Wolf Greenfield and Leason Ellis teamed up for an impressive victory before the United States Court of Appeals for the Third Circuit in a trademark case for client David Beasley. In 1969 Beasley founded the band, The Ebonys, a pioneer in the rhythm and blues style known as the “Philadelphia Sound.” Beasley has been in a long-running dispute with William Howard, who joined the band briefly in the 1990s. After leaving the band, Howard obtained a federal trademark registration for the name “The Ebonys” without Beasley’s permission.
Beasley filed two pro se petitions before the Trademark Trial and Appeal Board (“TTAB”) to cancel Howard’s registration. The TTAB dismissed those petitions, the first because Beasley failed to prove his claim of fraud, and the second on procedural grounds. Beasley then filed a handwritten complaint for trademark infringement in the New Jersey federal court. The court, relying on the legal doctrine of preclusion - which protects a defendant against multiple lawsuits based on the same set of facts - dismissed Beasley’s complaint.
When Beasley filed an appeal in the US Court of Appeals for the Third Circuit, Attorneys John Welch of Wolf Greenfield and Martin Schwimmer of the New York firm of Leason Ellis took over representation of Beasley on a pro bono basis. They convinced the appellate court that Beasley’s infringement claim was not the same claim as those he filed with the TTAB, and therefore that claim preclusion did not apply. The Third Circuit reversed the district court’s ruling on claim preclusion and returned the case to the New Jersey federal court for further proceedings.
The decision clarifies the distinction between the nature of claims in TTAB proceedings and civil lawsuits, allowing a potential plaintiff to challenge a registration at the administrative level without having to commence a full-blown federal lawsuit in order to vindicate its rights.
Read more about the Third Circuit’s decision and its implications by visiting John Welch's TTABlog.