March 17, 2014
On January 31, 2014 the Trademark Trial and Appeal Board (“TTAB”) granted The Trademark Company’s Motion for Summary Judgment in Mark Wood, Jr. vs. The Original Lakeside (TTAB Opp. No. 91210423) sustaining the case in favor of Mr. Wood.
The case involved ownership rights to the name LAKESIDE, a musical group founded by Mr. Wood in 1971 and to which Mr. Wood owns the registered trademark rights. Roughly two years earlier members of The Original Lakeside unsuccessfully challenged Mr. Wood’s continued registration of the trademark LAKESIDE claiming that their participation in the band had given them rights in the name and corresponding trademark. The Trademark Company successfully defended the case at that time.
These same individuals, following their earlier defeat, then formed a band called The Original Lakeside and sought protection of the trademark with the U.S. Patent and Trademark Office. Mr. Wood, with the assistance of The Trademark Company, filed a Notice of Opposition to the registration of the trademark on the grounds that, if registered, the name THE ORIGINAL LAKESIDE would cause confusion with his registered trademark for LAKESIDE.
Relying on the principle of res judicata (i.e., once a matter has been decided it cannot be argued again) The Trademark Company quickly moved for summary judgment on the grounds that the issues and the parties involved in this latest case were the same as those decided before and that The Original Lakeside should not be permitted to simply add THE ORIGINAL to the term LAKESIDE and have a second bite at the proverbial apple.
As set forth above, on January 31, 2014 the TTAB agreed and granted The Trademark Company’s Motion for Summary Judgment awarding the case to Mr. Wood and denying The Original Lakeside the ability to register a trademark of that same name.
Required Ethics Disclaimer: As always, case results depend upon a variety of factors unique to each case. As such, this case result does not guarantee or predict a similar result in any future case.