O.T.H. Enterprises, Inc.v.d/b/a Frontera Music v. Federico Estevan Vasquez

Trademark Trial and Appeal Board

Sep 28, 2012

No. 92050569 (T.T.A.B. Sep. 28, 2012)

Mailed:September 28, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

O.T.H. Enterprises, Inc. d/b/a Frontera Music

v.

Federico Estevan Vasquez
_____

Cancellation No. 92050569
to U.S. Registration No. 3129130
filed on February 11, 2009
_____

Jim Garcia of Ceronsky, Rosen, Garcia, PC for Petitioner,
O.T.H. Enterprises, Inc., d/b/a/ Frontera Music.

Tracy Wells of Wells Law for Registrant, Federico Estevan
Vasquez.
_____

Before Catlado, Wellington, and Kuczma,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:

This cancellation proceeding stems from the 1985
breakup of the Mexican band Grupo Pegasso. O.T.H.
Enterprises, Inc. d/b/a Frontera Music (“petitioner”), a
Texas corporation, filed a petition to cancel Registration
No. 3129130, owned by Federico Estevan Vasquez
THIS OPINION IS NOT CITABLE
AS A PRECEDENT OF THE
T.T.A.B.
Cancellation No. 92050569
2
(“registrant”) for the mark GRUPO PEGASSO and Design, shown
below:

for ““Musical sound recordings” in International Class 9
and “Entertainment services, namely, live performances by a
musical group” in International Class 41 (“the registered
mark”).1
As grounds for cancellation, petitioner alleges
priority of use and likelihood of confusion, abandonment of
the registered mark, non-use and fraud in the procurement
of respondent’s trademark registration. In support of its
claim of abandonment and non-use, petitioner alleges that
registrant, a member of the Grupo Pegasso band, left the
band in 1985 and formed a different band which used the
name “Pegasso del Pollo Estevan,” to record and manufacture

1 Registration No. 3129130 alleges a date of first use and first
use in commerce of September 9, 1979, for both Classes and issued
on August 15, 2006, based on an application filed on May 17,
2005. The word “Grupo” is disclaimed and the English translation
of the mark is Pegasus Group. Registrant filed its declaration
of continued use pursuant to Section 8 of the Trademark Act of
1946, 15 U.S.C. §1058, on February 28, 2012, after the petition
for cancellation was filed. The Section 8 declaration has been
accepted.
Cancellation No. 92050569
3
recordings sold only in Mexico.2 With respect to
petitioner’s fraud claim, it alleges that registrant made
blatant misrepresentations with malice and an intent to
defraud the U.S. Patent and Trademark Office (“USPTO”).
Specifically, petitioner alleges that registrant’s
fraudulent conduct includes registrant’s assertion that the
registered mark was in use in the United States and that
the specimen submitted by registrant to show use of its
mark in commerce contained images of albums that are owned
by petitioner and others that were digitally altered.
In his answer, registrant denied the salient
allegations and alleged several defenses, identified as
affirmative defenses, including that registrant is the
legal owner of the registered mark in the United States and
Mexico; that registrant has continuously used the
registered mark in interstate commerce in the United States

2 In its Petition to Cancel, petitioner alleged that registrant
“left the group in 1985, thereby losing the right to use the
name” and later alleged that after registrant “abandoned the
original group, ‘Grupo Pegasso,’ he formed a different group
under the name ‘Pegasso del Pollo Estevan’” (emphasis within).
In its trial brief, petitioner also argued that registrant
abandoned the GRUPO PEGASSO mark and built its reputation around
the mark “Grupo Pegasso del Pollo Estevan.” See Petitioner’s
Trial Brief, Docket # 47, p. 34. However unartfully pled, it is
clear that registrant recognized petitioner’s abandonment claim
as evidenced by his devotion of a section of his Motion for
Summary Judgment (see Registrant’s Motion for Summary Judgment,
Docket # 10, p. 21) to petitioner’s allegations that registrant
abandoned the mark, his identification of abandonment of the mark
in his Statement of Issues, and his submission of arguments on
abandonment in his Trial Brief. See Registrant’s Trial Brief,
Docket # 49, pp. 33-35.
Cancellation No. 92050569
4
and never granted permission to petitioner or petitioner’s
assignor to use the registered mark; that petitioner’s
assignor was an employee of registrant who is barred from
using the mark in Mexico; and that petitioner’s use of the
registered mark in the United States is an infringing use,
such that petitioner’s claims should be barred under the
doctrine of unclean hands based on petitioner’s and its
predecessors’ misuse of the registered mark.
List of Relevant Persons
The following list identifies the various persons
mentioned in this decision (persons listed in bold font
have provided trial testimony in this case):
• Christian Estevan Beeton (“Estevan Beeton”) –
registrant’s son and holder of power of attorney for
father; assisted non-English speaking father in preparation
of application for GRUPO PEGASSO and Design trademark.
• Ana Delia Benavides – wife of Roberto Benavides;
petitioner alleges she continued Discos Remo after death of
Roberto Benavides; petitioner refers to her as “Ana
Benavidez.”
• Roberto Benavides (“Benavides”)- husband of Ana
Benavides; sound engineer, part time musician, music
promoter and alleged principal of the Discos Remo record
production company; allegedly served as manager of Grupo
Cancellation No. 92050569
5
Pegasso band from about 1981 until his death in 1989;
petitioner alleges he was the owner of Discos Remo;
petitioner refers to him as “Roberto Benavidez.”
• Miguel Angel Cordero (“Cordero”) – Petitioner’s CEO.
• Felix Iniguez (“Iniguez”) – musician; member of Grupo
Pegasso from approximately 1979-March 1980.
• Juan Martinez (“Martinez”) - owns Novedades Musicales
Martinez (record shop and car audio store) in Pharr Texas,
operated for approximately 20 years (open since
approximately 1991); arranges performances for musical
groups in Texas and Mexican border cities.
• Marta Quiroz – secretary of Roberto Benavides;
petitioner alleges she continued Discos Remo after
Benavides’ death; petitioner refers to her as “Martha.”
• Miguel Quiroz – husband of Marta Quiroz, petitioner
alleges he continued Discos Remo with his wife after
Benavides’ death; band member of Grupo Pegasso (evidence of
dates of membership not presented, but allegedly joined and
departed the group at the same time as Reyna).
• Federico Estevan Vasquez (“registrant”) – owner of
Registration No. 3129130 for GRUPO PEGASSO and Design
Trademark; founder and member of Grupo Pegasso band from
1979-present.
Cancellation No. 92050569
6
• Emilio Reyna Villarreal (“Reyna”) – member of Grupo
Pegasso band from 1981-1985; following 1985 band breakup,
has performed and recorded under the band names Grupo
Pegasso and Pega Pega de Emilio Reyna.
• Guillermo “Memo” Villarreal (“Villarreal,” “Memo
Villarreal”) - owner of Discos Y Novedades Memo record
shops in Houston, Texas operating since 1968, also involved
in Mexican music business.
The Record
By operation of Trademark Rule 2.122, 37 CFR §2.122,
the record includes the pleadings and the file history for
Registration No. 3129130 which is the subject of this
proceeding. The record also includes the following
testimony and evidence:
A. Petitioner’s Evidence
Petitioner introduced the following evidence via
Notice of Reliance:3
1) Excerpts of the Discovery Deposition of
Registrant Federico Estevan Vasquez [Docket #29, pp. 7-18]
A];
2) Testimony deposition of Miguel Angel Cordero,
petitioner’s CEO, with attached exhibits [Docket ##30-31,
38];

3 Docket ## 28 and 37.
Cancellation No. 92050569
7
3) Testimony deposition of Guillermo “Memo”
Villarreal, owner of Discos ‘Y Novedades Memo, which
operates two record stores under the aforementioned name in
Houston, Texas [Docket #29, pp. 19-324];
4) Portions of the file history for cancelled U.S.
Registration No. 1907663 for the mark “Grupo Pegasso and
Design,” owned by Emilio Reyna Villarreal, Jr.4 [Docket #
28, Tab A];
5) A copy of the file history for abandoned U.S.
Application Serial No. 78/163307, filed by registrant for
the virtually identical5 “Grupo Pegasso and Design” mark for
“entertainment services in the nature of a musical group
and musical recordings;”6 [Docket # 28, Tab B];

