The Marshall Tucker Band, Inc.v.MT Industries, Inc.

Trademark Trial and Appeal Board

Mar 30, 2021

92065794 (T.T.A.B. Mar. 30, 2021)

This Opinion is Not a
Precedent of the TTAB

Hearing: January 27, 2021 Mailed: March 30, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

The Marshall Tucker Band, Inc.
v.
MT Industries, Inc.
_____

Cancellation No. 92065794

_____

Sarah S. Brooks of Venable LLP
for The Marshall Tucker Band, Inc.
Richard L. Albert of Law Offices of Richard Albert
for MT Industries, Inc.
_____

Before Mermelstein, Kuczma and English, Administrative Trademark Judges.

Opinion by English, Administrative Trademark Judge:
MT Industries, Inc. (“Respondent” or “MTI”) owns registrations on the Principal
Register for the marks set forth below:
 MARSHALL TUCKER BAND, standard characters, for “digital media,
namely, pre-recorded DVDs, downloadable audio and video recordings, and
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CDs featuring and promoting music; musical sound recordings; musical video
recordings; phonograph records featuring music” in International Class 9;1 and
 (the “Logo Mark”) for “digital media, namely, pre-recorded DVDs,
downloadable audio and video recordings, and CDs featuring and promoting
music; musical recordings; musical sound recordings; musical video
recordings” in International Class 9.2
The registrations matured from applications that Respondent filed based on claims
of use in commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a).
As grounds for cancellation, the Marshall Tucker Band, Inc. (“Petitioner” or
“MTB”) alleges that it “is the sole and exclusive owner of the [involved] Marks,” and
therefore, Respondent is not and was not the owner of the involved marks when
Respondent filed the use-based applications to register the marks on December 6,
2013.3 Petitioner further alleges fraud on grounds that when Respondent filed the

1 Registration No. 4616427; issued October 7, 2014 from an application filed December 6,
2013 under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), alleging April 1973 as its
dates of first use and first use in commerce; “band” disclaimed. Section 8 accepted.
2 Registration No. 4616428; issued October 7, 2014 from an application filed December 6,
2013 under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), alleging January 2005 as
its dates of first use and first use in commerce; “band” disclaimed. Section 8 accepted. The
registration includes the following description: “The mark consists of ‘The Marshall Tucker
Band’ in stylized form.” Color is not claimed as a feature of the mark.
3 Petition, 1 TTABVUE 5, 8, ¶¶ 10, 32-34. Respondent mistakenly asserts that Petitioner’s
non-ownership claim is a claim under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d).
Respondent’s Brief, 105 TTABVUE 34. While a party must prove prior ownership of a mark
to prevail in a likelihood of confusion case under Section 2(d), a non-ownership claim is a
specifically different claim that may be asserted without pleading likelihood of confusion, as
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underlying use-based applications Respondent falsely declared that: (i) it owned the
marks; (ii) no other person had the right to use the marks for the identified goods;
and (iii) it had the right to use the marks “without any limitation … in violation of
[a] 1984 Agreement” between the parties.4
In its answer, Respondent made numerous admissions that we reference in this
opinion to the extent pertinent.5
The case is fully briefed. An oral hearing was held on January 27, 2021. For the
reasons explained below, we grant the petition for cancellation on Petitioner’s claim
of non-ownership. We do not reach Petitioner’s fraud claim. Yazhong Investing Ltd.
v. Multi-Media Tech. Ventures, Ltd., 126 USPQ2d 1526, 1540 n.52 (TTAB 2018)
(Board has the “discretion to decide only those claims necessary to enter judgment
and dispose of the case”); Multisorb Techs., Inc. v. Pactiv Corp., 109 USPQ2d 1170,
1171, 1172 n.1 (TTAB 2013) (“[T]he Board’s determination of registrability does not
require, in every instance, decision on every pleaded claim”).

Petitioner has done here. Conolty v. Conolty O’Connor NYC, LLC, 111 USPQ2d 1302, 1304
n.4 (TTAB 2014) (“likelihood of confusion and nonownership are distinctly different claims”).
4 Petition, 1 TTABVUE 9, ¶¶ 37-39. Petitioner also alleged that Respondent claimed false
dates of first use. Id. at 9-10, ¶¶ 40-41. The dates of first use stated in an application are not
material to the issuance of a registration, so an allegation of incorrect dates of first use is not
a viable basis for a fraud claim. Hiraga v. Arena, 90 USPQ2d 1102, 1107 (TTAB 2009)
(explaining that dates of first use are not material to the Office’s decision to approve a mark
for publication and therefore cannot give rise to a claim of fraud).
5 Respondent also pleaded a number of “affirmative defenses.” The first, second, sixth,
seventh, ninth, thirteenth and fourteenth defenses are not true “affirmative defenses” but
are merely amplifications of Respondent’s denials. Respondent has forfeited the fifth, tenth
and fifteen affirmative defenses of claim preclusion, laches, and failure to state a claim for
fraud because Respondent did not pursue these affirmative defenses in its brief. The
remaining affirmative defenses have no merit for the reasons explained.
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I. The Record and Evidentiary Objections
Petitioner’s Motion to Strike
On January 14, 2020, Petitioner filed a motion to strike portions of Ron Rainey’s
testimony and amended testimony declarations and exhibits thereto.6 The motion
was deferred until final decision.7 Petitioner renewed the motion to strike in an
appendix to its brief.
Petitioner’s objections to the Rainey testimony and referenced exhibits are
numerous. None of the evidence Petitioner seeks to strike is outcome determinative.8
Moreover, the Board is capable of weighing the relevance and strength or weakness
of the objected-to testimony and evidence, including any inherent limitations, and
this precludes the need to strike the testimony and evidence. Accordingly, we do not
address Petitioner’s specific objections. To the extent necessary, we point out any
limitations of the objected-to evidence or otherwise note that the evidence cannot be
relied on for a certain reason.
Respondent’s Objections to the Testimony of Cedar Boschan
In an appendix to its brief, Respondent raises several objections to the testimony
declarations, and attachments thereto, of Petitioner’s expert Cedar Boschan.

