Wednesday, May 7, 2008

Battle of "The Rat Pack" Tribute Shows

[Click here for a more recent blog posting on a significant court decision which impacted this case.]

On May 7, 2008, TRP Entertainment, LLC (“TRP”) filed a trademark infringement lawsuit in the U.S. District Court for the District of Nevada against BC Entertainment, Inc. (“BCE”), Barrie Cunningham, and Ian Hammer (the “Defendants”). See TRP Entertainment, LLC v. BC Entertainment, Inc. et al, Case No. 08-cv-00579 (D. Nev.). A copy of the complaint can be downloaded here.

TRP is the production company behind the “Rat Pack” tribute show “The Rat Pack is Back” currently playing at the Plaza Hotel and Casino in Downtown Las Vegas, but which apparently has performed in many other cities nationwide.

TRP is also the current owner of two federal registrations for the mark THE RAT PACK IS BACK (one for “entertainment [sic] services, namely, live stage musical productions” and one for “clothing, namely, hats, t-shirts, jackets, and sweatshirts”). The marks were previously owned by DRDC Productions, Inc. (“DRDC”), but were recently assigned to TRP on April 24, 2008. Up until then, TRP used the marks under license from DRDC.

In addition to the THE RAT PACK IS BACK mark, TRP also claims to have used the mark “The Tribute to Frank, Sammy, Joe and Dean” since at least May 24, 2002 in conjunction with its “Rat Pack” tribute show.

TRP alleges that the Defendants began producing a show entitled “RAT PACK – Frank, Sammy, and Dean” “The Rat Pack A Tribute to Frank, Dean & Sammy,” or “Rat Pack.” BCE’s website lists several shows produced by BCE – one of which is its “Rat Pack” tribute show (described here – and which notably includes the disclaimer “This show is not associated in any way with The Rat Pack Is Back or any other Rat Pack show or production.”).

On March 15, 2007, TRP sent a cease and desist letter to Defendants BCE and Cunningham. Soonafter, and possibly in response to TRP’s letter, on March 19, 2007 BCE file an intent-to-use application to register the word mark THE RAT PACK (for various entertainment show, including a “live musical stage shows specifically paying tribute to Frank Sinatra, Dean Martin and Sammy Davis Jr with celebrity impersonators.”)

BCE subsequently filed an amendment to allege use on March 28, 2007, alleging first use in commerce on October 1, 2006. On July 2, 2007, the PTO rejected registration under Section 2(d) likelihood of confusion over TRP’s registered mark for “entertainment services.” The PTO also cited two other pending applications for the mark THE RAT PACK LIVE AT THE SANDS (word mark and design mark). BCE’s response to the PTO’s non-final action did not address the PTO’s likelihood of confusion rejection. Instead, BCE attempted to change the drawing of its mark to the following stylized design mark:

In the PTO’s suspension letter, BCE was notified that its proposed amendment to the drawing was unacceptable because it would materially alter the essence or character of the mark (see 37 C.F.R. §2.72; TMEP §§807.14 et seq.). BCE attempted to make an argument for no likelihood of confusion in a status inquiry; however, the PTO made its likelihood of confusion rejection final on January 18, 2008.

On April 13, 2007, TRP sent a second cease and desist letter to BCE and also demanded that BCE abandon its service mark application.

On December 13, 2007, BCE filed a second application to register the above stylized design mark (“A TRIBUTE TO THE RAT PACK FRANK, DEAN & SAMMY A BC ENTERTAINMENT, INC. PRODUCTION” for various entertainment services including “Entertainment in the nature of live performances by celebrity tribute shows featuring impersonators of frank sinatra dean martin and sammy davis junior”) and claiming first use in commerce date on October 1, 2006.