4 Although petitioner’s Notice of Reliance states that it
includes the entire file history, the exhibit submitted with the
Notice of Reliance included only a barely legible printout of the
USPTO TARR database for Registration No. 1907663, a printout of
the USPTO’s Trademark Document Retrieval database page for
Application Serial No. 74/476205, which matured into Registration
No. 1907663, and a copy of the registration certificate for
Registration No. 1907663. Filed January 4, 1994, Registration No.
1907663 alleged a date of first use anywhere of February 1, 1981
and first use in commerce of October 1982. The Registration was
cancelled on July 20, 2002, after the deadline for filing a
Section 8 declaration expired.
5 The mark forms the same commercial impression as the mark shown
in the current registration, with the placement of the word GRUPO
appearing in all capital letters slightly to the left of the
location of the word GRUPO in the present registration.
6 The application was filed on September 12, 2002, based on an
allegation of a bona fide intent to use the mark in commerce
under 1(b) of the Trademark Act. The application was abandoned
on November 11, 2003, and registrant’s May 12, 2004 Petition to
Revive was denied on September 24, 2004.
Cancellation No. 92050569
8
6) A copy of U.S. Registration No. 31291307 [Docket #
28, Tab C]; and
7) A printout of an electronic search of the U.S.
Copyright Office’s public catalog from 1978 to present for
keyword “Pegasso” containing 93 entries listed by title,
copyright number and issue date8 [Docket # 28, Tab D].
B. Registrant’s Evidence
Registrant introduced the following evidence via
Notice of Reliance:
1) Testimony deposition of Christian Estevan Beeton,
registrant’s son and holder of power of attorney for
registrant who assisted registrant in the preparation of
the application for the mark in the subject registration
[Docket # 40, pp.7-263];

7 Pursuant to Rule 2.122(b), 37 C.F.R. 2.122(b), the record
automatically includes the application file for Registration No.
3129130 which is the subject of this proceeding, and therefore
submission of a copy of the registration was unnecessary.
8 Although petitioner characterizes this printout as the
“Official Records of the United States Copyright Office listing
the registration of copyrights for albums and songs of ‘Grupo
Pegasso,’” this characterization is incorrect. The document
relied upon by petitioner is merely a printout of the summary
search results from the U.S. Copyright Office’s online database
and does not display any information regarding copyright
registrations for albums and songs of Grupo Pegasso. Further,
the document lacks any relevant information which would support
petitioner’s claim of priority, such as authorship, publication
dates, or release dates. Accordingly, this document has little
probative value.
Cancellation No. 92050569
9
2) Testimony deposition and accompanying exhibits of
Felix Iniguez, member of the Grupo Pegasso band from 1979
to March 1980 [Docket ## 40-41, pp. 263-300;1-37];
3) Testimony deposition and accompanying exhibits
for Juan Martinez, owner of record shop Discos y Novedades
Martinez in Pharr, Texas, who has been active in the music
industry for over 20 years, representing and arranging
performance dates for musical groups such as “Renacimiento
74” and “Seven Days” in Texas and Mexican border cities
[Docket # 41, pp.37-100];
4) A copy of selected excerpts from Petitioner’s
[a]dmissions to Registrant’s Third Set of Requests for
Admissions [Docket # 39, Attachment A];
5) Newspaper Article from Ultima Hora, dated July
31, 2009 [Docket # 39, Attachment B];
6) Excerpts of the Discovery Deposition of
Registrant Federico Estevan Vasquez [Docket # 39,
Attachment C];
7) (a) Copy of Mexican Trademark Registration No.
533577 [Docket # 39, Attachment D];
(b) Copy of Mexican Trademark Registration No.
320663 [Docket # 39, Attachment E]; and
8) Certified copy of an April 29, 1992
Administrative ruling issued by Instituto Mexicano de la
Cancellation No. 92050569
10
Propiedad Industrial (IMPI), a government agency in Mexico,
regarding “commission of action that may constitute an
offense set forth by Article 211 Section IV of the Laws of
Inventions and Trademarks regarding the recorded trademark
320663 PEGASSO”9 [Docket # 39, Attachment F].
C. Petitioner’s Objections to Registrant’s Evidence
In combination with the filing of its trial brief,
petitioner submitted a document entitled “Petitioner’s
Objections to Registrant’s Evidence,” pursuant to TMBP §
901.03, which objects to the following evidence submitted
via registrant’s Notice of Reliance:
1) Attachment B: Copy of an article entitled "Today
is the great anniversary bash at Exponex," from the
publication, Ultima Hora, dated July 21, 2009;
2) Attachment C: Copy of excerpts of Federico
Estevan Vasquez’ discovery deposition;
3) Attachment D: Copy of Mexican Trademark
Registration No. 533577;
4) Attachment E: Copy of Mexican Trademark
Registration No. 320663; and

9 The IMPI proceeding concerned an action for trademark
infringement of the Mexican trademark PEGASSO (Registration No.
320663) brought by registrant against former band members of
Grupo Pegasso Miguel Quiroz, Javier Ramirez, Jose Santos
Rodriguez, Marco Vinicio Gomex, Emilo Reyna Villarreal, Juventino
Espinosa, Reynaldo Flores and Enrique Santos.
Cancellation No. 92050569
11
5) Attachment F: Certified copy of an April 29, 1992
Administrative ruling from Instituto Mexicano de la
Propiedad Industrial.
We will address each objection in turn.
Petitioner has objected to the article published in
Ultima Hora as inadmissible hearsay. Copies of printed
publications are specifically permitted pursuant to TBMP
§704.08(a) when the publication is available to the general
public in libraries, or of general circulation among
members of the public or that segment of the public which
is relevant to an issue in a proceeding. However, such
printed publications are admissible and probative only for
what is shown on their face, not for the truth of the
matters contained therein, unless a competent witness has
testified to the truth of such matters. TBMP §704.08(a).
Thus, at a minimum, the Ultima Hora article, published in
Mexico and distributed in the United States, is admissible
for what it shows on its face.10 Accordingly, petitioner’s
objection to this printed publication is overruled.
Similarly, we overrule petitioner’s objection to
registrant’s submission of excerpts of registrant’s
discovery deposition made pursuant to TBMP §801.05 which

10 As noted by registrant, much of the content of the Ultima Hora
article is corroborated by testimony of registrant, Christian
Estevan Beeton, and Felix Iniguez.
Cancellation No. 92050569
12
indicates that evidentiary matters not made properly of
record during the testimony period may be stricken from the
record. Petitioner’s objection ignores the fact that
registrant has made selected portions of his discovery
deposition of record via his Notice of Reliance.
Pursuant to TBMP §704.09(4), the adverse party may
offer the discovery deposition of anyone designated as a
party under Rule 30(b) (6) or Rule 31(a) of the Federal
Rules of Civil Procedure; however, if the adverse party
only introduces portions of a discovery deposition, the
other party may introduce any other part of the deposition
which, in fairness, should be considered so as to make what
was offered by the submitting party not misleading. The
responding party must explain via its notice of reliance
why the responding party needs to rely on each portion
listed in the responding party’s notice. TBMP §704.09(4).
Here, registrant filed a Notice of Reliance indicating that
the selected excerpts he submitted constitute proper
rebuttal to ensure that the excerpts submitted by
petitioner were not misleading. Further, to the extent
that registrant cites to pages of his discovery deposition
submitted by petitioner, we find no problem with registrant
citing to testimony properly made of record by petitioner
Cancellation No. 92050569
13
to prove or dispute petitioner’s claims or interpretation
of the testimony.
Finally, petitioner’s objections to registrant’s
submission of copies of its Mexican trademark registrations
and a certified copy of an April 29, 1992 Administrative
ruling from Instituto Mexicano de la Propiedad Industrial
are overruled in part. While the decisions and actions of
foreign courts concerning trademark rights are not
controlling on determination of a party’s right to register
in the United States, like printed publications, such
decisions are admissible and probative only to the extent
of what they show on their face, i.e., their historical
significance, and not for the truth of the matter contained
therein. 11 Accordingly, registrant’s Mexican registrations
and the IMI administrative rulings are admissible to prove
their existence, but not to prove evidence of their status,
or the use, registrability, or ownership of the subject
mark in the United States.12

