Some of our readers have asked how Gail Zappa can even apply for a trademark of Don van Vliet’s moniker, CAPTAIN BEEFHEART, and want to know whether something can be done now to prevent the mark from registering.
The Trademark office (PTO) doesn’t require an applicant to show that s/he has the right to register the mark where the name/mark is not a living person. (In the case of a living person, the applicant needs written consent from that person consenting to registration.) Instead, the PTO relies on the applicant’s sworn declarations. Fraudulent or misleading claims are a basis to cancel a trademark registration.
Since the CAPTAIN BEEFHEART mark was already “published for opposition” on April 23rd and no one opposed it within the requisite 30-day period, there is little that can be done until the mark is registered. During the application process, “adversarial” arguments — for example, that the opposer has a signed contract from Don van Vliet that allows the opposer to use the name “Captain Beefheart” in perpetuity in connection with the sale and exploitation of Mr. van Vliet’s sound recordings — are ignored by the PTO and the Commissioner of Trademarks. What impedes registration are more technical matters related to trademarks: a likelihood of confusion between the applied-for mark and a prior federally registered trademark; a right of priority asserted by party who filed for the same or similar trademark after the applicant filed for it; pending litigation against the applicant for trademark infringement related to the applied-for mark; and claims that the applied-for mark is generic or merely descriptive of the goods and services for which trademark registration is sought.
Once the trademark is registered, however, it’s open season until the mark is incontestable, essentially 5 years after the registration issues.”. Affected parties — including the Estate of Don van Vliet, record companies and film companies that have produced Captain Beefheart sound and audiovisual recordings — should, if they have just cause, bring a cancellation action either in federal court or the Trademark Trial and Appeal Board (TTAB) as expeditiously as possible. The fact that no one opposed registration during the review period is not fatal to a later cancellation action by any means. (The lack of opposition only indicates that no one was watching the PTO publications, undoubtedly because no one expected that anyone would apply for a CAPTAIN BEEFHEART registration.) Affected parties may also contemplate putting Ms. Zappa on notice now that they will seek cancellation if she goes ahead with the registration. Whether the mark will be cancelled, of course, depends upon the extent and source of Ms. Zappa’s rights over the actual rights of those seeking cancellation and their legal and financial ability to assert those rights.