6 Rainey Declaration, 77 TTABVUE (redacted); 78 TTABVUE (confidential); Amendment to
Rainey Declaration, 84 TTABVUE.
7 Board’s July 1, 2020 Order, 102 TTABVUE 3.
8 Or, in some instances, Petitioner waived its objections by introducing duplicate copies of the
evidence during its trial period. See, e.g., Rainey Declaration, 77 TTABVUE 45-52, Exhibits
3 and 4; Gray Rebuttal Declaration, 95 TTABVUE 13-15, 19-21, Exhibits B and D.
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Respondent requests that the Board “disregard all evidence from, or referencing to,
Cedar Boschan’s testimony deposition.” 105 TTABVUE 105, 110. We do not rely on
the Boschan testimony or exhibits in reaching our decision so we need not address
Respondent’s objections thereto.
Over Designation of Evidence as Confidential
Both parties over-designated evidence as confidential. For example, Petitioner
designated nearly all of Ron Rainey’s discovery deposition transcript as confidential
while Respondent did the same with Doug Gray’s discovery deposition transcript
notwithstanding that much of the testimony is not confidential.9
Board proceedings are designed to be public, and the improper designation of
material as confidential thwarts this objective. Edwards Lifesciences Corp. v.
VigiLanz Corp., 94 USPQ2d 1399, 1402 (TTAB 2010). Unless there is a legitimate
need for confidentiality, the Board must be able to discuss the evidence of record as
needed to explain the basis for its decision. Id. Accordingly, in this opinion, we treat
as confidential only evidence that is clearly confidential or commercially sensitive.
Trademark Rule 2.116(g), 37 C.F.R. § 2.116(g) (“The Board may treat as not
confidential that material which cannot reasonably be considered confidential,
notwithstanding a designation as such by a party.”); see also Noble House Home
Furnishings, LLC v. Floorco Enters., LLC, 118 USPQ2d 1413, 1416 n.21 (TTAB 2016)
(“[W]e will treat only testimony and evidence that is truly confidential or

9 66 TTABVUE; 68 TTABVUE; 81 TTABVUE.
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commercially sensitive as such.”); Edwards Lifesciences Corp., 94 USPQ2d at 1402-
03 (“Because of the over designation of testimony and evidence by the parties, it is
not clear to us what is intended to be truly ‘Confidential’ and ‘Confidential Attorney’s
Eyes Only.’ Therefore, in rendering our decision, we will not be bound by the parties’
designation.”).
Evidentiary Record
The record includes the pleadings and, by operation of Trademark Rule
2.122(b)(1), 37 CFR § 2.122(b)(1), Respondent’s involved registrations. The parties
also introduced evidence during trial.
Petitioner’s evidence consists of:10
1. Petitioner’s First Amended Notice of Reliance on Respondent’s
supplemental responses to Petitioner’s first set of interrogatories, filed
on June 11, 2019;11
2. Petitioner’s Sixth Amended Notice of Reliance on Respondent’s
responses to Petitioner’s first set of interrogatories, filed June 11,
2019;12
3. Petitioner’s Seventh Amended Notice of Reliance on Respondent’s
admissions to Petitioner’s first set of requests for admission, filed June
11, 2019;13

10 Pursuant to the Board’s November 4, 2019 order (74 TTABVUE), we have given no
consideration to the following evidence, which was either stricken or deemed superseded by
amended filings: 43 TTABVUE, 45-46 TTABVUE, 48-54 TTABVUE, and 56-58 TTABVUE.
11 55 TTABVUE.
12 59 TTABVUE.
13 60 TTABVUE. We have not considered those requests for admission that Respondent did
not admit because only an admission to a request for admission may be introduced by notice
of reliance. Life Zone Inc. v. Middleman Grp. Inc., 87 USPQ2d 1953, 1957 n.10 (TTAB 2008)
(“[U]nlike an admission (or a failure to respond which constitutes an admission), the denial
of a request for admission establishes neither the truth nor the falsity of the assertion, but
rather leaves the matter for proof at trial.”). For this same reason, we have not considered
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4. Petitioner’s Ninth Notice of Reliance on the December 5, 2016 discovery
deposition, including exhibits, of Ron Rainey,14 President and Chief
Executive Officer of Respondent, taken in a prior civil action between
the parties, filed June 13, 2019;15
5. Petitioner’s Tenth Notice of Reliance on the May 22, 2018 discovery
deposition, including exhibits, of Ron Rainey taken in this proceeding,
filed June 13, 2019;16
6. Petitioner’s Eleventh Notice of Reliance on portions of the discovery
deposition, including exhibits, of Harold Douglas Gray, filed February
19, 2020;17
7. Trial Declaration, including exhibits, of Harold Douglas Gray, sole
officer and director of Petitioner, filed June 13, 2019;18
8. Trial Declaration and accompanying expert report of Cedar Boschan,
filed June 25, 2019;19
9. Trial Declaration of Kenneth Kraus, filed November 14, 2019;20
10. Rebuttal Trial Declaration, including exhibits, of Harold Douglas Gray,
filed February 28, 2020;21 and

