2018 WL 3529479, Opp. No. 91200616, Canc. No. 92053622 (T.T.A.B. July 19, 2018)
After a seven-year battle before the Trademark Trial and Appeal Board of the U.S. Patent & Trademark Office, the Firm prevailed on behalf of client UMG Recordings, Inc. (“UMG”)—owner of the JACKSON 5 trademark—in its challenge to an attempt to register the mark J5 for clothing and related merchandise by Siggy Music, Inc., a company owned by original Jackson 5 musical group member Sigmund Esco “Jackie” Jackson. In a lengthy decision dated July 19, 2018, the Board confirmed that UMG, as successor to Motown Records, owned the JACKSON 5 trademark as well as its functional equivalents, including the short form J5. It further held that UMG’s JACKSON 5 trademark is “famous” and “commercially strong” and that Siggy Music’s use and registration of J5 would likely cause confusion in the marketplace.