United States District Court, D. New Jersey
BEASLEY PRO SE
NATOLI NATOLI-LEGAL LLC 305 BROADWAY, 7th FLOOR NEW YORK, NEW
YORK 10007 On behalf of Defendant
NOEL L. HILLMAN, U.S.D.J.
case stems from Plaintiff David Beasley's allegation that
Defendant William Howard violated the Lanham Act when he
obtained a Federal Registration for his trademark “THE
EBONYS” on July 10, 2012. Beasley alleges that he was
the original founder and creator of a singing group called
“The Ebonys, ” which he created on January 25,
1969, in Camden, New Jersey. Beasley asserts that he had the
group originally registered in New Jersey in 1969. Beasley
states that more than 25 years later, he brought Howard, who
is from Memphis, Tennessee, in as a temporary member of the
group. Howard knew that Beasley had created the group.
asserts that Howard eventually left the group and on July 10,
2012, obtained a Federal Registration (No. 4170469) for his
trademark THE EBONYS. Beasley alleges that Howard
“deceived the trademark office by registering a
trademark for [Beasley's] group the Ebonys that have been
performing since [Beasley] started the group fifty years
ago.” [Docket No. 1, at 3.] He also alleges that Howard
unsuccessfully “attempted to forge royalty
ownership” to Beasley's music and “is now
lying to audiences that he is founder of the original
Ebonys.” [Id. at 4.]
claims that Howard's actions violated Section 1125 of the
Lanham Act. Beasley claims that his injuries include
“not [being] able to develop a website under the name
of [his] original group the Ebonys.” [Id.]
“When [his] group of the Ebonys are performing, William
Howard sends notice and contact[s] other venues not to hire
[Beasley] and [his] original Ebonys group.”
[Id.] Beasley alleges that this prevents him from
“making a living” with the group.
requests that the Court vacate Howard's ownership of the
trademark in question and grant $500, 000 in damages to
Beasley “in monetary compensation for jobs,
performances, and endorsements lost as a result of trademark
and ownership conflicts” with respect to the group.
[Id.] He also seeks leave to register ownership of
the trademark with the United cause mistake, or to deceive as
to the affiliation, connection, or association of such person
with another person, or as to the origin, sponsorship, or
approval of his or her goods, services, or commercial
activities by another person, or (B) in commercial
advertising or promotion, misrepresents the nature,
characteristics, qualities, or geographic origin of his or
her or another person's goods, services, or commercial
activities, States Patent and Trademark Office
Motion to Dismiss [Docket No. 8], Howard argues that the suit
is barred by the doctrines of claim and issue preclusion, as
well as by Section 1064 of the Lanham Act. Specifically,
Howard argues that this action “raises the same issues
and claims that were (or should have been) previously
litigated in” two prior actions. The first prior action
(the “First Action”) was David S. Beasley v.
William H. Howard DBA The Ebonys, Cancellation No.
92057071, 2014 WL 7736473 (Trademark Tr. & App. Bd. Dec.
9, 2014). The second prior action (the “Second
Action”) was David S. Beasley v. William H. Howard
DBA The Ebonys, Cancellation No. 92066369, 2018 WL
529919 (Trademark Tr. & App. Bd. Jan 19, 2018).
April 18, 2013, Beasley filed with the Trademark Trial and
Appeal Board (“TTAB”) the First Action, a
Petition to Cancel Howard's THE EBONYS registration. TTAB
notified Beasley that his Petition - which included as
grounds for cancellation that “William Howard is not a
[sic] original member or on any original recording of the
Ebonys singing/performing group that was formed in
1969” and that “William Howard should not perform
under this name” - did not conform with TTAB
requirements. Thereafter, Beasley filed an Amended Petition
on July 8, 2013, which set forth the following factual
1. The Ebonys were formed in 1969 by David Beasley/petitioner
and consist of three vocalists including himself; James Tuten
(deceased)[, ] Clarence Vaughn and Jennifer Holmes.
2. The Ebonys were officially signed with Assorted Music
Records dba Philadelphia International Records in January
1971 and continue to receive quarterly royalty statements.
3. Registrant was not and is not an original member or
performed on any original live recordings of The Ebonys
4. David Beasley/petitioner registered “The
Ebonys” with the State of New Jersey as Class 041 in
5. David Beasley/petitioner continues to manage goods and
services involving the name “The Ebonys”. David
Beasley/petitioner manages entertainment services in the
nature of live performances by vocalist; entertainment in the
nature of ...