Daniel M. Goodmanv.Steven Berlin

Trademark Trial and Appeal Board

Oct 12, 2016

No. 92057241 (T.T.A.B. Oct. 12, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: October 12, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_______
Trademark Trial and Appeal Board
_______
Daniel M. Goodman
v.
Steven Berlin
_______
Cancellation No. 92057241
_______
Sawnie R. Aldredge, Esq., for Daniel M. Goodman

Thomas G. Carulli of Kaplan, Massamillo & Andrews, for Steven Berlin
_______
Before Kuhlke, Wellington and Ritchie,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Daniel M. Goodman (“Petitioner”) has petitioned to cancel Registration No.
4199114, owned by Steven Berlin (“Respondent”), for the mark LOS SUPER SEVEN,
in standard characters, for “entertainment services in the nature of live musical
performances.”1

1 Issued August 28, 2012, from an application filed October 11, 2010, asserting first use
anywhere and in commerce on April 29, 2012.
Cancellation No. 92057241

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Although the electronic transmittal page with the Petition for Cancellation
specifies Section 2(d) (“Priority and Likelihood of Confusion”) as the ground being
asserted, Petitioner did not cite to any statutory authority or specify a ground in the
body of the petition. Nevertheless, he has set forth several allegations that,
cumulatively, amount to a priority and likelihood of confusion ground. Particularly,
Petitioner alleges that he is the “true owner” and has “extensive priority of use of the
trademark [LOS SUPER SEVEN] for both live performances and sound recordings,”
and that his application for [Serial No. 85301031] for the same mark for sound
recordings has been refused registration on the basis of a likelihood of confusion with
the involved registered mark.2 Petitioner alleges certain other facts to show how he
acquired rights in the mark LOS SUPER SEVEN, including his acquisition in 2000
of the (now cancelled) Registration No. 2316298 for the same mark in connection with
entertainment services in the nature of live musical performances and in 2002 of the
(now cancelled) Registration No. 2543714 for the same mark on musical sound
recordings and related goods.3 Petitioner alleges that “[u]nless Registrant’s mark is
canceled, Petitioner will potentially lose not only the ability to control the content and
character of performances of the musical group, as he has for the past 15 years but
because [his application involving sound recordings is being refused registration], he
may lose the right to control the content and character of these goods as well, despite

2 1 TTABVUE 3. In contravention of Fed. R. Civ. P. 10(b), Petitioner did not number the
paragraphs and allegations in the complaint (petition for cancellation); therefore, only page
references are applicable. See also TBMP § 309.03(a)(2) (“All averments should be made in
numbered paragraphs …”).
3 Id. at 4.
Cancellation No. 92057241

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his extensive efforts in developing and promoting the goods and services for the past
15 years.”4
Respondent filed an answer denying the salient allegations in the petition, and
asserted various affirmative defenses, including the following:5
Notwithstanding that Petitioner did not, even had Petitioner established
some purported right in the term “Los Super Seven” in the late 1990’s, the
Petition itself evidence[s] that Petitioner has not been involved, in any
way, with any “Entertainment services in the nature of live musical
performances” associated with the words “Los Super Seven” in at least a
decade, and thus has abandoned any claim of right therein.6

The parties have submitted trial briefs.
I. The Record
The record includes the pleadings and, by operation of Rule 2.122(b), the file of
the registration sought to be cancelled.
In addition, during their assigned trial periods, the parties filed notices of reliance
and both parties have submitted testimony in the form of declarations with attached
exhibits. As to the declarations, the Board’s manual of procedure provides that
“[p]arties may stipulate to ACR-type efficiencies at any stage of a proceeding in order
to expedite the remainder of the trial schedule … [including] that the testimony of a
witness may be submitted in the form of an affidavit by the witness.” See TBMP §
705 (2016). Generally, the better practice is to file with the Board a copy of any such
stipulation. Here, no stipulation was filed with the Board. Nevertheless, because the

