The Rat Pack is . . . Generic! -- Ninth Circuit Affirms Nevada District Court’s Decision that “The Rat Pack” is Generic in connection with “Rat Pack” tribute shows

The title of this blog post could also be entitled “How I won at the Ninth Circuit without doing a thing.” 

On February 16, 2016, the Ninth Circuit Court of Appeals issued its ruling in the appeal that was filed in 2013 by TRP Entertainment, LLC, seeking to overturn the Nevada district court’s 2009 decision which found that the “Rat Pack” was generic and ordered a disclaimer of the term “RAT PACK” on TRP’s trademark registration for “THE RAT PACK IS BACK.”  A copy of the decision can be downloaded here.   See TRP Entertainment, LLC v. BC Entertainment et al., Case No. 13-16754 (9th Cir.)

In upholding the lower court’s decision, the Ninth Circuit found that “the record demonstrates that the term ‘The Rat Pack’ describes a type of live entertainment show and does not identify any particular producer of a Rat Pack tribute show.”  The Court noted that even TRP had referred to “Rat Pack performances as a ‘genre’ of entertainment.”  As such, the district court did not err in determining that “The Rat Pack” is generic in the context of live shows about or in tribute to members of the Rat Pack.  The Ninth Circuit also held that the district court did not abuse its discretion in ordering a disclaimer of the term “The Rat Pack” modifying TRP’s trademark registration (citing 15 U.S.C. § 1119, which allows a court to order the modification of a trademark registration to include a disclaimer of generic components).  As such, the Ninth Circuit affirmed the district court’s grant of partial summary judgment and remanded the case back to the district court to instruct the Director of the United States Patent and Trademark Office to enter a disclaimer of the term “THE RAT PACK” on TRP’s trademark registration for ““THE RAT PACK IS BACK.” 

In order to understand how this victory is one for which I can claim some credit, I will defer to my prior detailed post on the district court’s decision when it was first handed down.  I was no longer Defendants’ counsel of record on the case at the time the decision was handed down, but it was the Motion for Partial Summary Judgment that I prepared and filed on behalf of the Defendants in that case that the district court ultimately ruled on in deciding that “Rat Pack” was generic – a decision that the Ninth Circuit has now affirmed.

Moreover, I was not involved in any briefings relative to TRP’s appeal, so that is why I write that I won at the Ninth Circuit without doing a thing – because indeed I did not.   In fact, the Ninth Circuit ruled against TRP despite having no substantive opposing briefs filed by the Defendants.  Original Defendant Barrie Cunningham did send a one page letter to the Ninth Circuit asking for the lower court’s decision to be upheld, but otherwise, no briefs were filed by the Defendants arguing in favor of upholding the lower court’s decision – which makes the decision of the Ninth Circuit to uphold the decision anyway all the more sweeter.  This victory for Defendants also demonstrates that just because no one opposes you on appeal does not necessarily mean you are going to win your appeal.

So short of an appeal by TRP of the Ninth Circuit’s decision to the U.S. Supreme Court or possibly a request for reconsideration with the Ninth Circuit, this decision marks the end of the great “Rat Pack Generic” saga that started as far back as 13 years ago.  The glory days of TRP claiming to have exclusive rights to the term “THE RAT PACK”  in connection with a “Rat Pack” tribute show – much like the “Rat Pack” itself – is forever gone. 

Nevada District Court rules that “The Rat Pack” is Generic in connection with “Rat Pack” tribute shows

I previously posted (link here) about the trademark infringement lawsuit brought by TRP Entertainment, LLC (“TRP”) – the production company behind the “Rat Pack” tribute show “The Rat Pack is Back” playing at the Plaza Hotel and Casino in Downtown Las Vegas and which owns the registered trademark for THE RAT PACK IS BACK – against BC Entertainment, Inc. (“BCE”) and Barrie Cunningham (the “Defendants”). See TRP Entertainment, LLC v. BC Entertainment, Inc. et al, Case No. 08-cv-00579 (D. Nev.). A copy of the complaint can be downloaded here. In short, TRP claimed that the Defendants use of the term “The Rat Pack” in connection with the Defendants’ production of a Rat Pack tribute show infringed on TRP’s trademark rights.

My law firm was subsequently retained by the Defendants to represent them in the lawsuit. After counterclaims had been filed, but very early into discovery, a Motion for Partial Summary Judgment was filed on behalf of the Defendants on several of Defendants’ counterclaims, including counterclaims seeking a declaration that the term “The Rat Pack” is generic when used in connection with a “Rat Pack” tribute show and an order to the U.S. Patent and Trademark Office ordering that TRP’s registered trademark for THE RAT PACK IS BACK include a disclaimer of the term “THE RAT PACK.”

