Ramex Records, Inc.v.C. Jose Alfredo Guerrero

Trademark Trial and Appeal Board

Jun 26, 2002

No. 91111215 (T.T.A.B. Jun. 26, 2002)

Mailed: 26 JUN 2002
Paper No. 28
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Ramex Records, Inc.
v.
C. Jose Alfredo Guerrero

_____

Opposition No. 111,215
to application Serial No. 75/100,640

_____

Walter R. Brookhart of Shook, Hardy & Bacon L.L.P. for
Ramex Records, Inc.

Cheryl L. Hodgson of Probstein, Weiner and Hodgson for C.
Jose Alfredo Guerrero.
______

Before Seeherman, Bucher, and Drost, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

C. Jose Alfredo Guerrero (applicant) has applied to
register the mark LOS CADETES DE LINARES on the Principal
Register for goods ultimately identified as a “series of
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Opposition No. 111,215
2
pre-recorded cassettes and compact discs containing
music” in International Class 9.”1
Ramex Records, Inc. (opposer) has opposed
registration on the ground that applicant’s mark, when
used on or in connection with the identified goods, so
resembles opposer’s mark LOS CADETES DE LINARES
previously used in the United States, and not abandoned,
for cassette tapes, compact discs, and videos, featuring
audio and/or video recordings of musical performances and
entertainment services and providing live musical
performances by a group as to be likely to cause
confusion, or to cause mistake or to deceive.2 Also,

1 Serial No. 75/100,640, filed May 2, 1996. As amended, the
application alleges a date of first use at least as early as
1960 and a date of first use in commerce at least as early as
1986. The application includes a translation of the mark as
“The Cadets from Linares.” The word “Linares” is disclaimed.
2 While opposer in its Notice of Opposition refers to an
application it allegedly owns (Serial No. 75/205,197 filed
November 27, 1996) for goods and services in International
Classes 9 and 41, this application has not been made of record.
ABC Moving Company, Inc. v. Brown, 218 USPQ 336, 338 (TTAB 1983)
(“[P]etitioner has alleged standing in this case by virtue of
its application having been refused by the Examining Attorney in
view of respondent's registration. While this is a proper
allegation of standing in view of the holding in Lipton
Industries, Inc. v. Ralston Purina Co., 213 USPQ 185 (CCPA
1982), respondent has denied the allegation based on
insufficient knowledge and information as to the truth of said
allegation. Petitioner has offered no evidence of the facts
relating to its application and rejection thereof because of
respondent's registration and we conclude that petitioner has
failed to prove its standing in this case to be heard on any
issue”). See also Doctor Vinyl & Associates v. Repair-It
Industries, Inc., 220 USPQ 639, 641, n.1 (TTAB 1983) (“In its
brief, opposer refers to its pending applications for
Opposition No. 111,215
3
opposer alleges that applicant made “false statements
concerning the date of first use, the date of first use
of the mark in commerce, the continuity of use of the
mark and the ownership of the mark” that “constitute
fraud in the application and fraud on the United States
Patent and Trademark Office.” Opposition, p. 8.
Applicant has denied the salient allegations of the
notice of opposition.
The Record
The record consists of the file of the involved
application; the trial testimony deposition, with
accompanying exhibits, of Emilio V. Garza, opposer’s
president; the trial testimony depositions, with
accompanying exhibits, of applicant, C. Jose Alfredo
Guerrero (a.k.a. Jose Alfredo Guerrero de la Cerda) taken
on April 26 and June 21, 20003; the trial testimony
deposition with exhibit of Michael Perlstein4, an attorney
who specializes in entertainment law; opposer’s
submission of applicant’s answers to three

registration of DR. VINYL and indicates that these applications
were suspended pending the outcome of this proceeding. However,
neither the application files or the facts concerning them are
part of the record of this proceeding. Consequently, the
reference to them in opposer's brief has not been considered”).
3 The Guerrero and Garza depositions were conducted with the
help of a Spanish interpreter.
4 Opposer has moved to strike this testimony. We deny this
motion, as discussed infra.
Opposition No. 111,215
4
interrogatories; and excerpts from a book entitled The
Billboard Guide to Tejano and Regional Mexican Music, by
Raymond Burr (1999).5
Both parties have filed briefs. An oral hearing was
requested, but both parties subsequently waived oral
argument.
Facts
(1) Applicant was born in Linares, in Nuevo Leon,
Mexico. Guerrero, April 26 deposition, p. 8.
(2) Applicant and his brother, Homero Guerrero,
formed a musical group in Mexico in the late 1950’s and
called the group “Cadetes.” Guerrero, April 26
deposition, pp. 19 and 29.
(3) Applicant left the group in 1960 because he
played the guitar and it was necessary to bring in an
accordionist. Guerrero, June 21 deposition, pp. 11 and
14.
(4) When applicant played with his brother Homero,
the group “used only Cadetes” as the name for the group.
Guerrero, April 26 deposition, p. 29.