Petitioner’s Fifth Amended Notice of Reliance on Respondent’s responses to Petitioner’s
second set of requests for admission, which consists solely of denials. 75 TTABVUE.
14 In filings, Mr. Rainey is referred to both as Ron Rainey and Ronald Rainey.
15 65 TTABVUE (confidential); 66 TTABVUE (redacted). The parties stipulated to, and the
Board approved, use of this deposition at trial. 32 TTABVUE 16-17; 74 TTABVUE 2.
16 67 TTABVUE (confidential); 68 TTABVUE (redacted). Petitioner refiled the entire Rainey
discovery deposition transcript, omitting the errata sheet, during its rebuttal period on
February 19, 2020. 90 TTABVUE (redacted); 91 TTABVUE (confidential). This duplicative
filing was unnecessary.
17 92 TTABVUE (redacted); 93 TTABVUE (confidential).
18 64 TTABVUE.
19 72 TTABVUE. This filing was made when proceedings were suspended, but the Board
deemed the filing timely “for the sake of judicial efficiency[.]” Board’s November 4, 2019
Order, 74 TTABVUE 5.
20 76 TTABVUE.
21 95 TTABVUE (redacted); 96 TTABVUE (confidential).
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11. Rebuttal Trial Declaration, including exhibits, of Cedar Boschan, filed
February 28, 2020.22
Respondent introduced the following evidence:
1. Trial Declaration, including exhibits, of Ronald Rainey, filed January 2,
2020, and amendment thereto, filed January 13, 2020;23
2. Respondent’s First Notice of Reliance on Respondent’s first set of
requests for admission, Petitioner’s amended admissions thereto, and
Petitioner’s responses to Respondent’s first set of interrogatories, filed
January 2, 2020;24
3. Respondent’s Second Notice of Reliance on portions of the discovery
deposition, including exhibits, of Harold Douglas Gray, filed January 2,
2020;25 and
4. Respondent’s Third Notice of Reliance on Petitioner’s expired
Registration No. 1023429 and prosecution records related to Petitioner’s
now-abandoned applications to register the word mark involved here.26
II. Entitlement to a Statutory Cause of Action
Petitioner must demonstrate that it is entitled to bring a statutory cause of action
against Respondent.27 See Australian Therapeutic Supplies Pty. Ltd. v. Naked TM,

22 97 TTABVUE (redacted); 98 TTABVUE (confidential).
23 77 TTABVUE (redacted); 78 TTABVUE (confidential); 84 TTABVUE.
24 79 TTABVUE (redacted); 80 TTABVUE (confidential). On February 10, 2020, Petitioner
filed a motion to strike Respondent’s first set of requests for admission and exhibits 2-4
thereto as well as Petitioner’s denials to any requests for admission. 88 TTABVUE. The
Board granted Petitioner’s motion with respect to “Petitioner’s denials to any requests for
admission, and the corresponding requests,” but otherwise denied the motion. Board’s July
1, 2020 Order, 102 TTABVUE 5.
25 81 TTABVUE (redacted); 82 TTABVUE (confidential).
26 83 TTABVUE. Respondent unnecessarily filed printouts from the U.S. Patent and
Trademark Office’s Trademark Status and Document Retrieval database showing the
current status and title of the involved registrations. As noted, these registrations are
automatically of record pursuant to Trademark Rule 2.122(b)(1).
27 Our decisions have previously analyzed the requirements of Sections 13 and 14 of the
Trademark Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” We now refer to this
inquiry as entitlement to a statutory cause of action. Despite the change in nomenclature,
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LLC, 965 F.3d 1370, 2020 USPQ2d 10837, at *3 (Fed. Cir. 2020) (citing Lexmark Int’l,
Inc. v. Static Control Components, Inc., 572 U.S. 118, 109 USPQ2d 2061, 2067 n.4
(2014)). Specifically, Petitioner must prove that this cancellation action is within its
zone of interests protected by the statute, 15 U.S.C. § 1064, and that it has a
reasonable belief in damage proximately caused by registration of the marks, i.e.,
that it is not a mere intermeddler. Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020
USPQ2d 11277, at *6-7 (Fed. Cir. 2020).
In its answer, Respondent admits that Petitioner: (1) “is the legal touring entity
of the [Marshall Tucker] Band, which uses, is described by, and is identified with the
[involved] Marks”; (2) “owns, among other things, the merchandising rights to goods
and apparel bearing the [involved] Marks”;28 and (3) in 1984, the parties and then-
living band members “executed a letter agreement … outlining the agreement
between and among those parties” regarding the band’s name (the “1984
Agreement”).29 Gray also testified regarding the parties’ 1984 Agreement concerning
the band’s name and that, “[i]n connection with running” Petitioner, Gray handles

our prior decisions and those of the Federal Circuit interpreting “standing” under §§ 1063
and 1064 remain applicable. See Spanishtown Enters., Inc. v. Transcend Res., Inc., 2020
USPQ2d 11388, at *2 (TTAB 2020).
Respondent asserts in passing that “Petitioner failed to adequately plead or suffer damages,”
105 TTABVUE 13, but Petitioner has sufficiently alleged “damage” by its allegations that
Petitioner is the owner of the involved marks, is the legal touring entity of the band, owns
the merchandising rights to the involved marks, and entered into an agreement with
Respondent concerning the band’s name.
28 However, Respondent “denies that Petitioner owns merchandising rights to any music
recordings of the Band, regardless of whether such recordings bear the Marks or not.”
Answer, 4 TATBVUE 5, ¶ 13.
29 Petition, 1 TTABVUE 5-6, ¶¶ 11, 13, 20-21; Answer, 4 TTABVUE 5, ¶¶ 11, 13, 20-21.
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merchandising for the band as well as the band’s website.30 Respondent’s admissions
and Gray’s testimony demonstrate that this cancellation action is within Petitioner’s
zone of protected interests and that Petitioner is not a mere intermeddler, but has a
reasonable belief in damage. See UMG Recordings, Inc. v. O’Rourke, 92 USPQ2d
1042, 1045 (TTAB 2009) (“An admission obviates the need to prove the admitted
allegation of fact[.]”); see also, e.g., Wonderbread 5 v. Patrick Giles, 115 USPQ2d 1296,
1301 (TTAB 2015) (using mark in rendering live musical performances and in social
media to identify itself demonstrated that petitioner had a “real interest” in the
proceeding); Bausch & Lomb Inc. v. Karl Storz GmbH & Co. KG, 87 USPQ2d 1526,
1530 (TTAB 2008) (standing based on parties’ agreement regarding the involved
mark).
Notwithstanding the foregoing, Respondent argues that Petitioner cannot
demonstrate an entitlement to a statutory cause of action because: (1) “by the 1984
Letter Agreement,” Petitioner “‘contracted away its right to use and register’ the
Marks” and “waived claims of confusion and competition or lost revenues from
Registrant’s use of the Marks, when Petitioner consented to such use in the 1984
Letter Agreement”31; and (2) issue preclusion bars Petitioner “from alleging use of the
Marks caused it harm or confusion because [Petitioner’s] claims of trademark
infringement and dilution were unsuccessful in [a prior] Federal lawsuit [between

