Treadwell Original Drifters, LLC

Trademark Trial and Appeal Board

Sep 28, 2021

77119123 (T.T.A.B. Sep. 28, 2021)

This Opinion is Not a
Precedent of the TTAB

Oral Hearing: December 17, 2020 Mailed: September 28, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Treadwell Original Drifters, LLC
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Serial No. 77119123
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Cindy D. Salvo of The Salvo Law Firm PC,
for Treadwell Original Drifters, LLC.1
Beniam Biftu, Trademark Examining Attorney, Law Office 117,
Hellen Bryan-Johnson, Managing Attorney.2
_____

Before Lykos, Greenbaum and Pologeorgis,
Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:

1 Dickerson M. Downing of the Law Offices of Dickerson M. Downing represented Applicant
during prosecution, and filed Applicant’s Appeal Brief (7 TTABVUE) and Reply Brief (10
TTABVUE). On July 13, 2020, one week after Mr. Downing filed the Reply Brief, Ms. Salvo
entered an appearance on behalf of Applicant in the application file (July 13, 2020 “Change
Address or Representation Form,” TSDR 1), and she filed with the Board an oral hearing
request. 12 TTABVUE. Two days later, Ms. Salvo filed a change of correspondence address
with the Board. 13 TTABVUE. The USPTO records have been updated accordingly. Ms. Salvo
represented Applicant at the oral hearing.
The TTABVUE and Trademark Status & Document Retrieval (“TSDR”) citations refer to the
docket and electronic file database for the involved application. All citations to the TSDR
database are to the non-downloadable .pdf version of the documents.
2 Mr. Biftu wrote the appeal brief and appeared on behalf of the USPTO at the oral hearing.
Examining Attorney Mary Rossman and Senior Attorney Cory Boone issued the Office
Actions during prosecution of the application.
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Treadwell Original Drifters, LLC (“Applicant”) seeks registration on the Principal
Register of the mark THE DRIFTERS (in standard characters) for
Pre-recorded records, audiotapes and compact discs
featuring music, in International Class 9; and
Entertainment services, namely, live performances by a
musical band; Presentation of musical performances in the
nature of production, planning and arrangement; Music
publishing services; Music production services, in filed
International Class 41.3
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark, when used in connection with the identified goods and services, so
resembles the registered mark BILL PINKNEY’S ORIGINAL DRIFTERS (in typed
form) for “entertainment services in the nature of live performances by a musical
group” in International Class 41 as to be likely to cause confusion, mistake or
deception.4
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for

3 Application Serial No. 77119123 was filed on February 28, 2007, based upon Applicant’s
claim of first use anywhere and use in commerce since at least as early as January 1, 1953
for both classes under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). During
prosecution, Applicant amended the filing basis for the Class 41 services to allege a bona fide
intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C.
§ 1051(b). April 13, 2015 Response to Office Action, TSDR 1.
4 Registration No. 3649096 issued on July 7, 2009 from an application that Willie B. Pinkney
filed on April 16, 1998, and has been renewed. The underlying application was assigned to
Original Drifters, Inc. (“Registrant”) on August 1, 2007. Reel 3592/Frame 0729.
Prior to November 2, 2003, “standard character” drawings were known as “typed” drawings.
A typed mark is the legal equivalent of a standard character mark. See In re Viterra Inc., 671
F.3d 1358, 101 USPQ2d 1905, 1909 n.2 (Fed. Cir. 2012) (“until 2003, ‘standard character’
marks formerly were known as ‘typed’ marks.”).
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reconsideration, the appeal was resumed. We affirm the refusal to register as to both
classes of goods and services.
