Three men recently tried to trademark the Brown Berets "La Causa" patch symbol that has been in use since the 1960s, despite not having any involvement in the original design. They have used the trademark filing to falsely claim they originated the Brown Berets and patch. However, the patch had already been successfully trademarked in the early 1990s by the true originators. The document then discusses a similar trademark dispute regarding "The Marvelettes" name between the original Motown girl group and a tribute band promoter who had been using the name without their permission. A court ruled the tribute band could not establish trademark rights since the original group were the senior users who continued using the name for commercial purposes.

1. Recently, three men sought to trademark the Brown Beret “La Causa” patch
(a symbol in use since the 60s.) Neither of these men were originators of
the “la Causa” patch - nor did they have any part of its’ original design in
the 1960’s.
Still, these men, and the organization they represent have used their filing
of the trademark to make claims that they are the originators of the Brown
Berets, and the “La Causa” patch.
They have since used this filing to threaten other Brown Beret groups with
“legalese,” and have made false claims about being originators of the patch.
What is even more laughable, is that the “La Causa” patch had already been
successfully trademarked in the early 90s:
Please read onward, for more information on “false designation of origin,”
and “senior user” v.s. “junior user” with regard to Intellectual Property, and
Common Law Rights.

2. The Marvelettes Trademark Dispute:
Junior User Cannot Develop Common Law Rights
As many fans of Motown music might know, The Marvelettes
were among the most significant all-girl groups of Motown Records
in the early to mid-1960s. Their single ‘Please Mr. Postman’ reached
the number-one position on the Billboard Hot 100 pop singles chart,
was the first number-one singles recorded by an all-female vocal
group, and the first by a Motown recording act. In the 1970s,
promoter Larry Marshak began using the mark “The Marvelettes”
for groups staging live performances under his production and man-
agement, of which no group included any members of the original
Marvelettes. Marshak’s Marvelettes perform songs originally
recorded by Motown’s Marvelettes and have always consisted of
three female members, whose ages tended to correspond with the
contemporary ages of the original members of The Marvelettes. At
no time prior to or during the show is the audience informed that the
performers are not the original members of the Marvelettes group
which recorded for Motown. Marshak applied for, and received the
trademark for “The Marvelettes” in 1976. The registration for this
trademark lapsed in 2008 at which time Katherine Shaffner and
Gladys Horton, founding members of the Motown group, filed a
joint application with the PTO to register the mark “The
Marvelettes.” During the time between 1976 and 2008, Gladys
Horton had attempted to return to the stage and sought to use the
trademark to promote her appearances, but was threatened with
litigation by Marshak if she were to use the name “Marvelettes” in
association with her performances.

3. In early 2011, Marshak filed a complaint alleging false designation of
origin in violation of the Lanham Act, seeking injunctive and
declaratory relief as well as damages. Horton and Shaffner filed their
answer and counterclaims, alleging false designation of origin,
trademark dilution and tarnishement, common law trademark
infringement, and deceptive acts and practices in violation of New
York General Business Law. On May 11, 2012, the U.S. District Court
granted Shaffner and Horton’s summary judgment on Marshak’s
claim.
Although Marshak had filed the original trademark in 1976, basic
principles of consumer protection embedded in the trademark laws
show that Marshak cannot own the rights to “The Marvelettes” if Mo-
town (and/or original members of Marvelettes) continues to own the
rights in connection with marketing recordings. This is because
Common law holds that “trademark rights develop when goods
bearing the mark are placed in the market and followed by continuous
commercial utilization.” Thus, Motown is the senior user as it was the
first to use the mark for commercial purposes, and because Marshak
quite clearly trades upon the consumer goodwill associated with the
original group’s use of the mark, he cannot assume to have a distinct
right to the trademark. In fact, the court’s opinion writes that Marshaks
presentation actually encourages the audience members to believe that
they are paying to see the original group rather than a tribute band,
stating “The danger of consumer confusion and deception is manifest,
and indeed, has almost certainly been realized.”
“for inherently distinctive marks, ownership is governed by
priority of use. For such marks, the first to use a designation as
a mark in the sale of goods or services is the owner and the
senior user.”

4. In conclusion, the Court held that Marshak cannot establish
ownership rights in the mark because a senior user (Motown) already
owned the mark prior to Marshaks first use of the mark. Motown did
not need to formally register a trademark to own have rights to the
name, as they used it for commercial purposes and it remains used by
its legal owner UMG (Motown’s successor). Shaffner and Horton’s
estate continue to receive royalties for both sales of recordings and
radio plays. Because both Mashrak and UMGs use of the mark rely on
the same source of consumer goodwill (The Marvelettes original
recordings and performances during the 1960s), Mashrak had no
legitimate claim to the Marvelette trademark.
Although the Court did not rule on issues of damages, it seems that
Motown and/ or the representatives of Horton and Shaffner may have
substantial claims for damages against Mashrak for his
wrongful use of the trademark in association with the live
performances he presented of “Marvelettes”. It is surprising, to say the
least, that Motown and UMG (Motown’s successors) did not
contest Mashraks use of the name in connection with his presentation
of “Marvalette” live performances. In any event, this decision clearly
vindicates the rights of Motown (and its successor UMG), Horton and
Schaffner. It is an important reaffirmation of the fact that common
law trademark rights may trump registered trademarks where it can
be shown that the owner of the common law trademark was the senior
user and continued to use the trademark after registration of the
trademark by the junior user. It is also an important decision, because
it reaffirms that the standard for continued use of a trademark (and
avoidance of abandonment) is relatively low “almost any legitimate
ongoing use will avoid abandonment”such as the receipt of royalties
by Horton and Shaffner.