11 See Boston Chicken Inc. v. Boston Pizza International Inc., 53
USPQ2d 1053, 1055 (TTAB 1999); Societe Civile des Domaines
Dourthe Freres v. S.A. Consortium Vinicole de Bordeaux et de la
Gironde, 6 USPQ2d 1205, 1207 n. 6 (TTAB 1988); Faberge, Inc. v.
Dr. Bador GmbH & Co., 219 USPQ 848,850 (TTAB 1983); and Beck &
Co. v. Package Distributors of America, Inc., 198 USPQ 573, 575
n. 4 (TTAB 1978).
12 See TBMP §704.03(b)(1)(A) (3rd ed. June 2012) citing Societe
Anonyme Marne et Champagne v. Myers, 250 F.2d 374, 116 USPQ 153,
155-56 (CCPA 1957); Bureau National Interprofessional Du Cognac
Cancellation No. 92050569
14
As discussed below, the evidence entered into the
record by the parties has different levels of credibility
and probativeness, and some of the evidence strains
credulity. Accordingly, we will treat such evidence with
an understanding of the limitations of credibility and
probativeness and consider the admissible evidence as a
whole to determine priority in this case. West Florida
Seafood, Inc. v. Jet Restaurants, Inc., 31 F.3d 1122, 31
USPQ2d 1660, 1663 (Fed. Cir. 1994).
Standing

Standing is a threshold issue that must be proved in
every inter partes case. Lipton Industries, Inc. v.
Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA
1982). In order to meet the standing requirement, a
plaintiff need only show that it has a real interest, i.e.,
a personal stake, in the outcome of the proceeding. See
Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1026
(Fed. Cir. 1999); and Jewelers Vigilance Committee, Inc. v.
Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2012, 2023-24 (Fed.
Cir. 1987).
Petitioner has alleged prior use of the term GRUPO
PEGASSO in connection with musical recordings and live

v. International Better Drinks Corp., 6 USPQ2d 1610, 1618 (TTAB
1988).
Cancellation No. 92050569
15
performances, which is identical to the word portion of the
registered mark and used in connection with goods and
services that are substantially identical to the registered
goods and services. Petitioner also alleges that the
registered mark is likely to cause confusion, mistake, or
deception within the meaning of 2(d) of the Trademark Act
such that petitioner will be harmed. Given petitioner’s
allegations that the marks are identical and the goods and
services are substantially identical, this is sufficient to
show that petitioner has a real interest in this proceeding
and, therefore, has standing. See Toufigh v. Persona
Parfum Inc., 95 USPQ2d 1872, 1874 (TTAB 2010) (standing
found where petitioner holds a reasonable belief that
“there is a likelihood of confusion between the marks, or
that the presence on the register of the respondent's mark
may hinder the petitioner in using or registering [its]
mark”).
Additionally, registrant sent cease and desist letters
to Wal-mart Stores, Univision, and Escapade 2001 music hall
asserting his rights in the registered mark and requesting
that the recipients cease and desist from promoting Reyna
as Grupo Pegasso or selling or distributing products of
Cancellation No. 92050569
16
Emilio Reyna or petitioner bearing the name Grupo Pegasso.13
These cease and desist letters, which resulted in Wal-mart
pulling all Grupo Pegasso albums produced by petitioner
from its shelves, provide additional evidence that
petitioner has business interests that have been affected,
i.e., a real interest in the proceeding, and thus, has
standing.
Ownership of the GRUPO PEGASSO Mark
It is undisputed that registrant and Reyna
(petitioner’s alleged predecessor-in-interest) were members
of the Grupo Pegasso band from at least as early as 1981 to
1985. The parties dispute whether the GRUPO PEGASSO mark
was used by registrant in the United States in connection
with the goods and services listed in the Registration
prior to Reyna’s participation in the band and whether
registrant, Reyna, or any other party, asserted a claim of
ownership or otherwise held themselves out as the owner of
the GRUPO PEGASSO mark. While ownership is not a pleaded
ground for cancellation, it is relevant to our
determination of the pleaded grounds.
Inasmuch as the mark at issue incorporates the Grupo
Pegasso band name, our analysis of the evidence presented

13 Cordero Test. Dep. Vol. I, Docket ## 30-31, pp. 116-118,
Exhibit 45.
Cancellation No. 92050569
17
by the parties requires a review of the relevant case law
concerning ownership of a band name. The following test is
generally applied to determine ownership of the name of a
performing group: (1) whether the group name is personal to
the members; (2) if the name is not personal to the
members, for what quality or characteristic is the group
known; and (3) who controls that quality?14 Here the Grupo
Pegasso name is not personal to registrant or any other
band member.15 Over the years, the membership of the Grupo
Pegasso band, except for registrant, changed at least three
times, all while retaining a specific quality of music.16
Petitioner contends that Roberto Benavides, who was a
sound engineer, part time musician, music promoter and
principal of the Discos Remo record production company,
controlled the quality of Grupo Pegasso’s music
performances from 1985 until his death in 1989,17 after

14 See McCarthy on Trademarks and Unfair Competition, §16:45 (4th
ed. 2012) (citing Cheng v. Thea Dispeker, Inc., 1955 WL 86353
(S.D.N.Y.), 35 USPQ2d 1493 (S.D.N.Y. 1995) (adopting the two-part
test of the treatise). Accord Robi v. Reed, 173 F.3d 736, 50
USPQ2d 1315 (9th Cir. 1999) (as between the original founder,
manager and performer and a long-departed group member, the
founder had the right to use the name of the group because he was
the person who controlled the quality of its services).
15 Both petitioner and registrant characterize the GRUPO PEGASSO
trademark as not personal to any member of the group. See
Petitioner’s Reply Brief, Docket # 51, p. 8; Registrant’s Trial
Brief, Docket # 49, p. 29.
16 See Iniguez Test. Dep., Docket ## 40-41, pp. 10, 13-16, 43-45;
Estevan Vasquez, Disc. Dep., Docket # 39, pp. 21-25, 28.
17 Petitioner argues that no one claimed ownership of the Grupo
Pegasso name during the early years (1981-1985) until Roberto
Cancellation No. 92050569
18
which time Reyna, as lead singer of Grupo Pegasso, asserted
ownership and control of Grupo Pegasso. Registrant, on the
other hand, contends that he founded the Grupo Pegasso band
in 1979, adopting the name from his participation in a
local rotary club in the town of Cerralvo, State of Nuevo
Leone, Mexico, which bore the name Pegasso and designing a
logo which contained the image of a horse’s head forming
the “P” in the word Pegasso.
In support of its contention that Roberto Benavides
was the owner of Grupo Pegasso, petitioner provides the
following evidence:
(1) business records of Discos Remo acquired by
petitioner at the time it acquired the rights to

Benavides filed an assumed name with the County of Bexar, Texas.
See Petitioner’s Trial Brief, Docket #47, p. 14. While
petitioner makes earlier statements that Grupo Pegasso was
introduced to Roberto Benavides on or about 1980-1981, this
overstates or misstates the scarce testimony. Petitioner’s
witness Memo Villarreal indicates the first time he learned of
Grupo Pegasso was between 1980 or 1981. At that time he was
familiar with Discos Remo and knew that Benavides was in charge
of the records produced by Discos Remo. However, Villarreal
never testified about Benavides’ assertion of control over Grupo
Pegasso during this time period. See Villarreal Test. Dep.
Docket # 29, pp. 16-17. Cordero testified that Discos Remo
started around the end of 1981 or beginning of 1982, but never
links Roberto Benavides to these dates, only later asserting that
Benavides was in control of everything that had to do with the
Grupo Pegasso band. See Cordero Test. Dep. Vol. I, Docket #30,
p. 34.
Cancellation No. 92050569
19
the sound recordings of Grupo Pegasso Volumes 1-9
from Discos Remo;18
(2) trial testimony of petitioner’s CEO, Miguel A.
Cordero;19
(3) trial testimony of Guillermo “Memo” Villarreal,
owner of owner of Discos ‘Y Novedades Memo, who
operates two record stores under the
aforementioned name in Houston, Texas;20 and
(4) the filing of an assumed business name in Bexar
County, Texas.21
Our review of this evidence, coupled with petitioner’s
assertion that Benavides only asserted ownership rights to
the Grupo Pegasso name in 1985 when he filed the
aforementioned assumed business name in Bexar County, Texas
and alternative theory of Reyna’s ownership of the GRUPO
PEGASSO mark from 1989 onward, leads to the conclusion that
Benavides lacked any ownership rights in the GRUPO PEGASSO
mark. Specifically, petitioner did not provide any