4 Id.
5 Aside from the allegation regarding abandonment, Respondent did not submit any evidence
regarding his other affirmative defenses, nor did he address them in his brief. We consider
these other defenses to have been waived.
6 1 TTABVUE 4.
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parties in this case both filed testimony in the form of declarations and neither side
object to the other’s use, they have effectively stipulated to the admission of testimony
in this form, and we will treat the declarations, as described below, as admitted in
evidence.
During his testimony period, Petitioner submitted his own declaration, with
exhibits thereto that include: a copy of a signed agreement between Petitioner and
The RCA Records Label (“RCA”); copies of Petitioner’s (cancelled) Registrations Nos.
2316298 and 2543714; a copy of a “cease and desist” letter from Petitioner’s counsel
addressed to Respondent; and the declaration of Rick Clark, a self-described
“musician, journalist, record producer and music supervisor.”7 Under notice of
reliance, Petitioner submitted website printouts of the following: an “AllMusic
Review by Stephen Thomas Erlewine” (from www.allmusic.com); a “No Depression”
article “Los Super Seven – Border Radio” dated February 28, 2005 (obtained from
www.nodepression.com); and an article from “Mix Online Extras” involving Los Super
Seven (obtained from www.printthis.clickability.com).8
Respondent, during his testimony period, submitted his own declaration with
exhibits that include: a copy of a list of what Mr. Berlin states are “musical recordings
I have produced and/or on which I have performed”; and a printout from the White
House website.9 Under notice of reliance, Respondent submitted copies of

7 20 TTABVUE.
8 21 TTABVUE.
9 22 TTABVUE.
Cancellation No. 92057241

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registrations for the mark LOS LOBOS (Reg. Nos. 2030095, 2113419, 4326958, and
4326959).
Petitioner, on rebuttal, filed his “Declaration in Rebuttal” and a notice of reliance
on copies of “liner notes” (text printed on the packaging or sleeve insert) from a “Los
Super Seven” album.10
II. Standing
“Standing requires only that the petitioner have a ‘real interest’ in the cancellation
proceeding.” Herbko Int’l Inc. v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1375,
1377 (Fed. Cir. 2002). Petitioner here has made of record, inter alia, his registrations,
albeit now cancelled, for the mark LOS SUPER SEVEN for entertainment services
and musical recordings, as well as a cease and desist letter that was sent on his behalf
to Respondent in June 2010.11 This evidence, combined with Petitioner’s averment
that he has “never abandoned the use of the mark,” as well as other evidence of record,
demonstrates at the very least that Petitioner has a real interest in and standing to
bring this proceeding. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d
1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014) (because USPTO refused petitioner’s
registration based on a likelihood of confusion with respondent’s registration,
petitioner “has a real interest in cancelling the Registrations and a reasonable belief

10 29 TTABVUE. We further note that on June 6, 2016, after the close of his assigned-rebuttal
testimony period, Petitioner filed a copy of Registrant’s responses to Petitioner’s first set of
interrogatories. Because this filing is untimely, the interrogatory responses have not been
considered.
11 As noted supra, Petitioner pleaded ownership of an application that was refused
registration on the basis of a likelihood of confusion with the involved registration. However,
he did not introduce a copy of the application or evidence in this regard. Thus, we cannot
consider this allegation which, if proven, would by itself confer standing.
Cancellation No. 92057241

