James M. Slattery Wins Summary Judgment in ‘THE DRIFTERS’ Trademark Case

BSKB is pleased to announce that senior partner James M. Slattery was successful with respect to a Motion for Summary Judgment that was filed in the U.S. District Court for the Eastern District of Virginia, Alexandria Division with respect to the trademark BILL PINKNEY’S ORIGINAL DRIFTERS. Treadwell Original Drifters, LLC v. Original Drifters, Inc., No. 15-00580 (E.D. Va. Jan. 28, 2016).

The Summary Judgment action was from an appeal from a decision of the TTAB arising over the ownership of trademark rights in the mark "THE DRIFTERS." Since 1953, BSKB's client has used the mark "BILL PINKNEY'S ORIGINAL DRIFTERS" and currently owns a U.S. Trademark Registration for this mark. Treadwell Original Drifters, LLC, (Treadwell)-a corporation claiming ownership rights based on a former manager of the group-filed a Petition for Cancellation with the TTAB. The TTAB denied the Petition for Cancellation. Treadwell appealed to the U.S. District Court to reverse this decision.

“THE DRIFTERS" refers to a doo-wop group formed in 1953. The group is still in existence and performing. Around November 1954, The Drifters, Inc. was formed "to serve as the corporate owner of 'THE DRIFTERS' trademark, and to manage the group." George Treadwell was not an original shareholder of this corporation, but he purchased shares in this company on January 10, 1957. George Treadwell was the manager of THE DRIFTERS until his death in 1967. After his death, his wife, Faye Treadwell, managed the group until her death. In the District Court appeal, Tina Treadwell, Faye Treadwell's daughter, claimed ownership in the mark.

The court relied on the doctrine of issue preclusion with respect to a prior TTAB decision based on a recent Supreme Court decision in B&B Hardware, Inc. v. Hargis Indus., 135 S.Ct. 1293, 1302 (2015). The Court noted that the general rule of issue preclusion provides that "[w]hen an issue of fact or law is actually litigated and determined by a valid and final judgment, and the determination is essential to the judgment, the determination is conclusive in a subsequent action between the parties, whether on the same or a different claim." Id. at 1303 (citing Restatement (Second) of Judgments § 27, p. 250 (1980)).

The dispute with respect to the mark THE DRIFTERS has been ongoing. In 1958, the Supreme Court of New York issued a decision in The Drifters, Inc. v. Circle Artists Corp., 178 N.Y.S.2d 713 (N.Y. Sup. Ct. 1958) wherein a predecessor-in-interest to Treadwell sought a preliminary injunction to stop Mr. Pinkney from using the mark THE DRIFTERS. The Supreme Court of New York issued a decision denying the motion for a preliminary injunction. In 2004, the TTAB issued a decision sustaining Mr. Pinkney’s opposition to Treadwell's application to register the mark "THE DRIFTERS." In 2009, the TTAB issued a decision denying the Opposition to Mr. Pinkney's pending application to register "BILL PINKNEY'S ORIGINAL DRIFTERS." In 2015, the TTAB issued a decision dismissing Treadwell’s cancellation petition.

The Court applied the doctrine of issue preclusion based on the 2004 decision of the TTAB. On June 16, 1989, a predecessor-in-interest to Treadwell applied to the USPTO to register the mark "THE DRIFTERS," Application No. 73/807,122. Mr. Pinkney filed an opposition to this application, Opp. No. 91151984. On September 24, 2004, the TTAB sided with Mr. Pinkney and denied the predecessor-in-interest to Treadwell’s application. 2004 WL 2368485, at *3 (Sept. 24, 2004). The predecessor-in-interest to Treadwell did not appeal this decision.

The Court held that all elements of issue preclusion had been satisfied as to the TTAB’s 2004 decision to sustain Opposition No. 91151984 and thus the parties are prevented from re-litigating the issue of priority. Because priority is the only issue Treadwell had asked the Court to rule on, the Court proceeded to dismiss this action.