18 See Cordero Test. Dep. Vol. I, Docket ## 30-31, Exhibit 6.
While many of the records are undated, those records that contain
dates appear to span a period from 1985-1988.
19 See Cordero Test. Dep. Vol. I, Docket ## 30-31; Cordero Test.
Dep. Vol. II, Docket # 38.
20 See Villarreal Test. Dep., Docket # 29.
21 See Cordero Test. Dep. Vol. I, Docket ## 30-31, Exhibit 14.
The assumed business name listed “GRUPO PEGASSO” with address of
8534 Oak Timber San Antonio, Tex. 78251 as the assumed name for
the individual Jose R. Benavides, with the same address. It was
signed personally by Jose R. Benavides [Roberto Benavides] and
notarized on November 12, 1985.
Cancellation No. 92050569
20
corporate records or witness testimony concerning the
alleged ownership of Discos Remo by Benavides (or anyone
else) or their clear ownership or control of the Grupo
Pegasso band. Petitioner merely provided copies of
documents it refers to as “business records” which consist
of various receipts for band lodging and transportation
costs, as well as three contracts executed by Benavides for
performances of Grupo Pegasso. These “business records”
were unauthenticated and unclear in both legibility and
substance necessary to connect the documents to a claim of
ownership of the GRUPO PEGASSO mark.
Neither Cordero nor Memo Villarreal was present at the
time the Grupo Pegasso band was founded nor did they
possess any personal knowledge of the ownership rights in
the GRUPO PEGASSO mark. As such, any testimony provided by
Cordero or Memo Villarreal as to the formation and
ownership of the Grupo Pegasso band constitutes
inadmissible hearsay. See Ariola-Eurodisc Gesellschaft v.
Eurotone International, Ltd., 175 USPQ 250 (TTAB 1972).
Thus, petitioner’s only probative evidence supporting its
claim that Benavides was owner of the GRUPO PEGASSO mark is
Benavides’ filing of an assumed business name in Bexar
County, Texas.
Cancellation No. 92050569
21
The filing of an assumed business name does not equate
to ownership of a trademark. While the filing of an
assumed business name may indicate an intent to use a name
in connection with a business, it does not constitute
evidence of the use of a name as a trademark for goods or
services. See McCarthy on Trademarks and Unfair
Competition, §9:9 (4th ed. 2012). A trademark owner
possesses the right to exclude others from using its mark.22
The filing of an assumed business name is not evidence of a
person’s right to exclude others from using a mark. It
also does not provide sufficient evidence of control of the
quality of a music group such that Benavides can be viewed
as the owner of the trademark. At most, petitioner’s
evidence shows that Benavides acted as a business manager
for the Grupo Pegasso band from 1985-1989.
Finally, if we were to accept petitioner’s ownership
theory, it would, at a minimum, leave ownership of the
GRUPO PEGASSO trademark unaccounted for during the years
1979-1985, during which time the group performed and
released five albums in the United States. As such, it is

22 See In re Deister Concentrator Co., 289 F.2d 496, 129 USPQ 314,
320 (CCPA 1961)(explaining that the Lanham Act does not create
ownership of a trademark, but only evidence thereof and to say
that one has a “trademark” implies ownership and the right to
exclude others); College Sav. Bank v. Florida Prepaid
Postsecondary Educ. Expense Bd., 527 U.S. 666, 51 USPQ2d 1065,
1068 (1999).
Cancellation No. 92050569
22
difficult for us to accept petitioner’s allegations of
ownership without addressing the ownership rights from
1979-1985, and determining whether Roberto Benavides then
acquired rights from such owner.
Petitioner has provided no clear explanation
concerning ownership of the GRUPO PEGASSO mark from 1979-
1985, or how such ownership rights came to be vested in
Benavides. In view of the foregoing and given the lack of
any convincing evidence concerning Benavides’ control of
the GRUPO PEGASSO mark, we conclude that Benavides had no
ownership rights in the GRUPO PEGASSO mark.
Petitioner’s alternative theory of ownership is that
petitioner’s assignor, Reyna (a former band member), owned
the mark from 1989 to the present or, as also contended,
from at least as early as 1981 to the present.23
Petitioner’s evidence in support of this theory also
includes testimony depositions of its CEO Miguel Cordero
and Memo Villarreal, as well as an affidavit from Reyna
that was submitted as an exhibit during the course of
Cordero’s testimony24 and the issuance of cancelled
Registration No. 190766325 for a slightly different version

23 See Petitioner’s Trial Brief, Docket # 47, pp. 18-21.
24 Cordero Test. Dep. Vol. 1, Docket #30-31, Exhibit 59.
25 Registration No. 1907663 was based on an application filed
January 4, 1994, and registered July 25, 1995, alleging a date of
Cancellation No. 92050569
23
of the GRUPO PEGASSO and Design mark, registered by Reyna.
For the reasons discussed above, both Cordero and Memo
Villarreal’s testimony constitute inadmissible hearsay on
the subject of ownership of the Grupo Pegasso name. In
addition, as the authenticity and circumstances of Reyna’s
affidavit are unclear and registrant did not have the
opportunity to cross-examine Reyna, his affidavit is
inadmissible. See Tri-Star Marketing LLC v. Nino Franco
Spumanti S.R.L., 84 USPQ2d 1912, 1914 (TTAB 2007)
(declaration cannot be submitted in lieu of testimony
deposition absent a stipulation of the parties); TBMP
§703.01(b). Further, to the extent that the information
contained in Reyna’s affidavit contradicts other testimony
and arguments presented by petitioner, the affidavit cannot
be relied upon for truthfulness.
Similarly, while Reyna was able to register the GRUPO
PEGASSO and Design mark, the submitted evidence does not
contain a complete copy of the USPTO file history for
Registration No. 1907663. This limited evidence is
probative to show that Reyna asserted ownership rights in
the GRUPO PEGASSO and Design mark, but is not probative on
the issue of whether Reyna exhibited the necessary control

first use of February 1, 1981, and a date of first use in
commerce of October 1982.
Cancellation No. 92050569
24
of the quality of the music recorded and performed by the
Grupo Pegasso band to be considered the owner of the mark.
As petitioner provided no evidence concerning Reyna’s
control over the GRUPO PEGASSO mark, we also conclude that
Reyna was not the owner of the mark.
In evaluating the parties’ evidence, we conclude that
registrant is the owner and founder of the Grupo Pegasso
band and, as musical director and performer, controlled the
quality for which the group is known.
Specifically, in his discovery deposition, registrant
asserted that he formed the Grupo Pegasso band and recorded
its first album, Grupo Pegasso Vol. 1 in San Antonio, Texas
in 1979. This testimony is corroborated by the trial
testimony of Felix Iniguez, an original member of Grupo
Pegasso.26 Iniguez also noted it was registrant who
recruited him to join the Grupo Pegasso band and who acted
as director and guided the band.27 For example, Iniguez
testified that the style of the Grupo Pegasso band was more
sophisticated than the other groups and registrant would
guide the men in the group, instructing them how to play
certain arrangements. Iniguez’ testimony corroborates the

26 Iniguez, Test. Dep., Docket ## 40-41, pp. 8-11.
27 Id. at 8. Iniguez testified that registrant, who played guitar
for Grupo Pegasso, was responsible for musical arrangements,
obtaining the contracts, and providing room and board for the
band members.
Cancellation No. 92050569
25
statement28 made on the back of Grupo Pegasso Vol. 1 album
which indicates:
“El Pollo [i.e., registrant], director,
arrangement, guitarist of the group, he always adds
that special flavor to the melodies that they perform
and a great deal of that is what gives the Grupo
Pegasso so much success.” 29

Next, in his declaration attached to his testimony
deposition, Felix Iniguez also notes that registrant can be
heard introducing Reyna and others as the new members of
Grupo Pegasso on the last track of the re-release of Grupo
Pegasso Vol. 2.30
Registrant also provided the following evidence in
support of his claim of ownership of the registered mark:
(1) ownership of Mexican trademark registrations for the
trademarks GRUPO PEGASSO and Design (Mexican Trademark
Registration No. 533577)31 and PEGASSO (Mexican Trademark
Registration No. 320663);32 (2) his son’s testimony based on
personal knowledge of his father’s fame as owner and
founder of the Grupo Pegasso band;33 (3) a copy of a
newspaper article from the publication Ultima Hora, dated