I. Background
The prosecution history for this application spans more than 14 years and includes
multiple suspensions for litigation between the parties about the marks here at issue
(Cancellation No. 92052155 and subsequent appeals), in which Applicant asserted
“priority and superiority” of rights and alleged likelihood of confusion under Section
2(d) of the Trademark Act.5 The Board dismissed Cancellation No. 92052155 for
Applicant’s failure to prove its priority, and did not reach the likelihood of confusion
claim. The United States District Court for the Eastern District of Virginia dismissed
Applicant’s complaint seeking review of the Board’s decision in the Cancellation
proceeding on grounds of issue preclusion based on a 2004 Board decision sustaining
Opposition No. 91151984 (“2004 Board Decision”).6

5 Applicant is the successor-in-interest to George Treadwell, who was the manager of “The
Drifters” musical group. April 13, 2015 Response to Office Action, TSDR 1. As Applicant
acknowledges, Registrant is the successor-in-interest to Willie B. (Bill) Pinkney. App. Br., 7
TTABVUE 3 (referencing June 18, 2007 Office Action, TSDR 2). Bill Pinkney was an early
(and possibly founding) member of “The Drifters” musical group. October 13, 2014 Office
Action, TSDR 15; April 16, 2015 Final Office Action, TSDR 28. “The Drifters” musical group,
Bill Pinkney, and other members of “The Drifters” musical group were inducted into the Rock
and Roll Hall of Fame in 1988. April 16, 2015 Final Office Action, TSDR 10-11, 19-26.
This appeal also was suspended pending resolution of an arbitration involving the cited
registration and third party Larry Marshak (“Arbitration Proceeding”). March 19, 2018
Request for Reconsideration, TSDR 2-24. The Arbitration Proceeding has been terminated,
but the judgment or other resolution is not of record. December 10, 2019 Response to
Suspension Inquiry.
6 In Opposition No. 91151984, Opposer (now Registrant) asserted a claim of priority and
likelihood of confusion under Section 2(d) based on the application underlying the
registration cited as a bar in this appeal (Reg. No. 3649096 for BILL PINKNEY’S ORIGINAL
DRIFTERS) against Applicant’s application for THE DRIFTERS for the same services
identified in the present application. The 2004 Board Decision found that Opposer (now
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II. Likelihood of Confusion
Our determination under Section 2(d) of the Trademark Act involves an analysis
of all of the probative evidence of record bearing on a likelihood of confusion. In re
E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973)
(setting forth factors to be considered, hereinafter referred to as “DuPont factors”);
see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir.
2003). We consider each DuPont factor for which there is evidence and argument. See,
e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir.
2019); see also In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed.
Cir. 2017) (“The likelihood of confusion analysis considers all [DuPont] factors for
which there is record evidence but ‘may focus . . . on dispositive factors, such as
similarity of the marks and relatedness of the goods.”’) (quoting Herbko Int’l, Inc. v.
Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)). However,
in any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the similarities between the goods and services. See In re

Registrant) had established priority of use and that consumers were likely to be confused by
the marks. The Board therefore sustained the Opposition, and Reg. No. 3649096 ultimately
issued. 16 TTABVUE (Opposition No. 91151984). As for Cancellation No. 92052155,
Applicant only sought judicial review of the Board’s decision on the issue of priority, and the
court so limited its review. 72 TTABVUE (Cancellation No. 92052155 (January 28, 2016
Decision in Treadwell Original Drifters, LLC v. Original Drifters, Inc., Civil Action No. 1:15-
cv-580 (E.D.Va.)). We take judicial notice of these filings as official records. See Weight
Watchers Int’l, Inc. v. I. Rokeach & Sons, Inc., 211 USPQ 700, 702 n.5 (TTAB 1981) (taking
judicial notice of official records where relevance is clear from record and briefs).
On February 24, 2017, the Court of Appeals for the Fourth Circuit affirmed the January 28,
2016 Decision from the District Court for the Eastern District of Virginia. September 8, 2017
Response to Office Action, TSDR 2-5.
Serial No. 77119123
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Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004);
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative
effect of differences in the essential characteristics of the goods and differences in the
marks.”).