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that the Registrations blocking its application are causing it damage”); Cunningham
v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
III. Priority and Rights in the Mark LOS SUPER SEVEN -- Background
The parties do not dispute that concurrent use of the same LOS SUPER SEVEN
mark, on or in connection with musical records or live musical performances, is likely
to cause confusion as to source amongst consumers. Rather, the essential issue here
is whether Petitioner can establish priority for likelihood of confusion purposes,
namely, that he acquired prior rights in the LOS SUPER SEVEN mark and that he
continues to hold such rights.
When it comes to musical performing groups and disputes over ownership of a
band’s name, the facts and relevant circumstances are frequently vague. This is
especially so when, as is the case here, there is no written agreement or other legal
formalities clearly delineating trademark ownership rights. Nevertheless, we note
the following relevant facts which are not in dispute.
In 1997, at the South by Southwest Music festival in Austin, Texas, there was an
informal “jam session” involving various musicians, including members of the band
Los Lobos, who played an assortment of Mexican-American songs. The following year,
in 1998, various artists who performed in Austin recorded an album, released as “Los
Super Seven” by RCA Records (“RCA”). For this first album, Petitioner had signed a
contract with RCA wherein he agreed to act as “executive producer.” Respondent
alleges that he acted in the role of producer of this album. The first album was
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received with some success and won a Grammy award for “Best Mexican-American
Album of 1999.” Liner notes on this album read:
Recorded in Austin Texas in April 1998, the album was the brainchild of
artist manager Dan Goodman, who produced a show of Tex-Mex music at
the 1997 South By Southwest. The intimate acoustic show at Austin’s
famous Las Manitas café featured artists like Texas Tornadoes Doug
Sahm and Augie Meyers, Joe Ely, Rick Trevino and Rosie Flores. It
reflected Goodman’s growing fascination with border music and its Tex-
Mex offshoots. Goodman began contacting the artists involved and even
spent a week in San Antonio combing the record stores for traditional
Mexican music to suggest for the project.

Petitioner meanwhile filed an application for the mark LOS SUPER SEVEN for
“entertainment services in the nature of live musical performances,” which issued on
February 8, 2000, as Registration No. 2316298.12
In 2001, a second Los Super Seven album was released, entitled “Canto.”
Petitioner asserts that he again acted in the capacity of “executive producer” and
Respondent alleges he again was the “producer.”
On March 5, 2002, Registration No. 2543714 for the mark LOS SUPER SEVEN
for “musical sound recordings … audio/visual discs, all containing music” issued to
Petitioner.13
In 2005, a third album entitled “I Heard It on the X” was released by “Los Super
Seven.” According to Petitioner, Respondent had no involvement with this album.
Respondent does not dispute this. A review of this album states “Los Super Seven

12 The underlying application was filed on December 8, 1998.
13 The underlying application was filed on December 8, 1998.
Cancellation No. 92057241

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isn’t even a band, per se – it’s a collective, organized by manager Dan Goodman, who
comes up with a concept for each of the group’s albums and assembles a band to fit.”14
On December 13, 2008, Petitioner’s Registration No. 2543714 was cancelled by the
Office for failure to file the required affidavit of continued use (or excusable nonuse),
pursuant to Section 8.
In a letter dated June 28, 2010, Petitioner’s counsel demanded that Respondent
“cease and desist any and all uses of the ‘Los Super Seven’ name and mark in
connection with any of [Respondent’s] activities.”
On September 10, 2010, Petitioner’s Registration No. 2316298 was cancelled by
the Office for failure to renew, pursuant to Section 8.
On October 11, 2010, Respondent filed the application that matured into the
involved registration.
IV. The Parties’ Positions
Petitioner contends that he is the rightful owner of the LOS SUPER SEVEN mark
on musical recordings and in connection with entertainment services based on his
role as an “executive producer” or “artist manager” and that “in 1997, [he] conceived
the idea of creating a musical performing group with a rotating cast of musicians who
would record and perform traditional Mexican-American songs … This entity became
‘Los Super Seven.’”15 In addition to the undisputed facts outlined above, Petitioner
relies on the averments in his declaration, including that he “first produced a concert
in Los Angeles, California on September 14, 1998 and produced other concerts in New

14 21 TTABVUE 3.
15 31 TTABVUE 4.
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York, Lexington, Kentucky, Austin, Texas and Nashville, Tennessee as well as other
cities.”16 In response to Respondent’s assertion that Petitioner has abandoned any
rights he may have acquired to the LOS SUPER SEVEN mark, Petitioner makes the
following averment:17
I have never abandoned use of the mark. Specifically, the related goods,
the three record albums I produced as “Los Super Seven” are still
commercially available and I am in the planning stages of the fourth “Los
Super Seven” recording which will be supported by a promotional tour.