28 Id. at 9-10, Exhibit 1.
29 See Id. at 19. Iniguez later comments that the details
registrant (i.e., Estevan) added to Grupo Pegasso, such as the
clothing, light shows, organ, and the keyboard gave the group a
specific sound that contributed to its success.
30 Id. Exhibit 2, Paragraph 16.
31 Docket # 39, Attachment D.
32 Docket # 39, Attachment E.
33 Docket # 40, pp. 7-263.
Cancellation No. 92050569
26
July 21, 2009 and circulated in Laredo, Texas which
discussed the 30th anniversary performance of the Grupo
Pegasso band, along with its history;34 and (4) a letter
from registrant to Oscar Loza Ramirez, General Secretary of
the Music Worker’s Union of the State of N.I., informing
the union that “on October 20, 1985, Emilio Reyna V.,
Miguel Quiroz, Juventino Espinosa and Jose Santos Rodriguez
notified [him] that they were splitting from Grupo Pegasso”
and that he registered the new members of the group so that
Grupo Pegasso can “keep working” and “comply with its
pending contracts.”35
In sum, we find registrant’s evidence sufficient to
establish his ownership of the GRUPO PEGASSO trademark as
the founder of the group and the individual who controlled
the quality of music and performances. As noted above,
registrant added unique characteristics such as lighting,
costumes, musical arrangement and overall sound for which
the group became known. Further, registrant served as the
sole original member and constant face of the Grupo Pegasso
band as members joined and left the group over the years.
This finding is consistent with case law on ownership
of the names of performance groups which holds that the

34 Docket # 39, Attachment B.
35 Docket # 31, Exhibit 13.
Cancellation No. 92050569
27
owner of a group (and thus its trademarks) exerts control
over the quality or characteristic of the group.36 Bell v.
Streetwise Records, Ltd., 761 F.2d 67, 226 USPQ 745 (1st
Cir. 1985), on remand, 640 F. Supp. 575, 231 USPQ 281 (D.
Mass. 1986); Cheng v. Thea Dispeker, Inc., 1995 WL 86353
(S.D.N.Y.), 35 USPQ2d 1493 (S.D.N.Y. 1995). It is also
consistent with case law which holds that band members such
as Reyna, who leave a performance group, have no right to
use the trademark and service marks of the group. See Five
Platters, Inc. v. Purdie, 419 F. Supp. 372, 193 USPQ 411
(D. Md. 1976); HEC Enters., Ltd. v. Deep Purple, Inc., 213
USPQ 991 (C.D. Cal. 1980); Kingsmen v. K-Tel Int’l Ltd.,
557 F. Supp. 178, 220 USPQ 1045 (S.D.N.Y 1983); Robi v.
Reed, 173 F.3d 736, 50 USPQ2d 1315 (9th Cir. 1999); Brother
Records, Inc. v. Jardine, 318 F.3d 900, 65 USPQ2d 1620 (9th
Cir. 2003).
Likelihood of Confusion
In their trial briefs, both petitioner37 and
registrant38 concede that the goods and services of

36 This is also consistent with the administrative ruling by IMPI
[Docket #39, Attachment F], finding that registrant possessed the
ownership rights in the PEGASSO name in Mexico, and the fact that
Reyna and other band members who split off from the band did not
have the right to continue using the PEGASSO name.
37 Petitioner’s Trial Brief, Docket # 47, pp. 37-38.
38 Registrant’s Trial Brief, Docket # 49, pp. 39-40 indicating
that “there is no factual dispute that the GRUPO PEGASSO marks at
issue here are confusingly similar.”
Cancellation No. 92050569
28
registrant and petitioner (and petitioner’s putative
predecessor(s)-in-interest) are substantially identical and
the marks used by each respective party are identical such
that it is likely consumers will be confused or deceived by
the parties’ use of their respective marks. We agree that
both the marks used by the respective parties and the goods
and services are virtually identical, if not identical. As
such, a detailed analysis of the relevant factors set forth
in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973), is unnecessary.
We note that both parties appear to have adopted and
used other unique identifiers to distinguish the names of
their bands from one another,39 however, our review is
limited to the registration at issue40 and to determine
which party has prior rights in the GRUPO PEGASSO mark.
Priority
In order for petitioner to prevail on its § 2(d)
claim, it must prove that it has a proprietary interest in

39 Registrant uses a number of variations of “del Pollo Estevan,”
as well as a Chickenhead Logo combined with the word “Pollo,”
while petitioner’s band which is led by Reyna uses “Pega Pega de
Emilio Reyna.” See e.g., Villarreal Test. Dep., Docket # 29,
Exhibits 4-7 for examples of such uses.
40 See Person's Co. Ltd. v. Christman, 900 F.2d 1565, 1569, 14
USPQ2d 1477, 1479 (Fed. Cir. 1990) and Fort James Operating
Company v. Royal Paper Converting, Inc., 83 USPQ2d 1624, 1629
(TTAB 2007).
Cancellation No. 92050569
29
the mark GRUPO PEGASSO and that interest was obtained prior
to either the filing date of respondent’s application for
registration or respondent’s date of first use in commerce.
Herbko International Inc. v. Kappa Books Inc., 308 F.3d
1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002); Otto Roth &
Co., Inc. v. Universal Corp., 640 F.2d 1317, 209 USPQ 40,
43 (CCPA 1981); Miller Brewing Co. v. Anheuser-Busch Inc.,
27 USPQ2d 1711, 1714 (TTAB 1993).
Petitioner does not own an existing registration and
relies on its alleged common law rights in the mark GRUPO
PEGASSO. To establish priority on its likelihood of
confusion claim under § 2(d) of the Trademark Act,
petitioner must prove by a preponderance of the evidence
that, vis-à-vis registrant, it owns “a mark or trade name
previously used in the United States . . . and not
abandoned . . . .” Thus, petitioner must prove that it
owned and used a trademark or service mark that is likely
to be confused with the registered mark prior to
registrant’s first use of the registered mark. See
Cunningham v. Laser Golf Corp., 55 USPQ2d 1842, 222 F.3d
943 (Fed. Cir. 2000).
If petitioner cannot prove that it used the mark as a
trademark or service mark, or in a manner analogous to a
mark, before either the filing date of the registration or
Cancellation No. 92050569
30
registrant’s proven date of first use (whichever is
earlier), petitioner cannot establish priority. Cf. Herbko
International, 64 USPQ2d at 1381; Otto Roth, 209 USPQ at
43; and Miller Brewing, 27 USPQ2d at 1714.
Registrant filed his application on May 17, 2005, but
asserts September 9, 1979 as his date of first use and date
of first use of the mark in commerce. Our review of the
evidence concerning registrant’s adoption and use of the
GRUPO PEGASSO name confirms his use of the name as a
trademark and service mark several years prior to his
application filing date and prior to any date of use upon
which petitioner can prove. Specifically, Felix Iniguez,
an original member of Grupo Pegasso from approximately
1979-March 1980 testified that Grupo Pegasso Volume 1 was
recorded at Joey Records in San Antonio, Texas in 1979 and
that he participated in performances with Grupo Pegasso at
the “Continental” in San Antonio, Texas and in Dallas,
Waco, and Forth Worth, Texas, as well as border cities in
Mexico.41 Further, on or about 1981, Grupo Pegasso
performed at Gregg’s Ballroom in Mission, Texas, a
performance which was personally attended by Juan
Martinez.42 Finally, petitioner’s own witness, Memo

41 Iniguez Test. Dep., Docket ## 40-41, pp. 8-11.
42 Martinez Test. Dep., Docket #41, p. 41.
Cancellation No. 92050569
31
Villarreal, testified that he sold registrant’s albums
bearing the GRUPO PEGASSO mark in his stores since their
first release in the early 1980’s.43
We first turn to the question of whether petitioner
acquired any proprietary rights in the mark prior to
registrant’s May 17, 2005 filing date. Petitioner bases
its rights in the GRUPO PEGASSO mark on a combination of
assignments acquired from the alleged predecessors-in-
interest of Discos Remo, the company which produced and
released the five Grupo Pegasso albums in the United States
during the time that registrant and Reyna were both members
of Grupo Pegasso, and for Reyna’s band after the split. We
address petitioner’s alternative theories of how it
acquired ownership of the GRUPO PEGASSO trademark in turn.
Petitioner first contends that it acquired rights
originally owned by band manager Roberto Benavides.
According to petitioner, during the period from 1981 to
1989, Roberto Benavides, as a result of his role in Discos
Remo, was the owner of the Grupo Pegasso band.44 Petitioner
bases its contention on statements made by Memo Villarreal
during his testimony deposition and a number of “business