Applicant acknowledges that “Applicant did not take a position with respect to the
issue of likelihood of confusion in this application,” and “there is no question both
marks incorporate the term Drifters and are used for similar services.” App. Br., 7
TTABVUE 7, 9. Nonetheless, Applicant now argues that the marks can coexist, a
position admittedly “contrary to the position taken involving Registrant or its
predecessors in interest” (id., at 7), due to public perception about the history of “The
Drifters” musical group and Bill Pinkney, and the actual co-existence of different
musical groups performing under the names “The Drifters” and “Bill Pinkney’s
Original Drifters.” Id., at 7-8, 10-11.
A. Similarity or Dissimilarity of the Goods and Services and Channels of
Trade
Under the second and third DuPont factors, we compare the goods and services as
they are identified in the application and the cited registration. See In re Detroit
Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018); In re Dixie
Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997); see also Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161
(Fed. Cir. 2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
USPQ2d 1001 (Fed. Cir. 2002); Octocom Sys., Inc. v. Hous. Comput. Servs., Inc., 918
Serial No. 77119123
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F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). It is not necessary for the
Examining Attorney to prove likelihood of confusion as to each item of goods or
services identified in Applicant’s two-class application falling within a particular
class; if there is a likelihood of confusion as to any of Applicant’s identified goods or
services within that class, the refusal of registration must be affirmed for the entire
class of goods or services. See Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d
1335, 209 USPQ 986, 988 (CCPA 1981).
While worded slightly differently, the “entertainment services in the nature of live
performances by a musical group” identified in the cited registration are identical to
the “entertainment services, namely live performances by a musical band” identified
in the application. Moreover, because the identified services are identical and there
are no limitations as to channels of trade or classes of purchasers, we must presume
that Applicant’s and Registrant’s services will be offered in the same channels of
trade to the same classes of consumers. See In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence regarding
channels of trade and classes of consumers, the Board was entitled to rely on this
legal presumption in determining likelihood of confusion).
And, while the services identified in the cited registration are not identical to the
“pre-recorded records, audiotapes and compact discs featuring music” identified in
the application, identity is not required to support a finding of likelihood of confusion.
Coach Servs., 101 USPQ2d at 1722 (“it is not necessary that the products [or services]
of the parties be similar or even competitive to support a finding of likelihood of
Serial No. 77119123
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confusion.”) (quotation omitted). See also On-line Careline Inc. v. Am. Online Inc., 229
F.3d 1080, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000) (the goods and services need not
be identical or even competitive to find a likelihood of confusion). Rather “likelihood
of confusion can be found ‘if the respective products [or services] are related in some
manner and/or if the circumstances surrounding their marketing are such that they
could give rise to the mistaken belief that they emanate from the same source.’” Coach
Servs., 101 USPQ2d at 1722 (internal citation omitted). The issue is whether there is
a likelihood of confusion as to the source of the goods and services, not whether
purchasers would confuse the goods and services. L’Oreal S.A. v. Marcon, 102
USPQ2d 1434, 1439 (TTAB 2012); In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
Here, the goods identified in the application are closely related on their face to the
services identified in the cited registration in that they both feature music. The
evidentiary record confirms this close relationship. In particular, the Examining
Attorney submitted printouts about the induction of “The Drifters” musical group into
the Rock & Roll Hall of Fame, which includes photographs of live musical
performances (by other musicians/musical groups) and albums offered for sale of
recorded music by “The Drifters” musical group. April 16, 2015 Final Office Action,
TSDR 17, 18, 22-23. This evidence also supports a finding that the identified goods
and services are offered to the same classes of consumers.
As noted above, Applicant concedes that the services are similar (“there is no
question both marks incorporate the term ‘DRIFTERS’ and are used for similar
Serial No. 77119123
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services”), and did not otherwise address these DuPont factors in its Appeal Brief. 7
TTABVUE 8.
These DuPont factors strongly weigh in favor of a finding of likely confusion.