5 Both parties have submitted exhibits with the depositions that
appear to be in Spanish without an English translation. We have
not considered these exhibits except to the extent that they are
explained in the testimonial depositions. See Wright and
Graham, Federal Practice and Procedure (1977), § 5075 (“[I]f a
party puts in evidence the whole of an encoded writing, he
Opposition No. 111,215
5
(5) Because the brothers were from Linares, Mexico,
they were sometimes referred to by others as “the Cadetes
de Linares.” Guerrero, April 26 deposition, p. 85.
(6) In 1968, Homero Guerrero and Samuel Zapata
recorded records for Del Valle Productions in which they
were identified as “Los Cadetes de Linares.” Guerrero,
June 21 deposition, pp. 11 and 22 and Ex. 9 and 10;
Guerrero, April 26 deposition, p. 45 and Ex. 5.
(7) These records were sold in the United States.
Guerrero, June 21 deposition, pp. 23 and 57-58.
(8) From 1974 until 1982, Homero Guerrero and
Guadalupe (a.k.a. Lupe) Tijerina made 15 recordings for
opposer Ramex Records under the name “Los Cadetes de
Linares.” Guerrero, April 26 deposition, p. 36; Garza
deposition, p. 31 and Ex. 4.
(9) Homero Guerrero and Lupe Tijerina signed an
Artist Contract with Ramex Records sometime prior to July
26, 1977. Garza deposition, pp. 100-101 and 104 and
Garza Ex. 5, 6, and 15.
(10) Paragraph 7(a) of this agreement permitted
opposer to use the name “Los Cadetes de Linares” in
“advertising, trade and promotion in connection with” the
recordings made pursuant to the agreement. Garza Ex. 15.

should only be held to have introduced the part of it that he
Opposition No. 111,215
6
(11) Ramex sold “Los Cadetes de Linares” recordings
made during the years 1974 to 1982 throughout the United
States and Mexico. Garza Deposition, p. 39.
(12) Ramex continues to sell recordings of Homero
Guerrero and Lupe Tijerina under the mark “Los Cadetes de
Linares” in the United States and Mexico. Garza
Deposition, p. 39.
(13) On July 26, 1977, Homero Guerrero and Lupe
Tijerina signed a document containing the following
statement: “we Homero Guerrero and Guadalupe Tijerina,
‘members of the Norteno6 (Northern) Musical group: LOS
CADETES DE LINARES,” authorize Mr. Emilio V. Garza, sole
owner of RAMEX RECORDS, CO., to register in his own name,
or in the name of his company, our Group with the
Secretary of Public Education of the Mexican Republic, as
well as in any country where our music has acceptance.”
Garza Ex. 5 and 6.
(14) Homero Guerrero and Lupe Tijerina also appeared
in 17 movies as “Los Cadetes De Linares.” Guerrero,
April 26 deposition, p. 60.