30 Gray Declaration, 64 TTABVUE 4-7, ¶¶ 9-22, 25-27.
31 Respondent’s Brief, 105 TTABVUE 49-50.
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the parties], precluding litigation of the confusion and harm arising from use of the
Marks.”32
With respect to Respondent’s first argument, as discussed in Section III. D. below,
Petitioner did not “‘contract[] away its right to use and register’ the Marks” in the
1984 Agreement. But even if it had, that would not preclude a finding that Petitioner
is entitled to a statutory cause of action. The case that Respondent cites to support
its position, Australian Therapeutic Supplies Pty., Ltd. v. Naked TM, LLC., 129
USPQ2d 1027, 1031 (TTAB 2018), was reversed by the Federal Circuit, 965 F.3d

32 Id. at 50.
Respondent also argues that Petitioner’s unsuccessful attempt to register the involved word
mark cannot form the basis for Petitioner’s entitlement to a statutory cause of action because
Petitioner: (1) has not shown “that but-for Registrant’s registrations, it could not obtain its
own registrations, when there were multiple reasons listed by the examiner in the Offices
[sic] Actions, which Petitioner ignored”; (2) “abandoned its own applications for a registration
of the Word Mark” and has not proven that it “was ever entitled to obtain its registrations”;
and (3) has “unclean hands” because when it filed applications for the word mark “Petitioner
attached Registrant’s CD packaging art, owned and used by Registrant on its CDs” as its
specimens of use and Petitioner “had never used the Marks on any music recordings it sought
to register.” Id. at 51-52. Petitioner did not plead the referenced applications in its petition
for cancellation, but did argue in its brief that the Office’s refusal of Petitioner’s applications
demonstrates that Petitioner has an entitlement to a statutory cause of action. Petitioner’s
Brief, 103 TTABVUE 19, 28.
For the reasons explained in this decision, Respondent is Petitioner’s licensee such that
Petitioner did not act with “unclean hands” in using Respondent’s CD cover as a specimen of
use. In any event, the record establishes other bases for Petitioner’s entitlement to a statutory
cause of action such that unclean hands, even if proven, would not deprive Petitioner of an
entitlement to a statutory cause of action. Great Seats, Inc. v. Great Seats, Ltd., 84 USPQ2d
1235, 1244 n.10 (TTAB 2007) (“Respondent’s defense of unclean hands, even if proven, does
not deprive petitioner of standing”).

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1370, 2020 USPQ2d 10837 (Fed. Cir. 2020). In reversing the Board’s decision, the
Federal Circuit explained:
Neither § 1064 nor our precedent requires that a petitioner have a
proprietary right in its own mark in order to demonstrate a cause of
action before the Board…. [Accordingly] [c]ontracting away one’s rights
to use a trademark does not preclude a petitioner from challenging a
mark before the Board…. While an agreement could ultimately bar [a
plaintiff] from proving actual damage, § 1064 requires only a belief of
damage.” 2020 USPQ2d 10837, at *3-4.

Here, Respondent’s admissions that Petitioner is the “legal touring entity” of the
band, which uses the involved marks and that Petitioner owns the rights to
merchandise certain goods bearing the involved marks, establishes that this
cancellation action is within Petitioner’s zone of protected interests and that
Petitioner has a reasonable belief in damage.
Petitioner has not pleaded likelihood of confusion as a claim or basis for its
entitlement to a statutory cause of action, and as the Federal Circuit has explained,
actual damage such as lost revenue is not necessary to establish entitlement to a
statutory cause of action. Id. at *4; see also, e.g., Montecash LLC v. Anzar Enters. Inc.,
95 USPQ2d 1060, 1062 (TTAB 2010) (“no requirement that any actual ‘damage’ be
pled or proved to establish standing or even prevail in a cancellation proceeding”);
Enbridge, Inc. v. Excelerate Energy L.P., 92 USPQ2d 1537, 1543 n.10 (TTAB 2009)
(plaintiff does not have to prove claims or actual damage to establish standing).
Nor does issue preclusion apply. The parties were previously involved in a case in
the United States District Court for the District of South Carolina: Marshall Tucker
Band, Inc. & Doug Gray v. MT Industries, Inc. & Ron Rainey, 7:16-cv-00420-MGL. In
Cancellation No. 92065794
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the civil case, Petitioner pleaded claims for infringement and dilution under the
Trademark Act, declaratory judgment, and cancellation of the registrations involved
in this proceeding as well as several state law claims. In this proceeding, however,
Petitioner did not plead that Respondent’s registrations are “infringing or diluting.”
But even if it had, issue preclusion would not apply because no issues were actually
litigated in the prior civil action between the parties. B&B Hardware, Inc. v. Hargis
Ind., Inc., 575 U.S. 138, 113 USPQ2d 2045, 2051 (2015) (explaining that the “general
rule” of issue preclusion is that “‘when 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.”) (citing the Restatement (Second) of
Judgments § 27, p. 250 (1980)). All of the claims in the civil litigation were dismissed
at the pleading stage.33
For all of the foregoing reasons, the record establishes that Petitioner is entitled
to a statutory cause of action.