The PTO once again rejected registration of BCE’s mark on the basis of likelihood of confusion, citing TRP’s aforementioned registration as well as a second registration held by a California company named Direct From Vegas Productions, Inc.(“DFVP”) for the word mark “DIRECT FROM VEGAS THE RAT PACK” (for entertainment services). Interestingly, DFVP’s mark faced a similar Section 2(d) rejection over TRP’s registration, but was able to argue that its marks, when viewed in its entirety, is sufficiently different than TRP’s registration. DFVP cited several other registrations with the terms “THE RAT PACK” where the PTO issued notices of allowance. Also interesting is that the PTO required DFVP to disclaim the term “THE RAT PACK” because it merely describes the style or format of applicant’s live musical performances because applicant’s performances emulate the famous group of Las Vegas performers know as “The Rat Pack,” that included Sammy Davis, Jr., Frank Sinatra, Joey Bishop, and Dean Martin. The PTO added that “reenacting “The Rat Pack” and their manner is a popular entertainment concept.” One wonders how TRP was able to get its application through the PTO without a similar disclaimer . . . and also how come TRP has not challenged this mark.

On December 26, 2007, TRP sent yet another cease and desist letter to BCE and threatening to sue. According to the complaint, BCE continues to use the mark “The Rat Pack A Tribute to Frank, Dean & Sammy.”

TRP’s causes of action are federal trademark infringement under Section 32(a) of the Lanham Act (15 U.S.C. §1114(a)), false designation of origin/unfair competition under Section 43(a) of the Lanham Act (15 U.S.C. §1125(a)), and common law trademark infringement and unfair competition. TRP seeks injunctive relief, actual damages, BCE’s profits, treble damages, costs and attorney’s fees.

The "Real" Rat Pack

Vegas™Esq Comments:
TRP is quick to note that its THE RAT PACK IS BACK registration is incontestable – TRP having filed its §15 Declaration of Incontestability on November 5, 2007, which may also explain why TRP waited so long to file any kind of action against BCE. As such, there is no chance of BCE challenging TRP’s registration on the basis of descriptiveness (although even if it could, TRP has been using the mark for so long that it could probably show secondary meaning).

In applying the the Sleekcraft factors, I think BCE may have the advantage. First, while THE RAT PACK IS BACK may be incontestable, it is also weak to the extent that, as the PTO suggested, most consumers recognize the name “The Rat Pack” as the group of Las Vegas performers that included Sammy Davis, Jr., Frank Sinatra, Joey Bishop, and Dean Martin and that reenacting “The Rat Pack” is a popular entertainment concept. Second, the marks, when viewed in their entirety, are dissimilar. Third, BCE’s intent in selecting its mark certainly was not to take advantage of TRP’s goodwill, but rather to come up with a mark that describes its show. However, there are some factors favoring TRP, such as relatedness of the goods, which are identical in this case (entertainment services); similar marketing channels (online advertising, print ads, etc.); and degree of consumer care (consumers may not exercise a high degree of care in choosing their “Rat Pack” tribute show).

What would The Chairman of the Board say?

[Full Disclosure: Subsequent to the date of this blog posting, my law firm was engaged by one or more of the defendants to represent them in this action.]


Anonymous said...

It seems that the only ones who should contest this would be the estates of Frank, Sammy and Dean.

How can someone protect the use of giving a tribute to artist who have passed away? The question is when the "Rat Pack" was performing at the Sands, did anyone own that name at the time?

That would slow down the 1,000's of Elvis impersonators around the world.
They might be able to protect the name of their Rat Pack Tribute and keep people from saying direct from the Union Plaza in Las Vegas because of confusing the public or the buyers that they are getting that exact show, but keeping people from doing a tribute to anyone is difficult to protect.

Anonymous said...

The Rat Pack is Back producers are full of themselves, they ONLY own The Rat Pack is Back trademark period! They should not have claim to THE RAT PACK or any other name.
Ive seen their show, and its ok, Ive seen better, and Im sure they are afraid of another group stealing their thunder.

Anonymous said...

u guys r greedy i like the show so dnt worry

World Class Orchestra said...

World Class Orchestra is promoting its own version of the "Rat Pack" and is composed of the "Rat Pack" and friends of the "Rat Pack" and our "Rat Pack" has what no other "Rat Pack Tribute" will ever have, 67 World Class Musicians. This is the REAL DEAL Las Vegas. Check it out! Music fit for an American Idol. Whoops! I think I hear a gavel from Judge Judy.