100 Blacks in Law Enforcement Who Care, Inc. and 100 Blacks Who Care, Inc.v.100 Blacks in Law Enforcement Who Care

Trademark Trial and Appeal Board

Apr 12, 2011

No. 91190175 (T.T.A.B. Apr. 12, 2011)

Mailed:
April 12, 2011
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

100 Blacks in Law Enforcement Who Care, Inc. and
100 Blacks Who Care, Inc.
v.
100 Blacks in Law Enforcement Who Care
________

Opposition No. 91190175
against Serial No. 77626835
_______

Noel Leader, pro se, for 100 Blacks in Law Enforcement Who
Care, Inc. and 100 Blacks Who Care, Inc.

Conor F. Donnelly, for 100 Blacks in Law Enforcement Who
Care.
_______

Before Bucher, Zervas and Kuhlke, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
The applicant of the involved application is now listed
as 100 Blacks in Law Enforcement Who Care, an unincorporated
association in New York State. On December 4, 2008, Marquez
Claxton, an individual citizen, filed an application for
registration on the Principal Register of the mark 100 Blacks
in Law Enforcement Who Care (in standard character format) for
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91190175
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services recited as “association services, namely, promoting
the interests of civil rights” in International Class 35.1
Registration has been opposed by two affiliated New
York corporations, 100 Blacks In Law Enforcement Who Care,
Inc. (“100 Blacks”) and 100 Blacks Who Care, Inc. (“100
Blacks Who Care”), sharing a mailing address at 593
Vanderbilt Avenue in Brooklyn, NY. Opposers claim to own
common law rights in the mark 100 Blacks in Law Enforcement Who Care
for services such as advocating for civil and human rights
on behalf of citizens of New York State, for educational
seminars and other informational public services. In
addition to alleging priority of use and likelihood of
confusion, opposers also allege a likelihood of dilution and
that applicant is not the rightful owner of the mark.2
The opposition was timely filed via the Board’s
electronic filing system (ESTTA) on May 13, 2009. In its
answer of June 19, 2009, applicant denied the salient

1 Application Serial No. 77626835 was filed on December 4,
2008 based upon claims of first use anywhere and first use in
commerce at least as early as January 1, 1993. In an examiner’s
amendment of March 12, 2009, applicant was changed from Mr.
Marquez Claxton to 100 Blacks in Law Enforcement Who Care, an
unincorporated association. This was applicant’s name at the
time the mark was published for opposition, so the name of
defendant/applicant in the Board’s caption above no longer
includes the name of Mr. Claxton.
2 While the Notice of Opposition contains terms like “false
premise” (¶6) and “false statement” (¶8), we construe these
charges as part-and-parcel of the overall allegation that
applicant is not the rightful owner of the contested mark.
Opposition No. 91190175
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allegations of opposers’ pleadings and asserted seventeen
“affirmative defenses.”3
On September 2, 2009, the Board approved the withdrawal
of opposers’ counsel. When opposers failed to respond to a
show cause order of October 20, 2009, the opposition was
dismissed with prejudice. Opposers stated in their motion
for reconsideration of January 4, 2010 that they had not
received several Board orders. Hence, the Board set aside
the dismissal order of December 7, 2009, and reset trial
dates.
According to the Board’s order of March 4, 2010,
opposers’ trial period was to end on September 2, 2010. On
August 23, 2010, opposers filed a document entitled
“Opposers’ 30-Day Trial Brief on Merits and Law.” The brief
refers to four affidavits dated June 23, 2009 [i.e., of Noel
Leader, Vernon Wells, Joel Ottley and Cliff Hollingsworth]
as attachments. However, opposers did not file any of the
affidavits and they were not referenced in the contents of
Exhibits A through D.4 In filing its “Appeal Brief” on