B. Similarity or Dissimilarity of the Marks
We next compare Applicant’s mark THE DRIFTERS and Registrant’s mark BILL
PINKNEY’S ORIGINAL DRIFTERS “in their entireties as to appearance, sound,
connotation and commercial impression.” Detroit Athletic Co., 128 USPQ2d at 1048
(quoting DuPont, 177 USPQ at 567); see also Palm Bay Imps. Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir.
2005). “Similarity in any one of these elements may be sufficient to find the marks
confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB
2018) (citation omitted); accord Krim-Ko Corp. v Coca-Cola Bottling Co., 390 F.2d
728, 156 USPQ523, 526 (CCPA 1968) (“It is sufficient if the similarity in either form,
spelling or sound alone is likely to cause confusion.”) (citation omitted). “The proper
test is not a side-by-side comparison of the marks, but instead whether the marks are
sufficiently similar in terms of their commercial impression such that persons who
encounter the marks would be likely to assume a connection between the parties.”
Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018).
Because similarity is determined based on the marks in their entireties, our
analysis is not predicated on dissecting the marks into their various components.
Stone Lion Capital Partners, 110 USPQ2d at 1161; see also Franklin Mint Corp. v.
Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic
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that a mark should not be dissected and considered piecemeal; rather, it must be
considered as a whole in determining likelihood of confusion.”). On the other hand,
“there is nothing improper in stating that, for rational reasons, more or less weight
has been given to a particular feature of a mark, provided the ultimate conclusion
rests on consideration of the marks in their entireties.” In re Nat’l Data Corp., 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Further, the marks “must be
considered … in light of the fallibility of memory …” In re St. Helena Hosp., 774 F.3d
747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (quotation omitted). We focus on the
recollection of the average consumer—here, an ordinary consumer who listens to
music—who normally retains a general rather than a specific impression of
trademarks. Id. at 1085; Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d
1005, 169 USPQ 39, 40 (CCPA 1971). We also are mindful that as to the Class 41
services, “[w]hen marks would appear on virtually identical goods or services, the
degree of similarity necessary to support a conclusion of likely confusion declines.”
Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698,
1700 (Fed. Cir. 1992). Cf. Shen Mfg. Co. v. The Ritz Hotel Ltd., 393 F.3d 1238, 73
USPQ2d 1350, 1354 (Fed. Cir. 2004) (where goods and services are highly related,
“the degree of similarity necessary to support a conclusion of likely confusion
declines.”) (quoting Century 21 Real Estate Corp., 23 USPQ2d at 1700).
Looking first at Applicant’s mark THE DRIFTERS, in this case, we find the word
THE in Applicant’s mark is used as a function word that connotes “the one and only”
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or “original.”7 Cf. In re Thor Tech, 90 USPQ2d 1634, 1635 (2009) (“The addition of the
word ‘The’ at the beginning of the registered mark does not have any trademark
significance. ‘The’ is a definite article. When used before a noun, it denotes a
particular person or thing.”). The dominant and sole source identifying portion of
Applicant’s mark therefore is the word DRIFTERS, and the entire mark THE
DRIFTERS, connotes and projects the commercial impression of “the one and only”
or “original” DRIFTERS.
DRIFTERS also is the dominant portion of Registrant’s mark BILL PINKNEY’S
ORIGINAL DRIFTERS. Registrant’s mark begins with the possessive form of the
personal name BILL PINKNEY, and includes the term ORIGINAL, which connotes
primacy and thus has the same connotation as the term THE in Applicant’s mark.8
The leading terms BILL PINKNEY’S ORIGINAL therefore modify the term
DRIFTERS, such that the mark BILL PINKNEY’S ORIGINAL DRIFTERS points to
a single source known as DRIFTERS.9
Consumers have a penchant for shortening marks. In re Mighty Leaf Tea, 601
F.3d, 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (affirming Board decision that

7 Merriam-Webster dictionary (merriam-webster.com) defines “the” as “used as a function
word to indicate that a following noun or noun equivalent is a unique or a particular member
of its class.” (Merriam-Webster Dictionary, merriam-webster.com, accessed September 27,
2021). The Board may take judicial notice of dictionary definitions, including online
dictionaries that exist in printed format. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4
(TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016).