33 Rainey Declaration, 77 TTABVUE 117-118; see also id. at 92, ¶ 84 (the federal case “in its
entirety was dismissed on the pleadings on March 1, 2017”). Specifically: “The Court granted
[Respondent’s] motion to dismiss, dismissing [Petitioner’s] federal trademark infringement
and trademark dilution claims with prejudice. In that those were the only claims establishing
independent federal jurisdiction over the action, the Court dismissed without prejudice
[Petitioner’s] federal trademark cancellation and declaratory judgment claims for lack of
subject matter jurisdiction. The Court also declined to exercise supplemental jurisdiction over
[Petitioner’s] state law claims, dismissing them without prejudice as well.” Id. 117-118.
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III. Non-Ownership
A. Applicable Law
Under Trademark Act Section 1(a), only the owner of a mark is entitled to apply
for federal registration. 15 U.S.C. § 1051(a) (“The owner of a trademark used in
commerce may request registration of its trademark. . . .”); see e.g., Huang v. Tzu Wei
Chen Food Co., 849 F.2d 1458, 7 USPQ2d 1335, 1335, 1336 (Fed. Cir. 1988)
(application void because Applicant did not own the mark when he filed the use-based
application); In re Wella A.G., 787 F.2d 1549, 229 USPQ 274, 277 (Fed. Cir. 1986)
(C.J. Nies concurring) (“Under section 1 of the Lanham Act, only the owner of a mark
is entitled to apply for registration.”); Wonderbread, 115 USPQ2d at 1303; Great Seats
Ltd., 84 USPQ2d at 1239. Ownership rights accrue through use of a mark. See, e.g.,
Jean Patou, Inc. v. Theon, Inc., 9 F.3d 971, 29 USPQ2d 1771, 1774 (Fed. Cir. 1993);
Hydro-Dynamics, Inc. v. George Putman & Co., 811 F.2d 1470, 1 USPQ2d 1772, 1774
(Fed. Cir. 1987); Moreno v. Pro Boxing Supplies, Inc., 124 USPQ2d 1028, 1036, n.39
(TTAB 2017).
Any use of a mark by a licensee inures to the benefit of the licensor as the owner
of the mark. Moreno, 124 USPQ2d at 1035 (“It is well-settled that use of a mark by a
licensee inures to the benefit of the trademark owner.”); Quality Candy
Shoppes/Buddy Squirrel of Wisconsin, Inc. v. Grande Foods, 90 USPQ2d 1389, 1392
(TTAB 2007) (“A basic principle underpinning trademark law in the United States is
use of a mark in commerce; and years of precedent make it very clear that proper use
of a mark by a trademark owner’s licensee or related company constitutes ‘use’ of that
Cancellation No. 92065794
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mark attributable to the trademark owner.”).
To be a valid license, a licensor must “exercise sufficient control to guarantee the
quality of the goods sold to the public under the mark.” Woodstock’s Enters. Inc.
(California) v. Woodstock’s Enters. Inc. (Oregon), 43 USPQ2d 1440, 1446 (TTAB
1997), aff’d, 152 F.3d 942 (Fed. Cir. 1998) (“The rationale behind quality control is
that the public has a right to expect a consistent quality of goods or services associated
with a trademark or service mark.”); see also Taco Cabana Int’l Inc., v. Two Pesos
Inc., 932 F.2d 1113, 19 USPQ2d 1253, 1259 (5th Cir. 1991), aff’d, 505 U.S. 763, 23
USPQ2d 1081 (1993) (“The purpose of the quality-control requirement is to prevent
the public deception that would ensue from variant quality standards under the same
mark[.]”). The licensor’s quality control efforts need not be comprehensive or
extensive. Woodstock’s Enters., 43 USPQ2d at 1446. Nor do quality control provisions
need to be formal or set out in a written agreement. Id. at 1446-48 (“It is settled …
that a license may be implied”; finding a license despite no formal, written agreement
or formal system of quality control); Univ. Book Store v. Univ. of Wis. Bd. of Regents,
33 USPQ2d 1385, 1396 (TTAB 1994) (implied, royalty-free license); John Anthony,
Inc. v. Fashions by John Anthony, 209 USPQ 517, 525 (TTAB 1980) (oral license);
Winnebago Indus. Inc. v. Oliver & Winston Inc., 207 USPQ 335, 341 (TTAB 1980)
(informal quality control sufficient).
Failure to exercise sufficient quality control or supervision over a licensee’s use
of a licensed mark, i.e. a naked license, may result in abandonment of the mark as to
the licensed goods or services. Woodstock’s Enters., 43 USPQ2d at 1446; Winnebago
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Indus., 207 USPQ at 340. However, under the doctrine of licensee estoppel, during
the time that a license is in force, a licensee cannot challenge the validity of the
licensed mark on the ground that the licensor has not exercised sufficient quality
control. Estate of Biro v. Bic Corp., 18 USPQ2d 1382, 1386 (TTAB 1991) (applicant
estopped from arguing in the alternative that “if the disputed agreement is construed
as a license agreement … then opposer abandoned its proprietary rights, if any, due
to uncontrolled licensing”); see also Leatherwood Scopes Int’l Inc. v. Leatherwood, 63
USPQ2d 1699, 1703 (TTAB 2002) (under doctrine of licensee estoppel, “licensee is
estopped to challenge [licensor’s] ownership of the mark” based on naked licensing);
Garri Publ’n Assocs. Inc. v. Dabora Inc., 10 USPQ2d 1694, 1697 (TTAB 1988) (“[A]
licensee is estopped to challenge the licensor’s rights in the licensed mark [based on
naked licensing] during the time that the license is in force. Upon termination of the
license, the licensee is no longer hampered by the estoppel to the extent that the
licensee is then free to challenge the licensor’s title on the basis of facts which arose
after the expiration of the license.”) see also 3 J. Thomas McCarthy, MCCARTHY ON
TRADEMARKS AND UNFAIR COMPETITION § 18:63 (5th ed. March 2021 update) (“The
licensee estoppel rule is founded on the view that a licensee should not be permitted
to enjoy the use of the licensed mark while at the same time challenging the mark as
being invalid.”).
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B. Parties’ Arguments
Petitioner argues that Respondent is not and was not the owner of the involved
marks when it filed the use-based applications to register the involved marks
because, pursuant to the 1984 Agreement, Respondent is Petitioner’s licensee.34
Respondent argues that “[t]he good will [sic] and benefits from the Bandmembers’
[sic] and Capricorn/No Exit’s35 use of the Marks on the recorded music inured to
Registrant because the Bandmembers [sic] turned over control of their music
recording business to Registrant in 1978, and Registrant bought all of Capricorn/No
Exit’s rights, intangible and physical property rights, to the music recordings.”36
Respondent further argues that the 1984 Agreement was “a consent to use
agreement, maintaining the status quo for Registrant’s use of the Marks on its Goods
as it had done since 1978 through the present day.”37 Alternatively, Respondent
argues that if the 1984 Agreement is deemed a license agreement, it is an
uncontrolled license because Respondent, not Petitioner, has exercised and continues
to exercise quality control over the band’s pre-1984 music recordings, and therefore
Respondent’s use has inured to the benefit of Respondent as owner of the mark.38

