On
February 16, 2016, the Ninth Circuit Court of Appeals issued its ruling in the appeal that was
filed in 2013 by TRP Entertainment, LLC, seeking to overturn the Nevada district court’s 2009 decision which found that the “Rat Pack” was generic and ordered a
disclaimer of the term “RAT PACK” on TRP’s trademark registration for “THE RAT
PACK IS BACK.” A copy of the decision
can be downloaded here. See TRP Entertainment, LLC v. BC Entertainment et al., Case No. 13-16754 (9th Cir.)
In upholding the
lower court’s decision, the Ninth Circuit found that “the record
demonstrates that the term ‘The Rat Pack’ describes a type of live
entertainment show and does not identify any particular producer of a Rat Pack
tribute show.” The Court noted that even
TRP had referred to “Rat Pack performances as a ‘genre’ of entertainment.” As such, the district court did not err in determining
that “The Rat Pack” is generic in the context of live shows about or in tribute
to members of the Rat Pack. The Ninth
Circuit also held that the district court did not abuse its discretion in ordering
a disclaimer of the term “The Rat Pack” modifying TRP’s trademark registration
(citing 15 U.S.C. § 1119, which allows a court to order the modification of a
trademark registration to include a disclaimer of generic components). As such, the Ninth Circuit affirmed the
district court’s grant of partial summary judgment and remanded the case back
to the district court to instruct the Director of the United States Patent and Trademark
Office to enter a disclaimer of the term “THE RAT PACK” on TRP’s trademark
registration for ““THE RAT PACK IS BACK.”
In
order to understand how this victory is one for which I can claim some credit, I
will defer to my prior detailed post
on the district court’s decision when it was first handed down. I was no longer Defendants’ counsel of record
on the case at the time the decision was handed down, but it was the Motion for
Partial Summary Judgment that I prepared and filed on behalf of the Defendants
in that case that the district court ultimately ruled on in deciding that “Rat
Pack” was generic – a decision that the Ninth Circuit has now affirmed.
Moreover, I was not involved in any briefings relative to TRP’s appeal, so that is why I write that I won at the Ninth Circuit without doing a thing – because indeed I did not. In fact, the Ninth Circuit ruled against TRP despite having no substantive opposing briefs filed by the Defendants. Original Defendant Barrie Cunningham did send a one page letter to the Ninth Circuit asking for the lower court’s decision to be upheld, but otherwise, no briefs were filed by the Defendants arguing in favor of upholding the lower court’s decision – which makes the decision of the Ninth Circuit to uphold the decision anyway all the more sweeter. This victory for Defendants also demonstrates that just because no one opposes you on appeal does not necessarily mean you are going to win your appeal.
So short of an appeal by TRP of the Ninth Circuit’s decision to the U.S. Supreme Court or possibly a request for reconsideration with the Ninth Circuit, this decision marks the end of the great “Rat Pack Generic” saga that started as far back as 13 years ago. The glory days of TRP claiming to have exclusive rights to the term “THE RAT PACK” in connection with a “Rat Pack” tribute show – much like the “Rat Pack” itself – is forever gone.
Moreover, I was not involved in any briefings relative to TRP’s appeal, so that is why I write that I won at the Ninth Circuit without doing a thing – because indeed I did not. In fact, the Ninth Circuit ruled against TRP despite having no substantive opposing briefs filed by the Defendants. Original Defendant Barrie Cunningham did send a one page letter to the Ninth Circuit asking for the lower court’s decision to be upheld, but otherwise, no briefs were filed by the Defendants arguing in favor of upholding the lower court’s decision – which makes the decision of the Ninth Circuit to uphold the decision anyway all the more sweeter. This victory for Defendants also demonstrates that just because no one opposes you on appeal does not necessarily mean you are going to win your appeal.
So short of an appeal by TRP of the Ninth Circuit’s decision to the U.S. Supreme Court or possibly a request for reconsideration with the Ninth Circuit, this decision marks the end of the great “Rat Pack Generic” saga that started as far back as 13 years ago. The glory days of TRP claiming to have exclusive rights to the term “THE RAT PACK” in connection with a “Rat Pack” tribute show – much like the “Rat Pack” itself – is forever gone.