has had translated for the jury”).
6 The original language of this document is in Spanish. The
translator noted that Norteno refers to music originating from
the northern part of the Republic of Mexico.
Opposition No. 111,215
7
(15) Applicant did not participate in the 1968 Del
Valle recordings with Homero Guerrero and Samuel Zapata.
Guerrero, April 26 deposition, p. 45.
(16) Applicant did not participate in the Ramex
recordings with his brother, Homero Guerrero, and Lupe
Tijerina. Guerrero, April 26 deposition, pp. 36-37;
Guerrero, June 21 deposition, p. 57.
(17) There are no documents of any contractual
agreements between applicant and either Homero Guerrero
or Lupe Tijerina recognizing any ownership by applicant
of the mark “Los Cadetes de Linares.” Guerrero, April 26
deposition, p. 68.
(18) In February 1982, Homero Guerrero died in an
auto accident. Guerrero, April 26 deposition, p. 14.
(19) Within one year of Homero’s death, Rosendo
Cantu replaced Homero Guerrero, and Rosendo Cantu’s and
Lupe Tijerina’s first recording was produced at the
beginning of 1983. Garza deposition, pp. 137-138.
(20) Opposer has sold recordings by Lupe Tijerina
and Rosendo Cantu under the mark “Los Cadetes de Linares”
in the United States and Mexico since 1982 through the
date of the deposition. Garza deposition, pp. 43-44.
Opposition No. 111,215
8
(21) Applicant did not begin using the name “Los
Cadetes de Linares” until after his brother’s death in
1982. Guerrero, April 26 deposition, p. 29.
(22) Applicant did not record his first commercial
recording until 1985 in Mexico. This record was not sold
in the United States. Guerrero, April 26 deposition, p.
47.
(23) Applicant subsequently recorded other albums in
Mexico. It is not clear if these recordings were sold in
the United States. Guerrero, April 26 deposition, pp.
48-49 (“Q. Was it sold in the United States? A. No. I
don’t know”).
(24) Applicant did not perform in the United States
any earlier that 1988. Guerrero, June 21 deposition, pp.
58-60.
(25) After Homero Guerrero’s death, opposer has
continued to produce records up to the date of the
deposition under the mark “Los Cadetes de Linares” with
Rosendo Cantu and others substituted for the late Homero
Guerrero. Garza deposition, p. 43.
(26) Rosendo Cantu performed with the group “Los
Cadetes de Linares” from the end of 1982 or early 1983 to
1991 and then returned to the group around 1996. Garza
deposition, p. 163.
Opposition No. 111,215
9
(27) Los Cadetes de Linares recordings produced by
opposer were sold in both the United States and Mexico.
Garza deposition, p. 44.
(28) Opposer has produced approximately 25 albums
under the mark “Los Cadetes de Linares” since the death
of Homero Guerrero. Garza deposition, p. 44 and Ex. 4.
(29) Both opposer and applicant have been aware of
each other’s use of the mark “Los Cadetes de Linares”
since at least 1991. Guerrero, June 21 deposition, pp.
60-62.
(30) “Los Cadetes de Linares” or variations of that
name are used by artists other than opposer and
applicant. Homero Guerrero’s son performs under the name
“Los Cadetes de Linares of Homero, Jr.” and distributes
recordings through a major distributor of records in the
United States (BMG). Garza deposition, pp. 89 and 144
and Ex. 10 and 11.7 Applicant has admitted that “there
are many groups that go by Cadetes de Linares.”
Guerrero, April 26 deposition, p. 93. Opposer
acknowledges that “[t]here are other groups that are
using the name Cadetes or the name Nuevos Cadetes de
Linares.” Garza deposition, p. 68. See also Garza

7 In response to an interrogatory, opposer has indicated that:
“Ramex Records has granted a license to the son of Homero
Guerrero to use the mark.” Garza Ex. 20, p. 15.
Opposition No. 111,215
10
deposition, pp. 81-82 and Ex. 9 (Recording entitled
“Rosendo Cantú y Los Cadetes de Linares”); Garza
deposition, p. 76 (Chewy Vega, a former member of “Los
Cadetes de Linares” continued to perform after he left
Ramex using the name “Cadetes de Linares”).
(31) Opposer has never filed a lawsuit or sent a
“cease and desist” letter to any third party concerning
the unauthorized use of the words “Los Cadetes de
Linares.” Garza deposition, p. 100).
Standing
“Applicant does not dispute that under the liberal
rules of the Trial Board, Ramex has standing to oppose
the pending application.” Applicant’s Br. at 16. We
agree. However, applicant further argues that the
opposition “must fail since Ramex has no proprietary
interest in the mark.” Id. To the extent that this is
another way to attack opposer’s standing to bring this
proceeding, we will briefly discuss the standing issue.
We will discuss the specific issue of whether opposer
must have a proprietary interest to prevail in this
proceeding in the priority section of the opinion.
Opposer’s evidence demonstrates that it has been
producing recordings since 1974 for a group composed of
various artists called “Los Cadetes de Linares.” Garza
Opposition No. 111,215
11
deposition, pp. 18, 39, and 43 and Ex. 4. Furthermore,
opposer has introduced evidence that in 1977 the members
of the group at that time permitted the registration of
the name “Los Cadetes de Linares” in the name of Mr.
Garza or his company, opposer. Garza Exhibits 5 and 6.
An opposer must have “a ‘real interest’ in the
outcome of a proceeding in order to have standing.”
Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025
(Fed. Cir. 1999). “To establish a reasonable basis for a
belief that one is damaged by the registration sought to
be cancelled, a petition may assert a likelihood of
confusion which is not wholly without merit.” Lipton
Industries v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ
185, 189 (CCPA 1982).8 Opposer’s evidence that it has
either been assigned the mark or that it produces and
distributes recordings for a group named “Los Cadetes de
Linares” in the United States since 1974 establishes
opposer’s standing to bring this opposition proceeding.
SGA's claims of priority of use, coupled with its
pleading of likelihood of confusion, constitute a
legally sufficient pleading of SGA's claim that it
has a real interest in the proceeding and,
therefore, standing to pursue the opposition. See
Lipton Industries, Inc. v. Ralston Purina Co., 670
F.2d 1024, 213 USPQ 185 (CCPA 1982). This is so

