(CN) – Cab Calloway’s family claims The Cab Calloway Orchestra is mooching off the late great hipster’s name. The jazz singer’s widow and children want a federal judge to overturn a decision by the Trademark Trial and Appeal Board that allowed Christopher Brooks to use the name in performances and recordings.
Creative Arts by Calloway LLC, representing Calloway’s widow, Zulme M. Calloway, and their daughters, Cabella Calloway Langsam and Chris Calloway, sued Brooks and The Cab Calloway Orchestra in Manhattan Federal Court under the Lanham Act.
Cabell “Cab” Calloway died in 1994 after gaining renown as a dancer, musician, bandleader and composer for nearly seven decades. He emerged as a jazz luminary in 1930 after he and his band filled in for the Duke Ellington Orchestra at the Cotton Club, then Harlem’s premier nightclub.
Calloway was the inspiration for George Gershwin’s character Sportin’ Life, in “Porgy and Bess.” The call-and-response tune from that opera, “It Ain’t Necessarily So,” was based on Calloway’s call-and-response act as bandleader. Calloway was one of the first big-band leaders to fill his orchestra with young musicians who would create the style known as be-bop, and he followed his role in “Porgy and Bess” with other star turns on Broadway, in “The Pajama Game,” and “Hello, Dolly.”
He also wrote an autobiography, “Of Minnie the Moocher and Me,” which includes Rules for Hipsters and a quiz on proper hipster deportment.
To younger generations, Calloway is best known for his role in the movie “The Blues Brothers,” in which he sang his signature song, “Minnie the Moocher.”
Upon his death, Calloway bequeathed all his property to his wife, who formed Creative Arts by Calloway LLC to preserve his legacy and manage his intellectual property.
In July 1999, the plaintiff applied to register the mark Cab Calloway with the U.S. Patent and Trademark Office, and also filed an Intent to Use application.
Through Creative Arts by Calloway, the family planned to market a variety of goods and services, including the distribution of recorded music, drama, comedy and variety shows, production and distribution of live concerts, and production of audio recordings and videos.
Christopher Brooks filed his notice of opposition to the intent to use application in April 2004, alleging that for at least 6 months before the application was filed, he had been using the Cab Calloway Orchestra trademark in the United States for live musical performances.
Brooks also asserted that he had sold audio and video recordings of the Orchestra’s performances under the same mark.
In his opposition, Brooks contended that the family’s use of the Cab Calloway mark would “cause confusion among members of the purchasing public,” leading the public to believe that the services offered under the plaintiff’s mark emanated from or was otherwise sponsored by or endorsed by the defendant.
The Trademark Trial and Appeal Board found in Brooks’ favor in 2009, based on his prior use of the mark and the trade name The Cab Calloway Orchestra.
In its ruling, appended to this complaint, the U.S. Patent and Trademark Office found that under common law, personal names must have a secondary meaning to warrant trademark protection supporting registration.
The board found that while surnames require a showing of secondary meaning under the Lanham Act, personal or full names do not. As a result, the board rejected Creative Arts’ argument that Brooks had failed to establish secondary meaning and that to rule otherwise would conflict with the basic underpinning of trademark law, which is that rights are obtained through use, and not by being the first to file an application.
The Calloways say the trademark board’s decision was “erroneous.” They want it reversed.
Creative Arts by Calloway is represented by the Ivan Saperstein with Saperstein & Crowell.