43 See Villarreal, Test. Dep., Docket # 29, pp. 167-168, 190.
Memo Villarreal confirms that he sold Grupo Pegasso albums
featuring Pollo Estevan (i.e., registrant’s albums) from the time
the albums were first released, since approximately the 1980’s.
44 Petitioner’s Trial Brief, Docket # 47, p. 15.
Cancellation No. 92050569
32
records”45 submitted in connection with the testimony
deposition of its Chief Executive Officer, Miguel Cordero.
Specifically, petitioner points to Roberto Benavides’
filing of an assumed name certificate in Bexar County,
Texas as evidence of his ownership of the GRUPO PEGASSO
mark,46 as well as the aforementioned business records which
petitioner obtained when it acquired Discos Remo.
Following Benavides’ death in 1989, petitioner’s CEO
Cordero explains that Discos Remo was continued for a while
by Roberto Benavides’ wife, Ana Benavides, and Benavides’
associates, Miguel and Marta Quiroz.47 However, apart from
Cordero’s contentions, petitioner provides no evidence
concerning the ownership transition of Discos Remo from
Benavides to his heirs and the Quirozes. Subsequently, Ana
Benavides and the Quirozes assigned their alleged rights to
petitioner. Without any evidence in the record concerning
who owned Discos Remo, there is no basis to determine
whether Ana Benavides and the Quirozes were authorized to
act on behalf of Discos Remo and assign the company’s

45 The business records in question comprise various receipts for
lodging and transportation costs, as well as three contracts
executed by Benavides for performances of Grupo Pegasso. Many of
the records are illegible and unclear or lacking information
necessary to connect the receipt to a specific action that
supports a claim of ownership and control of the Grupo Pegasso
mark. Accordingly, these records are of limited probative value.
46 Cordero Test. Dep. Vol. I, Docket # 30-31, Exhibit 6.
47 See Petitioner’s Brief, Docket # 47, p. 2, citing Cordero,
Test. Dep. Vol. II, Docket # 38, pp. 16-18.
Cancellation No. 92050569
33
rights to petitioner. Based solely on the face of the
assignment, we cannot conclude that Ana Benavides, Miguel
Quiroz, and Marta Quiroz had authority to properly assign
any of Discos Remo’s rights to petitioner.
Nevertheless, petitioner relies on assignments from
alleged successors-in-interest of Discos Remo to establish
its ownership of the GRUPO PEGASSO mark. The first
assignment, shown below, between Miguel and Marta Quiroz,
and petitioner (as “OTH Enterprises Corp.”) “sells all
rights and title to all masters that have been produced or
are the property of DISCOS REMO, including Volume 1 to 9 of
Grupo Pegasso”:48

48 Cordero Test. Dep. Vol. I, Docket## 30-31, Exhibit 1.
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Cancellation No. 92050569
35
Discos Remo, Inc. and as the heir and representative of the
estate of Roberto Benavides, Miguel Quiroz, and Marta
Quiroz, and assignee, O.T.H. Enterprises Corp., assigns
effective November 16, 1995, “all right, title, interest,
vested and contingent, including all copyrights,
reproduction rights, distribution rights, titles, and
causes of action to…Grupo Pegasso albums one (1) through
nine (9).”:49

Similarly, this confirmatory assignment makes no mention of
any trademark rights or goodwill associated with the
trademark GRUPO PEGASSO. Accordingly, we find that neither
assignment transfers any rights in the GRUPO PEGASSO mark
to petitioner.
Alternatively, as discussed below, petitioner contends
that Reyna “took the reins” of the Grupo Pegasso band

49 Id.
Cancellation No. 92050569
36
following Benavides’ death in 1989.50 Under this scenario,
neither Discos Remo nor Benavides’ heirs would have any
rights to the mark after 1989 and thus, the assignment they
executed in November 1995 would not have transferred any
trademark rights to petitioner.
Accordingly, the final assignment on which petitioner
relies to establish its rights in the GRUPO PEGASSO mark is
a Trademark Assignment and Assignment of Causes of Action51
between Reyna, as assignor, and petitioner O.T.H
Enterprises, Inc., dba, Frontera Music. While Reyna owned
now expired Registration No. 1907663 for a similar GRUPO
PEGASSO and Design mark, we are somewhat perplexed by
petitioner’s alternate theories for acquisition of its
alleged rights in the GRUPO PEGASSO mark. Assuming,
arguendo, that Roberto Benavides through Discos Remo owned
the GRUPO PEGASSO mark from 1981 to 1989, it is unclear how
Reyna obtained rights in the GRUPO PEGASSO mark.
Nevertheless, as stated in the assignment shown below,
effective August 7, 2008, Reyna sold, assigned, and
transferred all common law rights to the GRUPO PEGASSO
mark, together with the goodwill of the business relating

50 Id. at 36.
51 Cordero, Test. Dep. Vol. II, Docket # 38, Exhibit 9.
Cancellation No. 92050569
37
to the goods and services in connection which the mark is
used to petitioner O.T.H. Enterprises, Inc.:
This assignment assigns all common law rights Reyna had in
the mark as of the date of the assignment.52 The record
indicates three possible scenarios concerning the earliest
rights Reyna could have obtained in the mark, but none of
these dates are prior to registrant’s first use of the
mark. Specifically, Reyna cannot claim rights to the GRUPO
PEGASSO mark before he joined the band. As he did not join
Grupo Pegasso until after its first album had been released
and the group had been performing in the United States and
Mexico, any date of first use by Reyna must necessarily be
later than registrant’s first use of the mark in 1979.
Alternatively, we can view the 1985 breakup of Grupo
Pegasso as the earliest date Reyna can claim rights in the

52 As noted above, while petitioner alleged that Reyna used the
GRUPO PEGASSO mark in connection with live entertainment
performances and sound recordings, petitioner has not provided
evidence concerning how such use amounted to ownership of the
GRUPO PEGASSO mark or evidence, such as an assignment, that
explains how Reyna acquired rights from Roberto Benavides or
Discos Remo. Instead, petitioner merely stated that Reyna was
the person who capitalized on the opportunity to “take the
‘reins’” of Grupo Pegasso after Benavides’ death.
Cancellation No. 92050569
38
GRUPO PEGASSO mark. This date, however, is contradicted by
petitioner’s own arguments that Benavides owned the GRUPO
PEGASSO mark from 1981-1989. Additionally, the case law
indicates that members who leave a performance group lose
all rights they may have had with respect to the
trademarks. See Five Platters, 193 USPQ at 411; Kingsmen,
220 USPQ at 1045; Robi, 50 USPQ2d at 1315; Brother Records,
65 USPQ2d at 1620.
Petitioner also argues that Reyna acquired rights in
the GRUPO PEGASSO mark in 1989, when he “took the reins” of
the group following Benavides’ death. However, this
scenario conflicts with petitioner’s contention that Ana
Benavides and the Quirozes acquired trademark rights from
Discos Remo after Roberto Benavides died. Regardless, we
find that none of the dates establish that Reyna,
petitioner’s alleged predecessor-in-interest, acquired
ownership rights in the GRUPO PEGASSO mark prior to
registrant.
As such, none of the assignments offered by petitioner
establish petitioner’s ownership and prior rights in the
GRUPO PEGASSO mark earlier than registrant’s date of first
use of the GRUPO PEGASSO mark. Accordingly, petitioner
cannot prevail on its likelihood of confusion claim.
Cancellation No. 92050569
39
Abandonment
Abandonment is one of the statutory grounds for
cancellation of a trademark registration, § 14(3) of the
Trademark Act, 15 U.S.C. § 1064(3). The burden of
persuasion remains with petitioner to prove abandonment by
a preponderance of the evidence. See On-Line Careline Inc.
v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1476
(Fed. Cir. 2000) and Cerveceria Centroamericana S.A. v.
Cerveceria India Inc., 892 F.2d 1021, 1024, 13 USPQ2d 1307,
1310 (Fed. Cir. 1989).
A mark is deemed to be “abandoned,” if the following
occurs:
When its use has been discontinued with
intent not to resume such use, intent
not to resume use may be inferred from
circumstances. Nonuse for 3
consecutive years shall be prima facie
evidence of abandonment. “Use” of a
mark means the bona fide use of such
mark made in the ordinary course of
trade, and not made merely to reserve a
right in a mark.