8 Because of the linguistic and functional similarities of the
opposition and cancellation provisions of the Lanham Act, “we
construe the requirements of those two sections of the Lanham
Act consistently.” Ritchie, 50 USPQ2d at 1025 n. 2.
Opposition No. 111,215
12
even if SGA's use of the two pleaded marks is as a
licensee or distributor for WSC, for a plaintiff may
have standing in a case brought under Section 2(d)
of the Trademark Act even if it does not claim
ownership of the assertedly similar mark, or the
right to control its use. See J.L. Prescott Co. v.
Blue Cross Laboratories (Inc.), 216 USPQ 1127 (TTAB
1982) (opposer that had assigned mark and obtained
exclusive license from assignee held to have
standing); See also, Universal Oil Products Co. v.
Rexall Drug and Chemical Co., 463 F.2d 1122, 174
USPQ 458 (CCPA 1972); BRT Holdings Inc. v. Homeway
Inc., 4 USPQ2d 1952 (TTAB 1987); Chemical New York
Corp. v. Conmar Form Systems, Inc., 1 USPQ2d 1139
(TTAB 1986); and Yasutomo & Co. v. Commercial Ball
Pen Co., Inc., 184 USPQ 60 (TTAB 1974).

William & Scott Co. v. Earl's Restaurants Ltd., 30 USPQ2d
1870, 1873 n.2 (TTAB 1994).
Opposer’s Objections
Opposer has objected to the testimony of applicant’s
expert witness, Michael Perlstein. Opposer seeks to have
the testimony excluded because applicant failed to
identify the witness in response to a discovery request.
Furthermore, opposer argues that the testimony should be
excluded because, when the witness was identified in the
notice of deposition, “no address was given in the notice
and there was not a general description sufficient to
identify the witness or the particular class or group to
which the witness belonged.” Motion to Strike, p. 8.
Applicant argues that “substantial justification existed
for the failure to disclose Mr. Perlstein’s testimony
under Rule 26, since it was not until the testimony of
Opposition No. 111,215
13
Mr. Garza that the need to provide rebuttal testimony
arose. Based upon the surprise and outlandish position
taken by Ramex records in this proceeding, applicant has
a right to rebut this testimony in its [sic] own case.”
Opposition to Motion to Strike, p. 7. In effect,
applicant argues that Mr. Garza’s testimony was
surprising when he testified that the paper Homero
Guerrero and Lupe Tijerina signed in 1977 authorizing Mr.
Garza or opposer to register their group’s name resulted
in their becoming employees of opposer who could be fired
or replaced.
The timing and circumstances of applicant’s
disclosure of his witness to opposer does not support
opposer’s request that the testimony of the witness be
excluded. The record indicates that applicant did not
engage his expert witness until after opposer’s witness,
Mr. Garza, testified. This provides support for
applicant’s explanation that the need for and decision to
have Mr. Perlstein testify as an expert witness was not
made until opposer’s testimony. This also is an
acceptable explanation as to why the witness was not
identified during discovery.
Similarly, opposer’s objections as to the formal
requests of the notice of taking testimony are
Opposition No. 111,215
14
procedural. Opposer appeared at the deposition and
cross-examined the witness and it does not point to any
material prejudice as a result of these objections. In a
case where there were allegations of inadequate notice
concerning the testimony of a witness, the Board
permitted the testimony.
In this regard, our reading of the record fails to
show any material prejudice to registrant since it
did receive advance oral notice that there would be
a substitute for the Beech Aircraft employee
originally named as a witness and the substitute
would also be a Beech employee (whose name was not
made known until the day of the deposition).
Registrant had a full opportunity for cross-
examination of the witness and appears to have
exercised it. Of course, it could have requested an
extension or postponement if it felt that the
circumstances of the substitution left it
inadequately prepared to deal with the evidence of
petitioner's use of the term LIGHTNING which the
Beech employees (original and substitute) were being
called upon to document”).