8 Merriam-Webster dictionary defines “original” “not like the others: new, different, and
appealing.” We take judicial notice of this definition, which we also accessed on September
27, 2021. See Cordua Rests., 110 USPQ2d at 1129 n.4.
9 Applicant does not argue, and we do not find, that the inclusion of an apostrophe and the
letter “S” after the name BILL PINKNEY have any source identifying significance.
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ML is likely to be perceived as a shortened version of ML MARK LEES, and noting
that “the presence of an additional term in the mark does not necessarily eliminate
the likelihood of confusion if some terms are identical.”); Anheuser-Busch, LLC v.
Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1819 (TTAB 2015) (“While Opposer's beer
was originally sold under the BUDWEISER brand, customers soon began to
abbreviate the mark, calling for BUDWEISER beer just by the name ‘BUD.”’); Big M
Inc. v. U.S. Shoe Corp., 228 USPQ 614, 616 (TTAB 1985) (“[W]e cannot ignore the
propensity of consumers to often shorten trademarks and, in the present case, this
would be accomplished by dropping the ‘T.H.’ in referring to registrant's stores [T.H.
MANDY].”). Given this proclivity, it is likely that consumers who encounter
Registrant’s mark BILL PINKNEY’S ORIGINAL DRIFTERS on the identified “live
performances by a musical group” will refer to the musical group as the DRIFTERS,
and that they likely will believe that the services are related to Applicant’s legally
identical services and closely related goods, or vice versa. See, e.g., In re Riddle, 225
USPQ 630, 632 (TTAB 1985) (finding RICHARD PETTY’S ACCU TUNE and design
for automotive service centers specializing in engine tune-ups and oil changes likely
to cause confusion with ACCUTUNE automotive testing equipment).
Applicant argues that the additional terms in Registrant’s mark suffice to
distinguish Registrant’s mark and Applicant’s mark due to the history of “The
Drifters” musical group and Bill Pinkney, which, Applicant contends, are well known
to the public. Applicant maintains that as a result of this public knowledge,
consumers will understand the differences between the marks engendered by the
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inclusion of the words “BILL PINKNEY’S ORIGINAL” in Registrant’s mark, and the
absence thereof in Applicant’s mark. In particular, pointing to printouts from
Registrant’s website (originaldrifters.com), Wikipedia, billboard.com, the Rock and
Roll Hall of Fame website (rockhall.com), and information about the Arbitration
Proceeding between Registrant and third-party Larry Marshak, as “evidence of how
a term or mark may be perceived by the public[,]”
Applicant submits the material relied on by the Examining
Attorney suggests the relevant public in the United States,
is aware, just as the Examining Attorney is aware, that the
music group The Drifters has had many members and
there have been many competing claims to the right to use
the name. Applicant further submits fans of the group and
other members of the relevant public are aware Mr.
Pinkney left the group relatively early and The Drifters
continued on without him to record some of their better
known songs. And Mr. Pinkney continued to perform under
the name Bill Pinkney’s Original Drifters or possibly
Original Drifters to distinguish his group from The
Drifters. The very name Original Drifters suggests there is
another group known as The Drifters.
As the information on the Arbitration Proceeding indicates,
one of the issues raised involved the interpretation of a
1996 Consent Order giving Larry Marshak [footnote
omitted] the right to use The Drifters name and Mr.
Pinkney the right to use Bill Pinkney’s Original Drifters
and Original Drifters names. The Agreement envisioned
the coexistence of The Drifters and Bill Pinkney’s Original
Drifters without confusion and, in fact, the two groups did
co-exist.
Applicant submits any evaluation of likelihood of confusion
in this particular case must be viewed in the context of the
history of The Drifters and the public perception of The
Drifters. In that context, Mr. Pinkney wished to
distinguish his new group from The Drifters and he did so
by adopting the name Bill Pinkney’s Original Drifters.