15 U.S.C. § 1127.

There are two elements to an abandonment claim that a
plaintiff must prove: non-use of the mark and intent not
to resume use. Because registrations are presumed valid
under 15 U.S.C. § 1057, the party seeking cancellation
based on abandonment bears the burden of proving a prima
Cancellation No. 92050569
40
facie case. Quality Candy Shoppes/Buddy Squirrel of
Wisconsin Inc. v. Grande Foods, 90 USPQ2d 1389, 1393 (TTAB
2007) citing On-Line Careline, 56 USPQ2d at 1476.
If petitioner can show three consecutive years of non-
use, this suffices for purposes of establishing a prima
facie showing of abandonment, creating a rebuttable
presumption that registrant has abandoned the mark without
intent to resume use. The burden of production, i.e.,
going forward, then shifts to registrant to produce
evidence that he has either used the mark, or intended to
resume use. Petitioner has not made a prima facie showing
of abandonment or otherwise established that registrant has
abandoned the registered mark. Petitioner contends that
registrant lost all rights to the GRUPO PEGASSO mark when
he left the group in 1985. As noted above, petitioner and
registrant have very different characterizations of the
1985 breakup of Grupo Pegasso, but the evidence of record
indicates that registrant remained with the group while
others, including Reyna, petitioner’s putative predecessor-
in-interest, left the band in 1985.
Petitioner relies on the deposition testimony of
Miguel Cordero and Memo Villarreal in support of its
abandonment claim. Cordero’s testimony with respect to the
issue of abandonment consists mainly of inadmissible
Cancellation No. 92050569
41
hearsay, as Cordero was not present during the 1985 breakup
of the Grupo Pegasso band and bases his knowledge on
information acquired from Roberto Benavides and Reyna.
Ariola-Eurodisc, 175 USPQ at 250. Memo Villarreal confirms
that he has sold registrant’s records in his stores since
at least as early as the 1980’s53 and that he currently
sells registrant’s albums.54 Villarreal also confirms
registrant’s use of the mark in connection with the live
music performances55 and testified to a battle of the bands
type duel held at El Portal Disco in Houston, Texas where
registrant’s Grupo Pegasso band performed together with the
Renacimiento ’74 band, and Reyna’s Pega Pega de Emilio
Reyna band.56 Thus, despite petitioner’s contentions to the
contrary, petitioner’s own witness confirms that registrant
has used the GRUPO PEGASSO mark continuously. Further,
registrant’s witness, Juan Martinez, also confirmed that he
has continuously sold registrant’s albums in his store
Discos y Novedades Martinez in Pharr, Texas since as least

53 See Villarreal Test. Dep., Docket # 29, pp. 167-168, 190.
54 Id. at 183-185, Exhibits 6 and 7. Villarreal confirms the
albums Grupo Pegasso 30 Aniversario and Lo Romantico de Grupo
Pegasso del Pollo were purchased from his Memo #1 store on August
19, 2010 (Exhibit 6) and the albums 20 Exitos Grupo Pegasso and
La Duda Grupo Pegasso were purchased from his Memo #2 store on
August 10, 2010 (Exhibit 7). All of these albums were recorded
by registrant’s Grupo Pegasso band.
55 Id. at 149-150. Memo Villarreal indicated he sold tickets for
performances by Estevan as Grupo Pegasso at El Portal Disco in
Houston, Texas.
56 Id. at 151-154, Exhibit 4.
Cancellation No. 92050569
42
as early as its opening in 1991 and that he has personally
attended Grupo Pegasso performances during a period from
1981 to 1991.57 With nothing more than bold assertions,
petitioner has not carried its burden of making a prima
facie showing of abandonment of the registered mark.
Further, petitioner greatly weakens its abandonment
claim by arguing that registrant abandoned the registered
mark when he adopted and started using the mark “Grupo
Pegasso del Pollo Estevan.” Contrary to petitioner’s
contentions, the addition of “del Pollo Estevan” to
registrant’s GRUPO PEGASSO mark is additional matter that
identifies the registrant as the source of the goods and
services bearing the GRUPO PEGASSO mark. Moreover, the
registered GRUPO PEGASSO and Design mark forms a separate
commercial impression from the composite mark “Grupo
Pegasso del Pollo Estevan.” The evidence also shows that
registrant continues to use GRUPO PEGASSO as a stand-alone
mark. Examples of registrant’s use of GRUPO PEGASSO, with

57 Martinez Test. Dep. Docket #41, p.41 and Exhibit 1. Martinez
indicates that he attended performances of Grupo Pegasso in 1981
at Gregg’s Ballroom in Mission, Texas, in 1991 at La Pulga Alamo,
Texas in 1991, and during the period between 1985 and 1991.
Cancellation No. 92050569
43
and without the “del Pollo Estevan” language are shown
below:58
In view of the foregoing, we find that registrant has not
abandoned use of the GRUPO PEGASSO mark.
Fraud
We next consider petitioner’s fraud claim including
the underlying allegation that respondent had not made use
of the mark either at the time of filing his application or
at the time he submitted a substitute specimen and
accompanying declaration attesting that the mark was in
use.

58 Cordero Test. Dep. Vol. II, Docket # 38, Exhibits 5, 7;
Villarreal Test. Dep., Docket # 29, Exhibit 6.
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44
The relevant standard for proving fraud set forth in
In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir.
2009), requires a showing of the following four elements:
(1) applicant/registrant made a false representation
to the USPTO;
(2) the false representation is material to the
registrability of a mark;
(3) applicant/registrant had knowledge of the falsity
of the representation; and
(4) applicant/registrant made the representation with
intent to deceive the USPTO.
Id., 91 USPQ2d at 1941.
Petitioner’s fraud claim alleges that registrant
submitted a trademark application that contained false
information and submitted false specimens in response to an
Office Action requiring substitute specimens.59 Petitioner

59 Petitioner’s allegations concerning false specimens are only
with respect to the specimen submitted to show use in commerce
for the goods in International Class 9. On January 23, 2006,
registrant submitted a specimen for the goods in International
Class 9 which consisted of a 1-page printout of a webpage that
shows the covers of Grupo Pegasso albums 1-9. Following the
submission of this specimen, a Final Office Action was issued on
February 9, 2006, requiring registrant to amend the indefinite
wording in the identification of goods and services and submit a
substitute specimen showing use of the mark in connection with
the services in International Class 41. In an Office Action
response of February 13, 2006, registrant amended the application
to add “musical sound recordings” in International Class 9 to the
identification of goods and services and submitted a specimen
comprising two posters advertising the applied-for mark with
respect to live musical performances and a second copy of the
Cancellation No. 92050569
45
further contends that such blatant misrepresentations were
made by registrant with malice and with the intent to
defraud the USPTO.
Turning to the first element required to find fraud,
petitioner has alleged that registrant (1) knowingly
misrepresented the dates of first use of the registered
mark, and (2) submitted false specimens to the USPTO which
were intentionally altered. As discussed above, registrant
began use of the GRUPO PEGASSO mark at least as early as
1979 and currently uses the registered mark in commerce.
While petitioner has provided various theories concerning
registrant’s non-use of the mark, multiple witnesses
confirm that registrant named and formed the Grupo Pegasso
band in Mexico at least as early as 1979. Although there
are contradictory statements concerning whether
registrant’s first album was released in 1979 or later in
1980, petitioner has not met its burden of proving that the
date of first use is incorrect and therefore false.
Petitioner has also not provided sufficient evidence
to show that the webpage specimen filed by registrant was