Beech Aircraft Corporation v. Lightning Aircraft Company
Inc., 1 USPQ2d 1290, 1291 (TTAB 1986).
Similarly, here we find that the record fails to
show any material prejudice and opposer’s motion to
exclude the testimony of Mr. Perlstein is denied.9

9 Opposer’s allegations about the witness’s lack of knowledge of
“Spanish artists and Spanish record companies” (Response to
opposition to motion to strike, p. 5) and the office-sharing
arrangements between the witness and applicant’s counsel go to
the weight of the testimony and not its admissibility. DiCarlo
v. KellerLadders, Inc., 211 F.3d 465, 468 (8th Cir. 2000)
(citations and internal quotation marks omitted) (“Determining
the credibility of a witness is the jury's province, whether the
Opposition No. 111,215
15
There are two other evidentiary matters. First,
opposer in its reply brief raises several hearsay
objections to applicant’s exhibits. Inasmuch as these
objections were not made in its opening brief, we view
any objection as being waived. The probative weight to
be accorded this evidence is a separate matter. Second,
applicant’s unopposed motion to take judicial notice of a
stipulated judgment and complaint from the Central
District of California is granted.
Likelihood of Confusion
Applicant has applied to register the mark LOS
CADETES DE LINARES in block letters for a series of pre-
recorded cassettes and compact discs containing music.
Opposer has introduced evidence that since 1974 it has
produced musical recordings under the mark LOS CADETES DE
LINARES and that these recordings have been sold
throughout the United
States.10 In effect, applicant and opposer are using
virtually identical marks on the identical goods in the
same geographic areas. There is no evidence of any

witness is lay or expert … An expert witness's bias goes to the
weight, not the admissibility of the testimony, and should be
brought out on cross-examination").

10 Names of musical groups that appear on a series of different
recordings can function as trademarks. In re Polar Music
Opposition No. 111,215
16
differences in the channels of trade or purchasers. Both
applicant’s and opposer’s goods are marketed with Spanish
language literature and the songs sometimes even have the
same titles. Guerrero Ex. 34 and Garza Ex. 4
(“Pistoleros Famosos” and “La Venganza de Maria”).
Therefore, under these circumstances, confusion is
likely. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973) (Setting out thirteen
factors to consider in likelihood of confusion
determinations).
Priority
Because the marks and the goods are virtually
identical, the critical issue in this case is priority.
Applicant claims to have used the mark LOS CADETES DE
LINARES on a series of prerecorded cassettes and compact
discs containing music in a type of commerce that can be
regulated by Congress in 1986. There is virtually no
evidence to support the first use of the mark in commerce
by applicant in that year for those goods.11 Applicant

International AB, 714 F.2d 1567, 221 USPQ 315, 318 (Fed. Cir.
1983).

11 We cannot accept applicant’s argument that “LOS CADETES DE
LINARES was a family business, with rights in the name remaining
with the two brothers who originated the business.” Applicant’s
Br. at 20. Even applicant admits that when he played with his
brother in Mexico, they were known simply as the Cadetes.
Guerrero, April 26 deposition, pp. 24 and 29. Applicant had
Opposition No. 111,215
17
admitted that he did not use the mark “Los Cadetes de
Linares” until after his brother’s death in 1982.
Guerrero, April 26 deposition, p. 28. His first
recording anywhere was not made until 1985. Guerrero,
April 26 deposition, p. 47 (“Q. The first record that
you ever recorded was in 1985. Is that your testimony?
A. Yes.”). Applicant acknowledges that the record was
not sold in the United States. Id. (“Q. Okay. Was it
sold in the United States? A. No. In Mexico.”).
Applicant’s next record was recorded in 1986. Guerrero,
April 26 deposition, p. 48. Applicant does not remember
the title of that record. Id. He also could not state
that the record was sold in the United States. Guerrero,
April 26 deposition, p. 49 (“Q. Was it sold in the
United States? A. No. I don’t know”). His first