34 Because a claim of priority and likelihood of confusion is not at issue here, Respondent’s
arguments that Petitioner is estopped from asserting and has waived its right to assert
priority and likelihood of confusion are inapplicable. Respondent’s Brief, 105 TTABVUE 44,
49.
35 Respondent asserts that Capricorn was an affiliate of No Exit. Id. at 15.
36 Id. at 11, 39.
37 Id. at 11, 39-43.
38 Id. at 11, 39-40.
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C. Timeline
The following timeline of events is pertinent:
 Around 1971: Harold Douglas Gray, Jerry Eubanks, Toy Caldwell, Tommy
Caldwell, Paul Riddle and George McCorkle, form a band and adopt the mark
THE MARSHALL TUCKER BAND to identify the band.39
 June 19, 1972: The band members enter into a music recording contract with
No Exit Music Co., Inc. (the “1972 Agreement”).40 The agreement grants No
Exit ownership rights in the music recordings made pursuant to the
agreement, and the right to use the band’s name (i.e., a license).41
 1973: No Exit releases the band’s first album.42
 January 15, 1974: The band members incorporate Petitioner as a South
Carolina corporation with each band member owning an equal share in the
corporation.43 The Articles of Incorporation identify the “general nature of the
business” as including “[t]o acquire and own copyrights, trademarks, rights of
representation, licenses, and privileges of any sort likely to be conducive to the
objects of the corporation ... and to grant licenses or rights in respect to any

39 Petition, 1 TTABVUE 4-5, ¶¶ 2-3, 5; Answer, 4 TTABVUE 2-4, ¶¶ 2-3, 5.
40 79 TTABVUE 7, Petitioner’s Admission to Respondent’s Request for Admission No. 2
(admitting agreement is genuine).
41 80 TTABVUE 44-45, 1972 Agreement, ¶ 2 (confidential). Because the agreement was filed
under seal as confidential we do not recite the specific terms here but rather refer generally
to the grant of rights, which is necessary to address the merits of Petitioner’s non-ownership
claim.
42 Gray Discovery Deposition, 82 TTABVUE 22-23 (improperly designated as confidential).
43 Gray Declaration, 64 TTABVUE 3, ¶ 5; Gray Rebuttal Declaration, 95 TTABVUE 12-15,
Exhibit B.
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property or property right of the corporation to any person, firm or
corporation.”44
 July 1, 1974: The band members, in their individual capacities, enter into a
new recording agreement with No Exit (the “1974 Agreement”) that supersedes
the 1972 Agreement.45 Again, the agreement grants No Exit ownership rights
in the master recordings made pursuant to the agreement46 and the right to
use, i.e., a license in, the band’s name.47
 February 13, 1978: The band members incorporate Respondent in South
Carolina as equal shareholders “[t]o engage in the business of musical
recordings in all branches of the entertainment business.”48 After Respondent
is incorporated, it enters into all record contracts on behalf of the band
members and collects resulting revenue and royalties.49
 November 8, 1978: Respondent enters into a record contract with Warner
Bros. Records Inc. on behalf of the band members (the “1978 Agreement”).50 In

44 Gray Rebuttal Declaration, 95 TTABVUE 14, Exhibit B.
45 79 TTABVUE 8, Petitioner’s Admission to Request for Admission No. 3 (admitting
agreement is genuine).
46 We refer to these recordings and those made under the 1972 Agreement as the “No Exit
Masters.”
47 80 TTABVUE 63-64, 1974 Agreement, ¶ 9 (confidential).
48 Petition, 1 TTABVUE 6, ¶¶ 16-17, 19; Answer, 4 TTABVUE 5, ¶¶ 16-17, 19; Gray
Declaration, 64 TTABVUE 4, ¶ 7; Gray Rebuttal Declaration, 95 TTABVUE 19-21, Exhibit
D (the Articles of Incorporation also designate the six band members as the company’s board
of directors).
49 Gray Discovery Deposition, 82 TTABVUE 62 (improperly designated as confidential).
50 Rainey Declaration, 78 TTABVUE 82-119. This agreement is among the documents
Petitioner seeks to strike, but in its rebuttal brief (107 TTABVUE 12-13, n.4), Petitioner
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the agreement, Respondent “represents and warrants” that it “has and will
continue to have the sole right to use the professional name MARSHALL
TUCKER BAND … in connection with phonographic records” and permits use
of the name “in accordance with the provisions” of the agreement.51
 Around 1980: Respondent acquires the copyrights in the No Exit Masters.52
 February 22, 1984: The five original living band members, Petitioner, and
Respondent enter into the 1984 Agreement. Pursuant to the 1984 Agreement,
Toy Caldwell, George McCorkle and Paul Riddle resign from MTB and assign
their shares in the company to Doug Gray and Jerry Eubanks.53 Ownership of
MTI remains “as is” and “[e]veryone confirms that MTI (d/b/a Marshall Tucker
Publishing Company) owns all publishing rights in perpetuity in all musical
compositions written by members of the band which were previously recorded
by the band.”54 Paragraph 4 of the agreement further provides:
Toy, Paul and George agree that the name Marshall Tucker Band
and any names similar thereto (collectively “Name”) shall be the
sole and exclusive property of: (i) MTB with respect to future
live performances, (ii) such companies as Doug and Jerry may
elect with respect to the recordings recently financed by Doug
(“Doug’s Record”) and any and all other recordings to be done in
the future; and (iii) MTB with respect to any and all other media,

