TTAB Nixes Mexican Band Grupo Pegasso Trademark Cancellation Bid

October 24, 2012, by Mandour & Associates, APC

Los Angeles – The U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board recently shut the door on an attempt to cancel the federal registration for the trademark Grupo Pegasso, the name of a defunct Mexican band, rejecting the petitioner music company’s claims of fraud on the PTO.

OTH Enterprises Inc., which does business as Frontera Music, filed a petition to cancel Federico Estevan Vasquez’s federal registration for the trademark Grupo Pegasso and a related logo design. The Grupo Pegasso registration encompasses musical sound recordings and entertainment services, specifically live performances by a musical group.

Frontera Music alleged that it has priority of use for the trademark, as well as claims of likelihood of confusion, abandonment of the registered trademark, non-use and fraud in the procurement of the registration.

Vasquez, a member of the Grupo Pegasso band, left the group in 1985 and started a different band under the name Pegasso del Pollo Estevan, to make records sold only in Mexico.

According to Frontera, Vasquez’s alleged fraudulent conduct includes asserting that the registered trademark was in use in the U.S., and his submission of proof of his use of the trademark in commerce containing images of albums that were digitally altered.

Vasquez denied Frontera’s allegations, and said he has continuously used the trademark in interstate commerce in the U.S. He never granted permission to Frontera to use the trademark, and Frontera’s assignor is a former employee of Vasquez who is barred from using the trademark in Mexico, he said.

In view of the fact that Frontera’s predecessors in interest did not own any rights in the Grupo Pegasso trademark, Frontera could not acquire rights from any such predecessors prior to Vasquez’s first use, so Frontera’s priority and likelihood of confusion claims fail, the TTAB said.

Because Vasquez has continuously used the registered trademark in commerce since as least as early as the filing date of the application for registration, Frontera has not met its burden of proving prior use of the Grupo Pegasso trademark or abandonment of the mark, according to the board.

Frontera also failed to prove its allegations of fraud, since it did not provide conclusive evidence that Vasquez made false statements or submitted false specimens of evidence in support of its application, the board ruled. Even assuming that Vasquez’s statements were false, Frontera has not established that registrant submitted material statements with intent to defraud the PTO, it said.