little material involvement with his brother’s group after he
left other than to help buy some equipment. Garza, April 26
deposition, p. 87. Applicant had no contractual agreements with
his brother Homero, Lupe Tijerina, or Ramex showing an ownership
interest in the mark. Guerrero, April 26 deposition, p. 68.
Applicant also had no document written by his brother saying
applicant could have the mark if he died and there is no
evidence of a will or any legal document showing applicant
acquired the mark by inheritance. Guerrero, April 26
deposition, p. 80. Therefore, the record does not support
applicant’s argument that he somehow was a silent partner with
his brother in the group “Los Cadetes de Linares” for the
twenty-year period between when he left the group “Cadetes” and
his brother’s death in 1982. During that time his brother
recorded with two record companies and with two different
musicians. There is little, if any, evidence from that period
to show that applicant was recognized as a member of the group
or an owner of the mark “Los Cadetes de Linares.”
Opposition No. 111,215
18
musical performance in the United States was not earlier
than 1988. Guerrero, June 26 deposition, pp. 58-60.
An applicant in an opposition proceeding is not
required to prove use in order to prevail, but without
evidence of prior use, an applicant is limited to the
application’s filing date. Columbian Steel Tank Company
v.
Union Tank and Supply Company, 277 F.2d 192, 125 USPQ
406, 407 (CCPA 1960) (“Appellee's application alleges
February 1, 1946 as the date of first use of its mark but
in the absence of testimony appellee must be restricted
to its filing date of June 29, 1956, as the board
correctly held”).12 However, applicant has submitted
evidence that one of his records with GAS Records and
others with Zacatecas Records were released in the United

12 Opposer has also argued that “knowing and material
misrepresentations relating to Applicant’s dates of use, both
anywhere and in commerce, further support a refusal to
register.” Opposer’s Br. at 46, n.3. A fraud claim must be
proved “to the hilt.” Stocker v. General Conference Corp. of
Seventh-Day Adventists, 39 USPQ2d 1385, 1391 (TTAB 1989). Here,
we cannot find that fraud has been proven. One of the elements
of fraud is that the knowingly false misrepresentation must be
material. An erroneous date of first use could not result in
the allowance of an application that would otherwise not be
allowed. The “date of use alleged by applicant in its
application, even if false, cannot be said to constitute fraud
on the Office.” Georgia-Southern Oil Inc. v. Richardson, 16
USPQ2d 1723, 1726-27 (TTAB 1990). For examination purposes, a
mark which is the subject of a Section 1(a) application must
have been used in commerce only as of the filing date of the
application. As discussed herein, opposer has not shown that
Opposition No. 111,215
19
States beginning in 1996. Guerrero, June 21 deposition,
pp. 47-53 and Ex. 34-43.13 Accordingly, we find that
applicant made use of the mark in commerce on records at
least as early as 1996. Even if the record did not
support when applicant first used his mark for pre-
recorded cassettes and compact discs containing music in
a type of commerce that Congress can regulate, applicant
would still be able to rely on the filing date of his
application as his date of first use in commerce.
Opposer, on the other hand, has established that it
has been producing recordings under the mark “Los Cadetes
de Linares” since 1974. See Garza deposition, pp. 39 and
43-44, Ex. 4, 8, and 21, pp. 9-10. These records have
been sold in the United States. Garza deposition, pp.
43-44. Opposer called as its only witness its president,
Emilio V. Garza. “[O]ral testimony, if sufficiently
probative, is normally satisfactory to establish priority
of use in a trademark proceeding.” Powermatics, Inc. v.
Globe Roofing