Petitioner also relies on the declaration of Rick Clark, who averred that he “worked
with [Petitioner] as one of the producers of the third Los Super Seven album ‘Heard
It on the X’ [and Respondent] was not involved in the production of that sound
recording nor was [Respondent] involved in any of the live performances which
followed the release of that sound recording.”18 Mr. Clark added that “[t]o the best of
my knowledge, information and belief, [Petitioner] never abandoned the Los Super
Seven service mark.”19
Respondent’s position is that Petitioner was never the owner of the LOS SUPER
SEVEN mark and that, even if Petitioner acquired rights in the mark, he abandoned
these rights before Respondent filed the underlying application for the involved
registration. With respect to the musical recordings, Respondent points to several
passages from the agreement Petitioner entered into with RCA and states that “it
was RCA, and only RCA, that had the right to control the nature and quality of the

16 20 TTABVUE 3.
17 Id. at 4.
18 Id. at 27.
19 Id.
Cancellation No. 92057241

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sound recordings and to manufacture the sound recordings of that album on which
the name LOS SUPER SEVEN was use.”20 As to any use by Petitioner of the mark in
connection with live performances, Respondent contends that “had any rights been
established by Petitioner having controlled the nature and quality of live musical
performances conducted in or around the time the sound recordings were produced
by the record companies in 1998, or even 2005, [and] such rights were abandoned
more than a decade ago due to non-use.”21 Respondent asserts that because there was
more than three years’ nonuse of the mark after those dates, there is a presumption
of abandonment and Petitioner has not rebutted this presumption with credible
evidence showing excusable nonuse of the mark.
V. Analysis
Respondent, as owner of the involved registration, is entitled to the prima facie
presumptions, under Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b), of the
validity of the registration, Respondent's ownership of the registered mark, and
Respondent's right to exclusive use of the mark in commerce in connection with the
identified services. Respondent may also rely on the filing date of the application that
matured into the involved registration as his constructive use priority date. See Cent.
Garden & Pet Co. v. Doskocil Mfg. Co., 108 USPQ2d 1134, 1140 (TTAB 2013).
Petitioner, on the other hand, is plaintiff in this proceeding and thus bears the
burden of establishing by a preponderance of the evidence that he possesses prior

20 32 TTABVUE 7.
21 Id. at 9.
Cancellation No. 92057241

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rights in the LOS SUPER SEVEN mark. Cunningham, 55 USPQ2d at 1848;
Cerveceria Centroamericana, S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d
1307, 1309 (Fed. Cir. 1989).
As far as the Petitioner’s acquisition of rights in the LOS SUPER SEVEN mark,
the totality of the record shows that he was substantively involved in the creation
and continuation of a “musical band” consisting of revolving musicians known as “Los
Super Seven” from approximately 1997 until 2005. Petitioner averred that, as “the
creator of a live performing group ‘Los Super Seven,’ [he] first produced a concert in
Los Angeles, California on September 14, 1998” in addition to other live shows around
the country.22 He also declared, under oath, that he released a third album, also
released under the name “Los Super Seven,” in 2005. Petitioner’s statements are
supported not only by the declaration of Rick Clark, but also the liner notes in the
first album acknowledging the album as “the brainchild of artist manager Dan
Goodman [Petitioner], who produced a show of Tex-Mex music at the 1997 South By
Southwest.” In addition, there are several reviews of the third album that reflect a
public understanding that Petitioner is the person “who comes up with a concept for
each of the group’s albums and assembles a band to fit.”23
In spite of the aforementioned circumstances, it remains unclear whether
Petitioner had rights to the mark LOS SUPER SEVEN at any time. The RCA
agreement that Petitioner introduced sheds little light in this respect inasmuch as