previously submitted specimen, which this time displayed the
album covers of Grupo Pegasso Volumes 1-12 and a partial image of
three additional covers. On March 31, 2006, the application was
subsequently amended via examiner’s amendment to cover “musical
sound recordings” in International Class 9 and “Entertainment
services, namely, live recordings by a musical group” in
International Class 41, and approved for publication.
Cancellation No. 92050569
46
false. By petitioner’s own admission, the webpage
submission contained copies of five original GRUPO PEGASSO
albums produced by Discos Remo (pre-1985 band split-off).
Although petitioner contends these albums are its property
by virtue of the assignment from Discos Remo, as discussed
infra, petitioner has not proved Discos Remo’s ownership of
trademark rights in the GRUPO PEGASSO mark. Discos Remo’s
role as a music publisher does not endow it with ownership
rights in the name of the GRUPO PEGASSO band. There is no
evidence that Discos Remo exerted control over the quality
or personality of the band. To the contrary, the evidence
establishes that registrant was the person who founded and
named the band, and controlled the quality and personality
of the band. Thus, any use of the GRUPO PEGASSO name by
Discos Remo was with the authorization of registrant and
the placement of the GRUPO PEGASSO trademark on the albums
produced by Discos Remo constitutes evidence of use of the
mark in commerce by registrant. In view of the foregoing,
petitioner has not shown that registrant made false
statements by submitting images of these album covers as
specimens.
We next turn to the remaining images that appear on
the webpage specimen submitted by registrant. As explained
by registrant’s son, the specimen was taken from a website
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47
designed by registrant’s other son after a Google search
was conducted for images of registrant’s albums.60
Petitioner contends that these images are false
because they lack the wording “Del Pollo Estevan” which
appears on albums of the same title submitted as evidence
by petitioner. Petitioner does not argue that the albums
were not in use in commerce. Rather, petitioner contends
that the images of the album covers shown in the specimen
were altered to remove the wording “Del Pollo Estevan.”
Petitioner’s only evidence that these images were
altered by registrant consists of Miguel Cordero’s
testimony that the album covers do not match the album
covers he has seen or come across during a cursory search
for such covers.61 Registrant’s son testified that the
images were obtained from a search for such albums
conducted on the internet via the Google search engine.62
Registrant also presented evidence which was corroborated
through his son’s testimony that various versions of an
album cover may exist depending upon who distributed or
released the album and the format in which the album was

60 See Estevan Beeton Test. Dep., Docket # 40, p. 18.
Registrant’s statement made in connection with submission of the
specimens that “the specimen consist of an image taken from the
website with CD Covers from Grupo Pegasso (pegasus group), more
can be found at: http://www.grupopegasso.net/Galeria.htm.”
61 Cordero Test. Dep. Vol II, pp. 14, 47-56.
62 See Estevan Beeton Test. Dep., Docket # 40, p. 18.
Cancellation No. 92050569
48
released.63 This scenario is also supported by evidence
submitted during Cordero’s testimony deposition which shows
different formats of the albums contained different
covers,64 as well as Villarreal’s testimony that discusses
how record companies repackage and remix albums.65 As such,
we find that petitioner has not established that the
specimens submitted by registrant are somehow false or were
doctored by registrant.
Since the first element for proving fraud was not met,
we need not examine the other elements of fraud. However,
for purposes of completeness and clarity, we will briefly
comment on the material nature of petitioner’s allegations
of registrant’s intent to defraud the USPTO.
Petitioner has alleged that registrant’s dates of
first use alleged in the application were false. Our
review of the evidence indicates that petitioner has failed
to prove that registrant did not use the registered mark in
connection with the goods and services as of his alleged
dates of use. We must emphasize, however, that even if we
found that registrant’s statements were false with respect
to the September 9, 1979 dates of use, such false
statements would not rise to the level of fraud.

63 Id. at 19-20.
64 Cordero Test. Dep. Vol. I, Docket ## 30-31, Exhibits 3-5, 11-
12, 47-49m, 51-52.
65 Villarreal Test. Dep., Docket # 29, pp. 171-177.
Cancellation No. 92050569
49
Specifically, as explained in Hiraga v. Arena, 90 USPQ2d
1102, 1107 (TTAB 2009), the critical question is whether
the mark was in use in connection with the identified goods
as of the filing date of a use-based application. That is,
if the mark was in use in commerce as of the filing date,
then the claimed dates of first use, even if false, do not
constitute fraud because the dates of use are not material
to the Office’s decision to approve a mark for publication,
citing, Colt Industries Operating Corp. v. Olivetti
Controllo Numerico S.p.A., 221 USPQ 73, 76 (TTAB 1983)
(“The [Trademark] Examining Attorney gives no consideration
to alleged dates of first use in determining whether
conflicting marks should be published for opposition.”).
Here, the evidence establishes that registrant was clearly
using the mark at the time he filed his application.
Further, with respect to petitioner’s allegations
concerning doctored specimens, if successfully proved,
these allegations would only lead to the cancellation of
International Class 9 because a finding of fraud with
respect to a particular class renders the registration void
as to that specific class and does not result in
cancellation of any other classes in the registration.
Meckatzer Löwenbräu Benedikt Weiß KG v. White Gold, LLC, 95
USPQ2d 1185, 1188 (TTAB 2010) ("In re Bose did not change
Cancellation No. 92050569
50
the consequences of fraud, when it is proved. A finding of
fraud with respect to a particular class of goods or
services renders any resulting registration void as to that
class."). See also, Herbaceuticals, 86 USPQ2d at 1577
("the registration is void in the international class or
classes in which fraud based on nonuse has been
committed.").
Nevertheless, in addition to failing because
petitioner did not provide convincing evidence that the
specimens were false and therefore not in use in commerce,
petitioner’s allegations also fail because there is no
evidence of registrant’s intent to deceive the USPTO.
Petitioner argued that registrant’s intent to deceive the
USPTO can be presumed from registrant’s submission of
specimens that lacked any reference to “Del Pollo Estevan”
following the USPTO’s issuance of an initial Office Action
that rejected the specimens submitted with the application
because “Del Pollo Estevan” was superimposed over the mark.
As explained by registrant’s son, registrant’s submission
of the webpage specimen was in response to the initial
Office Action which objected to the specimen submitted with
the application because it did not agree with the drawing
of the mark due to the overlapping proximity of the wording
“del Pollo Estevan” to the GRUPO PEGASSO mark. Based on
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51
our review of the language in the outstanding Office
Action, registrant was required to submit a substitute
specimen that showed the mark as it appeared on the drawing
page, but importantly, this requirement did not indicate
that the specimen be utterly devoid of the wording “Del
Pollo Estevan.” Accordingly, petitioner’s argument that
registrant’s intent to deceive66 may be inferred from the
Office Action requirements is without support. Further,
registrant’s son specifically testified that he did not
alter the specimens, his father did not alter the
specimens, and he is unaware of anyone who altered the
specimens.67 Without evidence of intent to deceive the
USPTO, petitioner’s allegations of fraud fail.
Furthermore, petitioner did not object to the first
five album cover images68 that appeared on the specimen as
being altered. As discussed within, although these albums
were released by Discos Remo, the use of the mark on these
albums inures to registrant’s benefit as the mark owner,
not to Discos Remo and petitioner (its alleged successor-
in-interest) as record producer and distributor. Thus,
under the circumstances, even if portions of the specimens

66 Petitioner’s Main Brief, Docket # 47, p. 39.
67 Estevan Beeton Test. Dep., Docket # 40 pp. 18-19.
68 Petitioner alleged that these images were improper because they
were albums released by Discos Remo while Reyna and registrant
were both members of Grupo Pegasso.
Cancellation No. 92050569
52
at issue were altered, without proof of the registrant’s
intent to deceive, the submission of a partially altered
specimen is not material to registration where portions of
the specimen show the mark as actually used in commerce.
In sum, even if petitioner had provided evidence that
registrant’s specimens and dates of use were false,
petitioner’s fraud claim would fail because petitioner has
not proved registrant’s intent to deceive the USPTO or the
materiality of the allegedly false statements made.
Accordingly, petitioner has not met its burden of proof to
show that registrant committed fraud in the procurement of
his registration.
Conclusion
In view of the fact that petitioner’s predecessors-in-
interest did not own any rights in the GRUPO PEGASSO
trademark, petitioner could not acquire rights from any
predecessors-in-interest that were prior to registrant’s
date of first use. As such, petitioner’s priority and
likelihood of confusion claim fails.
Because registrant has continuously used the
registered mark in commerce since as least as early as the
filing date of the application for registration, petitioner
has not met its burden of proving prior use of the GRUPO
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53
PEGASSO mark or abandonment of the mark by a preponderance
of evidence.
Further, petitioner has not proven its allegations
that registrant committed fraud upon the USPTO because
petitioner did not provide conclusive evidence that
registrant made false statements or submitted false
specimens in support of its application. In addition, even
if we assume that registrant’s statements were false,
petitioner has not established that registrant submitted
material statements to the USPTO with intent to defraud the
USPTO.
For the reasons set forth above, priority rests with
registrant as the founder of the Grupo Pegasso band and
owner of the GRUPO PEGASSO and Design trademark and service
mark.

Decision: The cancellation proceeding is dismissed
with prejudice.