On September 29, 2009, nearly a year after the original Motion was filed (and long after our law firm unfortunately had to withdraw as counsel for the Defendants), Nevada District Court Judge Lloyd George entered an order granting in part Defendants’ Motion for Partial Summary Judgment, in particular, finding that “The Rat Pack” is generic when used in connection with a Rat Pack Tribute show. See TRP Entertainment, LLC v. BC Entertainment, Inc. et al, Document #49, Case No. 08-cv-00579-LDG-RJJ (D. Nev. September 28, 2009). A copy of the court’s order can be downloaded here.

The Court stated the following regarding the evidence of the meaning of the term “The Rat Pack”:

Stated succinctly, Cunningham’s evidence establishes that, long before TRP offered live musical shows, the term the “The Rat Pack” had a meaning that was used in connection with the joint performances of members of the Rat Pack during the 1960s. While some of these performances included movie appearances, typically the joint performances were live musical performances. Since the 1960s, the term “The Rat Pack” has been used by producers of many types of goods or services to indicate that the goods or services relates to members of the Rat Pack or to the joint movie or live (or recorded) musical or movie performances of the Rat Pack during the 1960s. From its initial use to refer to members of the group, particularly when jointly performing live musical entertainment, “The Rat Pack” did not and, indeed, could not refer to or identify TRP’s live musical show.

The court acutely recognized that Defendants’ Motion was not directed towards TRP’s registered trademark but rather merely to the component term “The Rat Pack”:

The question before the court on Cunningham’s partial motion for summary judgment is not whether “The Rat Pack is Back” identifies and distinguishes TRP’s show in tribute to members of the Rat Pack from all other such live shows. Rather, the only question is whether the component term “The Rat Pack” so distinguishes TRP’s live show from all others about or in tribute to the Rat Pack. The evidence establishes that it does not and that TRP cannot appropriate the term “The Rat Pack” for its exclusive use.

And just to make it abundantly clear to TRP about the scope of its trademark rights, the court held that “As the term ‘The Rat Pack’ is generic in the context of live shows about or in tribute to members of the Rat Pack, TRP does not have an exclusive right to use the term ‘The Rat Pack.’”

Furthermore, not only did the court grant Defendants’ declaratory relief counterclaim finding the term “The Rat Pack” generic in connection with Rat Pack tribute shows, the court also granted Defendants' counterclaim which requested that the U.S. Patent and Trademark Office enter a disclaimer of TRP’s “incontestable” Trademark Registration No. 2,640,066 to add a disclaimer of the term “RAT PACK” -- something that arguably should have been done during the original prosecution phase, but which for various reasons was not. The lack of a disclaimer in TRP’s trademark registration is very likely what has allowed TRP to take its aggressive position regarding its trademark rights to the term “The Rat Pack” for so long. Not anymore.

As an attorney always hoping for a win for my clients, I am understandably happy with the court’s decision given my personal, direct involvement in preparing the Motion. And while there is so much else I would like to say about this case as a commentary on our legal system, the price of getting justice in this country, the abusive use of trademarks, and even the unintended consequences of maintaining a legal blog, I will defer such remarks to those who would like to hear them from me in person.

Instead, I would like simply to share this victory (however pyrrhic it might be) with the world – and particularly, any other production companies out there that have wanted to produce a Rat Pack tribute show and use the phrase “The Rat Pack” in the title somewhere, but have been scared away from doing so by the aggressive efforts of TRP based on its registered trademark THE RAT PACK IS BACK (or other asserted trademark rights). You now have at least one decision from a court of law that will back you up in your argument that the term “The Rat Pack” when used in connection with a Rat Pack tribute show is generic and cannot be claimed exclusively by anyone. Sounds ridiculously obvious – and yet so much time, energy, resources, and money was spent litigating just this point.

Of course, what’s really sad is that TRP will certainly attempt to appeal the judge’s decision – after all, this decision has dealt a significant blow to one of TRP’s most valuable pieces of intellectual property (at least in the arena of “Rat Pack” tribute shows). And unless the Defendants are able to garner the financial resources to continue the fight, TRP’s appeal might go unchallenged. If such an appeal follows, one can only hope that the Ninth Circuit Court of Appeals will recognize the reasonableness of the district court’s decision.

Lastly, I want to give thanks to my law firm colleague, Mark Borghese, who pushed the idea of pursuing an early Motion for Partial Summary Judgment that was focused on getting a decision that the “The Rat Pack” is generic and who provided other invaluable direction along the way. This victory is as much his as it is mine.

[Update: The Las Vegas Sun has an article on the decision here.]

[Update #2: On December 14, 2009, the Nevada District Court denied TRP's Motion for Reconsideration of the court's September 28, 2009 order. A copy of the latest order can be read here.]