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Beasley v. Howard

United States District Court, D. New Jersey

January 9, 2020

DAVID BEASLEY, Plaintiff,
v.
WILLIAM H. HOWARD, Defendant.

          DAVID BEASLEY PRO SE

          FRANK NATOLI NATOLI-LEGAL LLC 305 BROADWAY, 7th FLOOR NEW YORK, NEW YORK 10007 On behalf of Defendant

          OPINION

          DATE NOEL L. HILLMAN, U.S.D.J.

         BACKGROUND

         This 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.

         Beasley 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.]

         Beasley claims that Howard's actions violated Section 1125 of the Lanham Act.[1] 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.

         Beasley 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 (“USPTO”).

         In his 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.[2] 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).

         On 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 allegations:

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 singing/performing group.
4. David Beasley/petitioner registered “The Ebonys” with the State of New Jersey as Class 041 in 1997.
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 ...

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