addressed Respondent’s arguments relating to this agreement so we deem Petitioner to have
forfeited or waived its objection.
51 Respondent’s Brief, 105 TTABVUE 23; 78 TTABVUE 102 (confidential). Respondent filed
the agreement under seal in its entirety (78 TTABVUE 82-114), but referenced the terms of
the agreement in the public version of its brief.
52 Petitioner’s Brief, 103 TTABVUE 11; Gray Rebuttal Declaration, 95 TTABVUE 6, ¶ 16.
53 Petition, 1 TTABVUE 6, ¶¶ 20-21; Answer, 4 TTABVUE 5, ¶¶ 20-21; Petitioner’s Tenth
Notice of Reliance, 68 TTABVUE 165-167, ¶ 1.
54 Petitioner’s Tenth Notice of Reliance, 68 TTABVUE 165, ¶ 2.
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areas and uses. Without limiting the foregoing, everyone agrees
that MTB, Doug, Jerry and such companies shall have the right
to so use said Name with a band comprised of such persons, and
number of persons, as MTB, Doug and Jerry may elect. Anything
to the contrary notwithstanding, MTI shall have the right
to use, and to permit others to use, the Name in connection
with all previously released masters of the band and all
other recordings of the band made prior to the date hereof
(other than Doug’s Record). Neither Toy, Paul nor George
shall have the right to use the Name in any manner whatsoever,
whether with respect to live performances or otherwise, but they
shall have the right to state as part of their biography on the back
(but not the front) of an album jacket (or similar packaging) that
they were formerly with The Marshall Tucker Band.55

 1999 to 2003: Rainey acquires 80% of the stock in Respondent.56
 2003–Present: Rainey owns 80% of the stock in Respondent and Gray owns
the remaining 20% of the stock.57
 Present: Gray is the sole shareholder, office and director of Petitioner.58
D. Analysis
Petitioner does not dispute that Respondent owns the copyrights in the No Exit
Masters and that Respondent has used and continues to have the right to use the
involved marks in connection with the band’s pre-1984 music recordings.59 The sole
issue before us is whether Respondent owned the involved marks for the

55 Id. at 166, ¶ 4 (emphasis added).
56 Rainey Declaration, 77 TTABVUE 15-16, ¶¶ 37-42
57 Id. at ¶ 42; Gray Rebuttal Declaration, 95 TTABVUE 6, ¶ 17.
58 Gray Rebuttal Declaration, 95 TTABVUE 6, ¶ 13.
59 Petitioner’s Brief, 103 TTABVUE 7, 28. Accordingly, Respondent’s repeated arguments
that Petitioner encouraged, consented and acquiesced to Respondent’s use of the marks in
connection with the band’s pre-1984 music recordings is misplaced. Respondent’s Brief, 105
TTABVUE 35, 43-44.
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involved goods when Respondent filed applications to register the marks on
December 6, 2013. The answer is no.
The band members acquired joint ownership of the mark THE MARSHALL
TUCKER BAND for live musical performances when they started using the mark
around 1971. See, e.g., Jean Patou, 29 USPQ2d at 1774; Wonderbread, 115 USPQ2d
at 1303. In 1973, when No Exit started releasing the band’s records in connection
with THE MARSHALL TUCKER BAND mark, such use inured to the benefit of the
band members as licensors of the mark. Moreno, 124 USPQ2d at 1035.
Respondent implies that the band’s license to No Exit was invalid because the
band did not exercise quality control over No Exit’s use of the involved marks.60
Specifically, Respondent asserts that while the band made “suggestions regarding
[album] packaging” Mr. Gray “testifie[d] that he and other Bandmembers [sic] …
expressed that they did not want the Logo used [after the Carolina Dreams album],
which comment [No Exit] ignored, using the Logo Mark on many record albums
subsequently released.”61 As explained, however, a licensor need not demonstrate
comprehensive control over a licensee’s use of its mark. We find that by performing
the music recorded for the albums, the band exercised sufficient quality control over
the music recordings produced and distributed by No Exit. That is, through its

60 Respondent also asserts that “[t]he Logo [Mark] was designed for the ‘Carolina Dreams’
[album] by lettering artist Bill Frank, and [No Exit] owned the copyright in the logo art and
Carolina Dreams packaging.” Respondent’s Brief, 105 TTABVUE 22. Petitioner disputes this
assertion, but even if it is true, owning the copyright in the design of the Logo Mark is
different from owning trademark rights in the Logo Mark, which vested in the band members
when they started using the mark for music recordings through their licensee No Exit.
61 Id. at 17.
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involvement in recording the music, the band had control over the quality of the
musical recordings. As such the 1972 and 1974 Agreements were valid license
agreements with respect to the involved marks.
Because No Exit did not acquire any trademark rights in the involved marks,
Respondent did not acquire any such rights in 1980 when it purchased No Exit’s
assets related to the band.62 Respondent also did not acquire any ownership rights in
the involved marks when it was incorporated in 1978. The record does not support
that the band members’ trademark rights passed to Respondent pursuant to the
terms of Respondent’s incorporation in 1978.63 Cf. Huang v. Tzu Wei Chen Food, 7
USPQ2d at 1335-36 (agreeing “that, in accordance with the terms of incorporation,
ownership of the trademark . . . passed on [the date of incorporation] to the newly
formed corporation”). Nor is there evidence that the band members otherwise
assigned their trademark rights to Respondent upon Respondent’s incorporation.
Further, it does not follow that Respondent acquired ownership of the marks by the
mere fact that, after its incorporation, Respondent entered into record agreements on
the band members’ behalf. We find that upon its incorporation Respondent had an
implied license to use the mark in connection with the band’s music recordings.64

