All Questions in Trademark Disputes >> Apple Swing, Corporate name/Trademark rights

Apple Swing, Corporate name/Trademark rights

Posted by . updated on 11/11/2009
For the past fifteen years a group of individuals has been performing as an unlicensed, unincorporated, non DBA music group under the umbrella of a parent NPO, the "NOCB". This unofficial group would perform under the name of "Apple Swing Orchestra" however all funds and checks would be deposited by the NOCB. The individuals performing in the Apple Swing Orchestra never signed a contract of any sort and were never paid for their services.

After many years of unofficially operating under a parent NPO, 90% of the membership including the creator of the name and director decided it was time to take control of its own destiny and cut off all ties with the NOCB. We registered ourselves as the "Apple Swing Orchestra, Inc." with the state and have filed for trademark rights with the USPTO. Since making our official announcement to the NOCB and performing several gigs under our name the "Apple Swing Orchestra" for weeks, the NOCB has recently sent us a letter from their lawyers with several demands.

Quote
The NOCB is demanding you immediately change the name of your corporation. The mere fact that the Secretary of State will incorporate a name does not make it legal or moral. The Apple Swing Orchestra has been a part of the NOCB for many, many years. It has its own identity and has developed its own following and reputation, totally separate from its parent, the NOCB. You have no right to capitalize on their name and reuptation by forming a new entity with the same name, regardless of the fact that the Secretary of State allowed the incorporation.


So, who can lay claim to the name Apple Swing Orchestra?

On our side we have the corporate name, the members, the individual who created the name, the individual who created the logo, the domain name, and the first application for trademark with the USPTO.
On their side they have the parent NPO that cashed the money that the Apple Swing Orchestra generated for years.

If we cannot hold onto the Apple Swing Orchestra name, is it too confusing to perform under the name Apple Swing Band or simply Apple Swing?

[edit] added information regarding trademark application
Answers (4)
 
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Lyza
Although I am not an attorney, I would highly recommend that you enlist the aide of an attorney in this fight.  There might be a number of issues related to the protection of your rights that you will not know, and without counsel, you have a difficult road ahead.  You may also, by yourself, inadvertantly say or respond in a way that will negatively impact your rights.  Good luck to you.
 
 
Dobuya
Thank you lyza. Our members have been discussing this situation and while it seems like we will have to hire an attorney to protect our rights, we have no idea if we would be entering into a fight we've already lost.
 
 
JSonnabend
I think much of the analysis depends on who controlled the services rendered under the mark while the group worked under the auspices of the NOCB and who customers were "hiring" at that time.

- Jeff
 

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