Under these unusual circumstances, it is respectfully
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submitted, the public in the United States, does recognize
the difference.
7 TTABVUE 7-8.
Here the parties did co-exist under the names The Drifters
and Bill Pinkney’s Original Drifters and Mr. Pinkney can
be assumed to have believed the addition of “Bill Pinkney’s
Original” was sufficient, under these circumstances to
distinguish his mark from The Drifters. Indeed, as the
Examining Attorney has noted there is some reason to
believe Mr. Pinkney’s name is known to fans of The
Drifters and possibly the public at large – a factor that
further distinguishes the two marks.
Id., at 10.
Applicant’s contentions about the perceptions of relevant consumers are purely
speculative. Indeed, there is no way to tell how many members of the relevant public
i.e., members of the general public who enjoy music (not just limited to fans of “The
Drifters” musical group) have read or have even been exposed to any of the evidence
of record, or that they are familiar with the history of “The Drifters” musical group
or Bill Pinkney rather than just with the musical recordings associated with “The
Drifters” (e.g., “Under the Boardwalk,” “Up on the Roof,” Save the Last Dance for
Me,” and “White Christmas,” April 16, 2015 Final Office Action, TSDR 10-11). See
Cai, 127 USPQ2d at 1799 (quoting Enzo Biochem, Inc. v. Gen-Probe Inc., 424 F.3d
1276, 76 USPQ2d 1616, 1622 (Fed. Cir. 2005) (“Attorney argument is no substitute
for evidence.”)).
There is no evidence that DRIFTERS has any meaning or significance when
applied to the identified goods or services, and there is no evidence of use or
registration by third parties of similar marks on similar goods or services that might
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dilute the source-identifying capacity of DRIFTERS for those goods and services.10
Cf. Juice Generation, Inc. v. GS Enters LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675
(Fed. Cir. 2015); Jack Wolfskin Ausrustung Fur Draussen GmbH v. New Millennium
Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015). That both
marks feature this dominant element combined with the synonymous words THE and
ORIGINAL makes them confusingly similar as indicators of source. Moreover, the
use of the possessive form of Registrant’s predecessor’s name in the cited registered
mark may only tend to increase and not decrease the likelihood of confusion, mistake
or deception by suggesting that Registrant is the source of, or at a minimum affiliated
with, “The Drifters” musical group. Saks & Co. v. TFM Indus. Inc., 5 USPQ2d 1762,
1764 (TTAB 1987); In re Christian Dior, S.A., 225 USPQ 533, 535 (TTAB 1985).
Given the identity of the DRIFTERS portions of both marks and the absence of
any evidence showing that this term is weak or diluted, we accord the cited registered
mark BILL PINKNEY’S ORIGINAL DRIFTERS an ordinary scope of protection in
our likelihood of confusion analysis. King Candy Co. v. Eunice King’s Kitchen, Inc.,

10 There is evidence that there have been many members of “The Drifters” musical group,
some of whom have performed under variants of the name DRIFTERS. See October 13, 2014
Office Action, TSDR 4-14 (printouts from Registrant’s website and “The Drifters” Wikipedia
page); April 16, 2015 Final Office Action, TSDR 19-20 (printout of “The Drifters Biography”
posted on the Rock & Roll Hall of Fame website). As Applicant notes, “material taken from
Wikipedia and the like cannot be used to prove the truth of the matter asserted. However, it
can be used as evidence of how a term or mark may be perceived by the public. TBMP
1208.01.” App. Br., 7 TTABVUE 7. Here, the dates and extent of those performances in the
United States is not clear. For example, the section of “The Drifters” Wikipedia page titled
“Splinters” claims that “Dock Green led his group, ‘The Drifters featuring Dock Green,’
throughout the 1970s and 1980s,” there are references to another former member, Rick
Sheppard, who “owns the Canadian Trademark for the Drifters name in Canada,” and there
also are references to other former members who “have led” or who “lead[]” other Drifters
groups. Id., TSDR 11. Due to these evidentiary infirmities, the record does not support a
finding that DRIFTERS is diluted for musical groups.