22 20 TTABVUE 3.
23 21 TTABVUE 3.
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there is no mention of trademark rights therein. Rather, the agreement is clear that
RCA not only owned the master recordings but also enjoyed exclusive control over the
distribution of the recordings. As to any reliance by Petitioner on the now-cancelled
registrations, we point out that they have no more probative value other than to show
that they once issued. Petitioner is not entitled to any of the statutory presumptions
of Section 7(b) of the Trademark Act that he was once the owner of the mark. In Re
Ginc UK Limited, 90 USPQ2d 1472, 1480 (TTAB 2007). See also Action Temporary
Services Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir.
1989) (“a cancelled registration does not provide constructive notice of anything.”); In
re Hunter Publishing Company, 204 USPQ 957, 963 (TTAB 1979) (cancellation
“destroys the Section [7(b)] presumptions and makes the question of registrability ‘a
new ball game’ which must be predicated on current thought.”).
In any event, even assuming arguendo that we were to find that this record
sufficiently establishes that Petitioner acquired rights in this mark at some earlier
time, the record also establishes that Petitioner abandoned those rights. That is,
subsequent to release of the third “Los Super Seven” album in 2005, there is very
little, if any, evidence showing Petitioner was involved with either musical recordings
or entertainment services offered under the mark LOS SUPER SEVEN. As noted,
supra, Petitioner’s two registrations were cancelled by the Office for either a failure
to renew or failure to file an affidavit of continued use (or excusable nonuse). There
is also no evidence corroborating Petitioner’s blanket assertions that his failure to
maintain the registrations was due to “inadvertence and mistake”; or that the three
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“Los Super Seven” albums are still “commercially available”; or that he is in the
“planning stages” of a fourth “Los Super Seven” album that “will be supported by a
promotional tour.” Indeed, there are no statements from third parties or documentary
evidence to indicate that Petitioner was involved in promoting either live
performances or musical recordings under the mark LOS SUPER SEVEN since 2005.
The 2010 cease and desist letter sent by Petitioner’s counsel does not amount to use
of the mark itself and statements made in the letter, e.g., “[Petitioner] has
continuously exploited the ‘Los Super Seven’ trademark for over twelve (12) years,”
are merely hearsay. At best, the cease and desist letter constitutes an attempt to
police the mark or shows that Petitioner believed he had rights in the mark at that
time. Regardless, the record is void of testimony or additional evidence showing
Petitioner was actually using the mark at that time or at any point since 2005.
Notably absent is evidence of the mark being used in advertisements for either the
musical recordings or entertainment services.
Section 45 of the Trademark Act provides that a mark is abandoned when “its use
has been discontinued with intent not to resume use. Nonuse for three consecutive
years shall be prima facie evidence of abandonment.” 15 U.S.C. § 1127. Inasmuch as
Petitioner’s registrations were cancelled in 2008 and 2010 and to the extent he is now
relying on common law rights in the mark, we note that the statutory presumption
of abandonment applies not only to registered marks but also “to a party's
unregistered common-law mark.” Miller Brewing Company v. Oland's Breweries
[1971] Limited, 548 F.2d 349, 192 USPQ 266, 267 (CCPA 1976). In this case, a
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presumption of abandonment has been created based on Petitioner’s failure to
account for any trademark use since 2005. Petitioner has not rebutted this
presumption. See, e.g., On-line Careline Inc. v. America Online Inc., 229 F.3d 1080,
56 USPQ2d 1471, 1476 (Fed. Cir. 2000) regarding the presumption of abandonment
and burden shifting. Specifically, Petitioner has not only failed to introduce sufficient
evidence that he was actually using the mark in the three years since 2005, but he
has not established that the period of nonuse was excusable and that he had an intent
to resume use of the mark. See id.
Ultimately, Petitioner has not shown by the preponderance of the evidence that
he has acquired rights in the LOS SUPER SEVEN mark; even if we were to find that
he did, the record shows that he was not continuously using the mark since at least
2005, or that this period of nonuse was excusable and he had an intent to resume use.
Any rights in the mark that he may have once possessed were abandoned and, simply
put, he was not the owner of the mark by the time Respondent filed the underlying
application for the involved registration on October 11, 2010. Without existing prior
rights in the mark LOS SUPER SEVEN, Petitioner cannot prevail on the ground of
likelihood of confusion.
Decision: The petition for cancellation is dismissed.