Nineteen years after the death of  Cab Calloway, a U.S. District Court in New York has handed down the latest ruling in the on-going legal battles among family members of the legendary jazz singer and band leader.  This most case recent arises out of a trademark dispute over the use of the mark “Cab Calloway.” The plaintiff, Creative Arts by Calloway LLC — Calloway’s widow, daughters and son-in-law — filed an “intent-to-use” application with the Patent and Trademark Office, seeking  to register the mark “Cab Calloway.” Christopher Brooks, Calloway’s eldest grandson and a musician, opposed the application based on his prior use of “The Cab Calloway Orchestra” name for a tribute band to his grandfather.

The court granted summary judgment for Brooks, finding that Creative Artists lacked a business “on going and existing” as required by the Lanham Act, which would allow the assignment of the application between Calloway’s widow and Creative Arts, thereby voiding it.  The Lanham Act protects the owner of a federally registered mark against the use of similar marks, if such use is likely to result in consumer confusion or if the dilution of a famous mark is likely to occur.  A transfer of an application is permitted  as long as the assignment is accompanied with an amendment that is filed verifying the statement of use. But an application can be assigned without use, if it is assigned “to a successor to the business of the applicant, or portion thereof, to which the mark pertains, if that business is ongoing and existing.” 15 U.S.C. § 1060(a)(1).

Calloway’s most famous song was “Minnie the Moocher” featured in a Betty Boop animation.  He performed with many greats of the 1930s and 1940s, including Dizzy Gillepsie, Lena Horne and Al Jolson. Fans of Janet Jackson may remember him from his 1990 guest appearance in her “Alright” video where he donned his signature zoot suit a few years before his death in 1994.