed a lawsuit against Brigati and Danelli regarding her RASCALS trademark application. regarding live performance. Danelli countersued, alleging, among others, claims of unfair competition under New York common law and of misrepresentation of origin under section 43(a) of the Lanham Act.

To establish a false original claim designation under Section 43(a) or an unfair competition claim under New York common law, a party must establish that (i) it possesses a valid trademark entitled to protection and that (ii) the opposing party’s use of the mark is likely to cause confusion.

It was undisputed that the quartet collectively owned the trademarks RASCALS and YOUNG RASCALS for musical sound recordings, under the partnership contract. Beata, however, argued that Brigati had dropped its remaining interest in the RASCALS brand. Abandonment of a mark requires both (i) “the non-use of the mark by the legal owner” and (ii) “the absence of intention by that person to resume use of it in a reasonably foreseeable future”.

On January 6, 2022, the United States District Court for the Southern District of New York agreed that Brigati had dropped its interest in the RASCALS trademark. The Court held that Brigati could not point to any use of the RASCALS trademark between 1970 and 2012 when the band came together to perform the musical Rascals. Brigati neither attempted to join the Rascals’ 1988 reunion tour, nor any of the tours and performances organized by his bandmates. Brigati even turned down touring opportunities with the Rascals, which might have strengthened his association with the RASCALS brand. The Court also pointed to the fact that Brigati was not a party to the 1989 lawsuit regarding the other band member’s use of the RASCALS trademark for live performances as further evidence in support of abandonment. Although Brigati was a party to the 1990 lawsuit and the corresponding 1992 settlement agreement, the Court did not recognize this as an intention to use the mark.

Thus, the Court stated that “Brigati cannot establish deliberate and continued use of the RASCALS trademark after leaving the group in 1970”, and ruled in favor of Beata.

To take with. This case reinforces the old adage, “if you don’t use it, you lose it.” To acquire and maintain trademark rights, the trademark must be used. Non-use of a trademark for three consecutive years constitutes “prima facie evidence of abandonment”.

Beata Music LLC c. Dino Danelli, Eddie Brigati, et al., Case No. 18-cv-6354 (SDNY 2022).

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