62 Respondent’s acquisition of the copyrights in the band’s music recordings did not confer
any ownership rights in the band’s trademarks.
63 Respondent’s Articles of Incorporation identify the nature of Respondent’s business as “[t]o
engage in the business of musical recordings in all branches of the entertainment business
and to do all other things necessary in the furtherance of the foregoing purposes.” 95
TTABVUE 20, Gray Rebuttal Declaration, Exhibit D.
64 The absence of a formal written agreement is not surprising given that Respondent was
wholly owned in equal parts by the members of the band.
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John Anthony, 209 USPQ at 525 (oral license found where fashion designer was
known by the name JOHN ANTHONY before opposer was incorporated and “he never
transferred or assigned his rights in the name ‘JOHN ANTHONY’ to opposer, but
rather merely allowed opposer to use the name[.]”).
Turning to the 1984 Agreement, we disagree with Respondent’s assertion that the
agreement is a consent to use agreement. A consent to use agreement arises when
two trademark owners agree that there will be no likelihood of confusion between
their marks if limitations are placed on the use of one or both marks. 3 MCCARTHY
ON TRADEMARKS §§ 18:38, 18:79 (“[I]n a consent [to use agreement], the consentee is
permitted to engage in defined actions which do not infringe the consentor’s mark,
and the agreement implicitly or explicitly recognizes that.”). For the reasons
discussed, Respondent did not own any trademark rights when it entered into the
1984 Agreement. Without a license from the band, there is little doubt that
Respondent’s use of the marks for the band’s musical recordings would necessarily
cause consumer confusion because the musical recordings Respondent distributes are
recordings of the band’s music. In other words, because both Respondent’s musical
recordings and Petitioner’s musical performances relate to the same band and music,
a likelihood of confusion would be inevitable. In such circumstances, a license – not a
consent to use agreement – is necessary.65 See In re Mastic Inc., 829 F.2d 1114, 4

65 Because the 1984 Agreement is not a consent to use agreement, Respondent’s argument
that Petitioner is estopped from objecting to Respondent’s registration because the
agreement is a consent to use is inapplicable. Respondent’s Brief, 105 TTABVUE 41.

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USPQ2d 1292, 1294 (Fed. Cir. 1987) (“[I]f the goods of the parties are likely to be
attributed to the same source because of the use of a similar mark, a license (not
merely a consent) is necessary to cure the conflict.”); 3 MCCARTHY ON TRADEMARKS
§ 18:38 (“[I]n a license the licensee is engaging in acts that would infringe the
licensor’s mark but for the permission granted in the license.”).
The plain language of the 1984 Agreement is clear. Paragraph 4, providing that
THE MARSHALL TUCKER BAND mark is the “sole and exclusive property” of MTB
for all purposes except “the records recently financed by Doug … and any and all
other recordings to be done in the future,” is a grant of trademark ownership rights
to Petitioner for goods and services, including musical recordings. The subsequent
language in paragraph 4 that “MTI shall have the right to use, and to permit others
to use, the Name in connection with all previously released masters of the band and
all other recordings of the band made prior to the date hereof (other than Doug’s
Record)” is a clear and unambiguous license to Respondent to use the marks for such
goods with the right to sublicense the marks.
We are not persuaded by Respondent’s arguments that the 1984 Agreement is not
a license because: (1) the grant of the right to use is not limited in duration; (2) the
agreement allows Respondent “to permit others to use” the marks; (3) there is no
royalty provision; and (4) the agreement does not specify how Petitioner will exercise
quality control. A license may be perpetual, royalty-free, and sublicensable. Univ.
Book Store, 33 USPQ2d at 1396 (royalty-free license); see also Bunn-O-Matic Corp. v.
Bunn Coffee Servs. Inc., 88 F. Supp. 2d 914, 54 USPQ2d 1012, 1018 (D. Ill. 2000)
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(finding license agreement, not a consent agreement, even though agreement did not
provide for royalties or establish a quality control mechanism, and had no
termination date; “none of the omitted terms … are necessary to create a valid
trademark license”); 3 MCCARTHY ON TRADEMARKS § 18:43 (discussing cases
addressing perpetual licenses and sublicenses). Moreover, a license need not specify
terms of quality control. Woodstock’s Enters., 43 USPQ2d at 1446-48; John Anthony,
209 USPQ at 525 (oral license). Finally, as Petitioner’s licensee, Respondent is barred
by licensee estoppel from arguing that Petitioner has not exercised sufficient quality
control over the music recordings with which Respondent uses the mark.66 See, e.g.,
Estate of Biro v. Bic Corp., 18 USPQ2d at 1386.
E. Conclusion
Respondent did not own any rights in the involved marks on December 6, 2013,
when Respondent filed the applications that matured into the involved registrations.
Respondent was a mere licensee of Petitioner, and as such, was not entitled to file
applications to register the marks. Accordingly, the involved registrations are void ab
initio.
Decision: The petition to cancel Registration Nos. 4616427 and 4616428 is
granted, and the Registrations will be cancelled. Petitioner’s remaining fraud claim
is dismissed as moot.

66 Respondent’s Brief, 105 TTABVUE 11, 37-40.