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496 F.2d 1400, 182 USPQ2d 108, 109 (CCPA 1974); In re Colonial Stores, Inc., 216
USPQ 793, 795 (TTAB 1982). We therefore find the marks THE DRIFTERS and BILL
PINKNEY’S ORIGINAL DRIFTERS similar in sight, sound, meaning and
commercial impression.
The first DuPont factor favors a finding of likelihood of confusion.
C. Eighth and Thirteenth DuPont Factors
We also consider Applicant’s above-quoted arguments about the perceptions of
relevant consumers and the coexistence of the marks under the eighth DuPont factor
-- “[t]he length of time during and conditions under which there has been concurrent
use without evidence of actual confusion,” and the thirteenth DuPont factor -- “[a]ny
other established fact probative of the effect of use.” DuPont, 177 USPQ at 567. The
eighth DuPont factor “requires us to look at actual market conditions, to the extent
there is evidence of such conditions of record.” In re Guild Mtg. Co., 2020 USPQ2d
10279, at *6 (TTAB 2020). See also In re Calgon Corp., 435 F.2d 596, 168 USPQ 278,
280 (CCPA 1971). The thirteenth DuPont factor is intended to accommodate “the need
for flexibility in assessing each unique set of facts,” In re Strategic Partners, Inc., 102
USPQ2d 1397, 1399 (TTAB 2012), and is “highly fact specific.” In re Country Oven,
Inc., 2019 USPQ2d 443903, at *18 (TTAB 2019). Regardless of the factor under which
we consider the arguments, the arguments are unsupported and thus unpersuasive.
While Applicant and Registrant might have coexisted at some point in time, the
details of such coexistence are completely absent from the record. For example,
nothing in the record indicates when, how long and under what circumstances
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Applicant and Registrant coexisted, or how any coexistence at some vague point in
the past has any bearing on the issue presently before us, namely, whether
contemporaneous use of BILL PINKNEY’S ORIGINAL DRIFTERS and THE
DRIFTERS on identical services and closely related goods is likely to cause confusion
now.
As for Bill Pinkney’s motivations in adopting the name BILL PINKNEY’S
ORIGINAL DRIFTERS, which also are unknown, Mr. Pinkney’s position as the
plaintiff in the previous opposition against Applicant and as the defendant in the
previous cancellation brought by Applicant belie Applicant’s contention that Bill
Pinkney “distinguish[ed]” his new group from The Drifters … by adopting the name
Bill Pinkney’s Original Drifters.”
Further, the resolution of the Arbitration Proceeding which occasioned the most
recent suspension of this appeal is not of record, and Applicant’s arguments
concerning the interpretation of a 1996 Consent Order between Registrant and Larry
Marshak, what the “Agreement envisioned,” and whether “The Drifters” musical
group coexisted with “Bill Pinkney’s Original Drifters” “without confusion” are simply
attorney argument.
This lack of factual support leaves us only with attorney arguments and
conclusory statements, neither of which comprise evidence of actual market
conditions or “any other established fact probative of the effect of use” as required
under the eighth and thirteenth DuPont factors, respectively. DuPont, 177 USPQ at
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567. We reiterate that “[a]ttorney argument is no substitute for evidence.” Cai, 127
USPQ2d at 1799.
These DuPont factors thus are neutral.
III. Conclusion
In view of the similar marks; identical services, which are presumed to move in
the same channels of trade to the same classes of consumers; the closely related goods
and services, which are offered to the same classes of consumers; and the neutrality
of the eighth and thirteenth DuPont factors, confusion is likely between Applicant’s
mark THE DRIFTERS and Registrant’s mark BILL PINKNEY’S ORIGINAL
DRIFTERS.
Decision: The refusal to register Applicant’s mark THE DRIFTERS under
Section 2(d) of the Trademark Act is affirmed in each class.