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

In 1994, Spanky and Alfalfa’s friendship went through a tumultuous period when Alfalfa abandoned the boys only club in favor of spending 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 has reconciled any threat of disbandment, leading to a happy ending forever.

Before the boy-only club of Spanky and Alfalfa, there was the chart-topping rock band of the 60s, 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 immense success in the mid to late 1960s, including reaching nine top 20 singles on 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 Rascals reunion tour – Cornish and Danelli were hired as entrepreneurs. Brigati did not participate. In 1989, Danelli and Cornish filed a lawsuit against Cavaliere so they could perform as the Rascals. This lawsuit was resolved in 1990 via a settlement, which granted Danelli and Cornish the opportunity to perform as “The New Rascals, starring Dino Danelli and Gene Cornish”. Cavaliere could play the role of “Felix Cavaliere rascals”. Brigati was not a party to the lawsuit or the settlement agreement.

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

From 1970 to 2012, Cavaliere, Danelli and Cornish each performed under a variation of the name Rascals. Brigati did not. 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 in the RASCALS brand. for live shows. “Beata then sought to register the RASCALS trademark. In 2018, Brigati and Danelli filed an opposition to Beata’s trademark application. Beata then filed a lawsuit against Brigati and Danelli regarding their RASCALS trademark application. with regard to live shows. Danelli counterattacked, alleging, among others, unfair competition claims under New York common law and false appellation of origin claims under section 43 (a) of Lanham Law.

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

It was not disputed that the quartet collectively owned the brands RASCALS and YOUNG RASCALS for musical sound recordings, as part of the partnership agreement. Beata, however, argued that Brigati gave up her remaining interest in the RASCALS brand. Abandonment of a mark requires both (i) “non-use of the mark by the legal owner” and (ii) “no intention of that person to resume use in the reasonably foreseeable future” .

On January 6, 2022, the United States District Court for the Southern District of New York agreed that Brigati was abandoning its interest in the RASCALS brand. The court ruled that Brigati could not indicate the use of the RASCALS mark between 1970 and 2012, when the group came together to perform the musical Rascals. Brigati did not attempt to join the 1988 Rascals reunion tour, nor any of the tours and performances her band mates put on. Brigati even turned down tour opportunities with the Rascals, which could have strengthened her association with the RASCALS brand. The Court also noted that Brigati was not a party to the 1989 lawsuit concerning the other member’s use of the RASCALS mark for live performances as further evidence in support of the 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 declared that “Brigati cannot establish the deliberate and continued use of the RASCALS mark 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, one must use the trademark. Non-use of a mark for three consecutive years constitutes “prima facie evidence of abandonment”.

Beata Music LLC v Dino Danelli, Eddie Brigati, et al., Case n ° 18-cv-6354 (SDNY 2022).

Corina C. Butler