applicant’s use in 1996 was subsequent to applicant’s filing
date.
13 We note that applicant in his deposition states that “here is
a company in the United States in 1986” apparently referring to
the recording in Ex. 37. However, Exhibit 37 has a copyright
date of 1996 so apparently the reference should be to 1996
instead of 1986.
Opposition No. 111,215
20
Products Co., 341 F.2d 127, 144 USPQ 430, 432 (CCPA
1965).
Such testimony should “not be characterized by
contradictions, inconsistencies and indefiniteness but
should carry with it conviction of its accuracy and
applicability.” B.R. Baker Co. v. Lebow Bros., 150 F.2d
580, 66 USPQ 232, 236 (CCPA 1945). National Blank Book
Co. v. Leather Crafted Products, 218 USPQ 827, 828 (TTAB
1983) (“It was incumbent upon opposer in attempting to
prove the date of first use of 1968 either to have a
witness testify from personal knowledge that the mark
‘ESP’ was in use as of 1968 or, if no such person was
still employed by opposer, to prove the date of first use
by authenticating business records”). Besides opposer’s
president’s testimony, applicant acknowledges that
opposer produced recordings by his brother and Lupe
Tijerina under the name “Los Cadetes de Linares” between
1974 and 1982 and that opposer continued “issuing records
under the name Los Cadetes de Linares” from his brother’s
death until the present time. Guerrero, June 21
deposition, pp. 65-66. This record supports a
determination that opposer has been using the mark prior
Opposition No. 111,215
21
to even applicant’s earliest claimed date of first use of
the mark in commerce (1986).14
The only remaining question concerns whether
opposer’s status somehow negated his earlier use because
this use was
either that of an infringer or a party without any rights
in
the mark. We do not agree with applicant that opposer
was an infringer or a distributor without any rights in
the mark. We have already determined that a distributor
or licensee has standing to bring an opposition
proceeding. Now we must decide whether opposer may
prevail on its claim of likelihood of confusion and
priority. The issue is whether opposer has superior
rights to the rights of applicant, not to any third
party. Marshak v. Sheppard, 666 F. Supp. 590, 3 USPQ2d
1829, 1836 (S.D.N.Y. 1987) (footnote omitted):
Sheppard further argues that Marshak's assignors
could obtain no rights in the name "The Drifters"
because, upon joining Treadwell's Drifters, each
signed employment contracts in which they waived all
such rights. These arguments miss the mark,
however, because they could only accrue, if at all,
to Treadwell's benefit, not to Sheppard's. Sheppard
argues that the rights to "The Drifters" were lodged
in the group's manager, Treadwell, and the
corporation he set up to control the group's assets.
In this case, however, when only Marshak's and

14 As discussed previously, the record supports a much later
date of first use in commerce for applicant.
Opposition No. 111,215
22
Sheppard's rights are at stake, these arguments are
irrelevant.

We do not need to determine whether the paper (Garza
Ex. 5 and 6) in which Homero Guerrero and Lupe Tijerina15
authorized Mr. Garza or opposer to “register in his own
name, or in the name of his company, our Group” was a
valid assignment of all rights, title and interest in the
mark from the musicians to opposer. Nor do we have to
determine what rights opposer may have vis-à-vis third
parties concerning the use of the mark or even if opposer
is entitled to register the mark in its own name.
First, we start by noting that it has been
recognized that the manager and promoter of a group may
be the owner of the group’s mark. See Rick v. Buchansky,
609 F. Supp. 1522, 226 USPQ 449, 456 (S.D.N.Y. 1985).
Also, when a member leaves a group, it has been held that
“he took no rights in the service mark with him, Rather,
the mark remained with the original group. Paul Robi,
therefore, had nothing to assign to [his wife]. Reed who
founded the group and is the only person who has remained
and performed with it from its inception, retains the
right to use of the service mark.” Robi v. Reed, 173

15 Neither side called Lupe Tijerina as a witness in this
proceeding. Mr. Garza testified that “[t]he name belonged to
both.” Garza deposition, p. 120. Applicant points out that
Opposition No. 111,215
23
F.3d 736, 50 USPQ2d 1315, 1317 (9th Cir. 1999).
Similarly, when Homero Guerrero died there is no evidence
that any rights in the mark were transferred by way of
inheritance. On the other hand, opposer has been
involved with the group “Los Cadetes de Linares” for more
than a quarter of a century. Opposer has produced
recordings since 1974 for the group known as “Los Cadetes
de Linares” and it has continued to produce recordings
for this group. One of the agreements between Homero
Guerrero and Lupe Tijerina and Ramex Records contains the
following provision:
You agree to cooperate fully in any controversies or
litigation which may be required to prevent the
distribution of records not authorized pursuant to
the terms of this agreement or to prevent the use of
your name, likeness or biographical material in
contravention of the rights granted to Company
hereunder. Company may take such steps or institute
such legal proceedings in Company’s name or in the
name of you and Company jointly, as Company may deem
suitable.