3 We construe many of these allegations in paragraphs numbered
11 through 27 as further explication of applicant’s answer.
Other statements that may well fall into the category of
“affirmative defenses” appear to have been waived as they are not
maintained in applicant’s final brief.
4 This ESTTA filing of seventeen pages included the cover
sheet (1), brief (8), Ex. A – NYS registration data (2), Ex. B –
website (1), Ex. C – second website (2) and Ex. D – opposer’s
cease-and-desist letter to applicant of February 27, 2009 (3).
Opposition No. 91190175
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November 1, 2010, the last day of its trial period,
applicant filed a copy of an affidavit of June 1, 2009, of
Marquez Claxton – the original signatory and applicant.
Then, with opposers’ “rebuttal brief” of December 16, 2010,
opposer filed three of the four affidavits of June 23, 2009
[i.e., of Vernon Wells, Joel Ottley and Cliff
Hollingsworth].5
Suffice it to say that very little about this “trial”
follows the procedures anticipated by our rules. However,
inasmuch as both parties have submitted the totality of
their evidence in this case as attachments to their
respective briefs, in a parallel fashion and without any
objections, we consider all the exhibits, including the
copies of three affidavits from another proceeding dated
June 23, 2009, and submitted to the United States Patent and
Trademark Office on December 16, 2010, as stipulated into
the record by the parties hereto.
As noted above, opposers’ pleadings herein contain
three grounds for refusing applicant registration:

5 This ESTTA filing of twenty-one pages included the cover
sheet (1), brief (6), Ex. A – NYS registration data [same
documents as Ex. A to August 23, 2010 ESTTA filing above] (3),
Ex. B – three affidavits (7), Ex. C – Copies of organizational
flyers from 1997-98 (3), and certificate of service page (1).
While each of the identically-worded affidavits of Messrs. Wells,
Ottley and Hollingsworth refer to “Noel Leader[’]s Affidavit,” we
cannot find such an affidavit anywhere in this record.

Opposition No. 91190175
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(1) priority and likelihood of confusion; (2) likelihood of
dilution; and (3) that applicant is not the rightful owner
of the mark.
This case has similarities to earlier Board cases
involving naming disputes among feuding members of extended
family businesses, aging pop bands, or religious
organizations riven by theological schisms. The common
factor in all of these disputes involves at least two
different factions having a common history and fighting over
a single, long-shared mark.
In this case, the common history dates to the mid-1990s
when a group of African American law enforcement
professionals in New York City formed a group they called
100 Blacks in Law Enforcement Who Care. While Messrs. Wells, Ottley
and Hollingsworth refer to Marquez Claxton, the original
applicant herein, as a “former” and “removed” member of
opposer, 100 Blacks in Law Enforcement Who Care, Inc., Mr.
Claxton refers to opposers as “ …a small group of
disgruntled members, led by Noel Leader [who] decided that
they did not like the direction in which the organization
was proceeding and instead of forming a new group, they have
and are attempting to appropriate the organization that
began [in the ‘90s].”
Opposition No. 91190175
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The webpage that applicant submitted as its specimen of
use in the involved application has the same URL (e.g.,
www.100blacksinlawenforcement.org) as the homepage
reproduced in opposers’ Exhibit B to its main brief. In
fact, the verbiage and images captured on the respective
screenprints appear to be exactly the same:

Opposition No. 91190175
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For more than fifteen years, 100 Blacks in Law
Enforcement Who Care was not an incorporated entity. It
apparently operated in this fashion into the calendar year
2008. Then in November 2008, Mr. Noel Leader filed in his
own name for a New York State service mark registration for
100 Blacks in Law Enforcement Who Care. Weeks later, in December
2008, Mr. Marquez Claxton filed the involved application
with the United States Patent and Trademark Office for the
identical mark, 100 Blacks in Law Enforcement Who Care, for
substantially the same services. Then in February 2009, Mr.
Leader’s group incorporated 100 Blacks in Law Enforcement
Who Care, Inc., with the New York State Division of
Corporations. In March 2009, Leader’s group had their then-
retained legal counsel send a cease-and-desist letter to Mr.
Claxton. In May 2009, the Notice of Opposition initiating
this proceeding was filed.
It is clear from the totality of the record that
individuals such as Eric Adams, Noel Leader and Vernon Wells
were involved at the inception of this organization in the
mid-1990s. Mr. Leader’s prominent and continuous role in
the organization over the past fifteen years is not
contested by applicant. While there is nothing in the
record to corroborate Mr. Claxton’s claim to being asked to
join the organization in 1995, we accept as fact that Mr.
Opposition No. 91190175
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Claxton was an active member of the organization for more
than a dozen years, and served into 2008 as a public
spokesperson for the organization of which Mr. Leader
remained as a key executive officer.
Since the dramatic parting of the ways in 2008/2009, it
seems the founders / officers / members of the group have
split into two camps. The opposers, under the leadership of
Mr. Leader, include Eric Josey, Clifton L. Hollingsworth,
Jr., Vernon C. Wells, Joel A. Ottley and Terrance Wansley.
Those associated with Mr. Claxton include Thomasina Sams
Riddick, Graham Weatherspoon, Todd Taylor and Jerome L.
Rice. In one indication of the contentiousness of the
relationship between these groups, the June 2009 affidavits
of Messrs. Wells, Ottley, Hollingsworth and Claxton appear
to have been executed when opposers sought an order from the
Kings County Supreme Court prohibiting Mr. Claxton from
identifying himself publicly as a member of 100 Blacks in
Law Enforcement Who Care™.
Although the name of New York State Senator Eric Adams
appears prominently on Mr. Claxton’s webpage as “Founder
Emeritus,” there are no indications in this record that Mr.
Adams has publicly thrown his support behind either of the
dueling parties to this litigation. Accordingly, Mr. Leader
appears to be one of the co-founders who has provided
Opposition No. 91190175
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continuous leadership of this group from its birth to the
present. Mr. Leader was the force behind the incorporation
of 100 Blacks in Law Enforcement Who Care, Inc., as a for-
profit corporation in New York State committed to civil
rights advocacy. On the other hand, applicant appears to
have used a screenprint from one of the opposer’s websites
as its specimen of record in the involved application.
Weighing the evidence as a whole, we find that opposers
have established by a preponderance of the evidence that
they have a clear historical lineage to the earliest days of
the informal association known as 100 Blacks in Law
Enforcement Who Care. We are faced with the identical mark
used in connection with identical services over a relatively
long period of shared history. Hence, we find that
traditional concepts of priority, likelihood of confusion,
first use dates, dilution, etc., are of little help in
resolving this dispute. Therefore, we focus our decision on
the issue of ownership.
Applicant, by way of Mr. Claxton’s personal affidavit,
claims 1993 as its first date of use of the applied-for
mark. Inexplicably, this alleged period of use beginning in
1993 includes a two-year period when an informal,
unincorporated entity was allegedly operating prior to 1995,
the year in which Mr. Claxton alleges he was first invited
Opposition No. 91190175
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to join the organization. He is also tacking onto more than
a dozen years of shared history (1995 – 2008) with an
organization allegedly founded by Messrs. Adams, Wells and
Leader.
Without any other evidence corroborating Mr. Claxton’s
claims to first use as of 1993, applicant’s involved
application entitles it to claim December 4, 2008, as its
priority date. Of course, this is more than a dozen years
after the phrase 100 Blacks in Law Enforcement Who Care was
adopted and first used. However, this shared history should
not in any way create for applicant its own mark with its
own first use date, i.e., ownership of this identical source
indicator.
Accordingly, we find on the totality of this record, as
a matter of trademark law, that opposer, 100 Blacks in Law
Enforcement Who Care, Inc., is the owner of the mark
100 Blacks in Law Enforcement Who Care. In view thereof, opposers
have proven their claim that applicant is not the rightful
owner of the mark.
Decision: The opposition is sustained, and
registration to applicant is hereby refused.