Jackson 5 Tribute Band Trademark Cancelled

Wonderbread 5 v. Gilles, TTAB No. 92052150 (TTAB 6/30/2015).

This case involves a dispute about who owns the band’s name in the wake of the departure of one of the band’s five members.  The band, a Jackson 5 tribute band, filed a petition to cancel a trademark registration obtained by a former member who filed the application for the registration only 3 days after he was fired from the band.  The court found by a preponderance of the evidence that the mark WONDERBREAD 5 was not “personal” to the applicant/departing-band-member (Gilles), or for that matter, any of the band members as individual musicians.  Rather, the mark signified the collective “style and quality” of the group, and the partnership, not the departing band member, controlled those qualities. That is to say, the mark WONDERBREAD 5 identified a Jackson 5 tribute band, not a “particular performer combination.”  Thus, because the consuming public did not associate the mark with a particular member (but rather, a style of tribute band), the applicant did not "own" the mark when he applied for it.  The application was therefore void ab initio, and the registration was cancelled.