Garza. Ex. 15, ¶ 8.
Opposer produced more than one million recordings of
the group “Los Cadetes de Linares” between 1974 and 1986.
Garza deposition, p. 50. After the death of Homero
Guerrero in 1982, opposer continued to distribute
recordings for the group “Los Cadetes de Linares” with

this testimony resulted after the witness conferred with his
counsel. Applicant’s Br. at 23 n. 4.
Opposition No. 111,215
24
the remaining member, Lupe Tijerina, and other musicians.
Throughout this period, opposer has been active in the
business affairs of the group. Garza deposition, pp. 11-
15. Opposer provides artistic directors “who are the
ones who qualify – who approve or disapprove of what’s
going to be recorded to make sure that we obtain what the
Ramex label wants.” Id. at 11. Opposer has “control
over the members of each group.” Id. at 14. Clearly,
regardless of whether opposer is the owner of the mark,
it is not an intermeddler and it has a real interest in
preventing applicant from obtaining a registration for
his mark.
Next, we look at whether this interest is sufficient
to prevail in this proceeding. There is no requirement
that an opposer own or use the mark in order to prevent
another party from using the mark or even that it have a
proprietary interest in the mark. See National Cable
Television Association Inc. v. American Cinema Editors
Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1428 (Fed. Cir.
1991) (“Moreover, even without use directly by the
claimant of the rights, the courts and the Board
generally have recognized that abbreviations and
nicknames of trademarks or names used only by the public
Opposition No. 111,215
25
give rise to protectable rights in the owners of the
trade name or mark which the public modified”).
The Federal Circuit has expressly held that:
Ordinarily, a person should not be heard on a third
party's rights, that is, allowed to sue to vindicate
the rights of another. Here, however, the trade
association convincingly established that it was not
a mere intermeddler in asserting a claim predicated
on a third party's name and had sound reasons for
fearing damage to itself and its members if
Ullenberg's mark were registered. In sum, JVC
asserted its own claim which happened to involve the
proprietary rights of a third party.

Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 853
F.2d 888, 7 USPQ2d 1628, 1631 (Fed. Cir. 1988).
In Jewelers Vigilance, the Federal Circuit
specifically rejected the applicant’s argument that Otto
Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209
USPQ 40 (CCPA 1981), required that the opposer must have
a proprietary interest in a mark in order to prevail
under Section 2(d). “The Otto Roth analysis does mean
that someone must have proprietary rights in the name
DEBEERS, but such rights need not reside in the opposer
if the opposer otherwise has standing to bring the
opposition.” Id. at 1632.
In Jewelers Vigilance, a third party who was not
using the mark prevailed in an opposition proceeding.
The admissions and undisputed evidence of record
support only a conclusion that the mark Ullenberg
seeks to register for diamonds is likely to cause
Opposition No. 111,215
26
confusion with the admittedly famous mark DEBEERS.
No dispute is raised with respect to the alleged
fact that the name DEBEERS has an established trade
identity in the United States in connection with
diamonds. We note particularly the factors of the
fame of DEBEERS as a source for diamonds, the
unusual nature of the name, and the identity of
Ullenberg's goods with those associated with DBCM.
The record also conclusively establishes that JVC
and its members will be damaged if such confusion
occurs.

Id. at 1633.
As the licensee and distributor of recordings for a
musical group, opposer, at a minimum, would be damaged if
others used the virtually identical name for the
recordings of a different group. Garza deposition, p. 67
(The use of the name “Los Cadetes de Linares” by both
opposer and applicant “has created confusion among our
clients and our distributors. They wonder, ‘Well, which
is which?’”). Under the original agreement, opposer is
at least a licensee that had the right to bring this
action to protect the name of the group. See Garza Ex.
15, ¶ 8. Nothing in the record indicates that it no
longer has the right to protect the name of the group
“Los Cadetes de Linares.”
In addition, opposer has been producing and
distributing these recordings prior to applicant’s first
use of the mark in commerce. It is undisputed that
Homero Guerrero and Lupe Tijerina were the members of the
Opposition No. 111,215
27
group “Los Cadetes de Linares.” Opposer continues to
produce recordings with the only surviving member of the
group who recorded with Homero Guerrero from 1974. It is
difficult to see how opposer can be an infringer of any
rights applicant may have inasmuch as applicant’s use
postdates opposer’s. The rights to the name “Los Cadetes
de Linares” originally belonged to the group consisting
of Homero Guerrero and Lupe Tijerina. These rights were
subsequently either assigned to opposer or remained with
the reconstituted group.
Under Jewelers Vigilance, opposer must show that
someone has proprietary rights in the mark and that it
will be damaged by the applicant’s registration of its
mark. Here, either opposer owns the rights to the mark
or the group whose recordings opposer distributes owns
the mark. In either case, opposer will be damaged if
applicant is permitted to register the virtually
identical mark for the same goods. Therefore, we
conclude that opposer has established its priority
sufficient to prevail on the ground of likelihood of
confusion.

Decision: The opposition is sustained and
registration to applicant is refused.