## Facts

- A vocal group performed under the name “The Pied Pipers,” with members later entering an agreement making each an equal co-owner of the name and goodwill.
- The agreement provided survivorship: upon a member’s death, that member’s interest reverted to the surviving member(s), and replacement members would be employees rather than co-owners.
- Over time, the original members died or left; the petitioner became the sole surviving owner under the survivorship arrangement.
- In 1967, the petitioner executed a short written contract allowing a former performer to use “Pied Pipers” for a vocal group in exchange for 5% of gross income.
- The 1967 contract lacked quality-control terms and did not require supervision, performance standards, or ongoing oversight by the petitioner.
- The record reflected no meaningful actual control by the petitioner over the licensee’s services under the name.
- In the early 1970s, the respondent performed in a studio group that used “The Pied Pipers” name; the petitioner objected and later settled a related claim for a small payment.
- In 1973, the respondent formed and toured his own group under “The Pied Pipers,” applied to register the name for entertainment services, and obtained a federal service-mark registration in 1974.
- The respondent used the mark continuously after registration.
- The petitioner sought cancellation of the registration, claiming superior rights based on original ownership, survivorship, and later licensing and commercial efforts.

## Issues

1. Whether the petitioner retained protectable priority in “The Pied Pipers” sufficient to cancel the respondent’s registered service mark.
2. Whether the petitioner’s 1967 license, without contractual or actual quality control, constituted a naked license resulting in abandonment or loss of enforceable rights.
3. Whether the petitioner’s later assertions of ownership and subsequent licensing efforts could avoid or cure any loss of rights caused by the uncontrolled license.

## Decision

- The TTAB denied the petition to cancel and left the respondent’s registration in force.
- The Board treated the petitioner’s 1967 arrangement as a naked license because it lacked quality-control provisions and was not accompanied by actual supervision.
- The Board concluded that the uncontrolled licensing resulted in loss of enforceable trademark rights (or, at minimum, prevented the petitioner from proving continuing, source-controlled rights sufficient to defeat the respondent’s registration).
- The petitioner’s later activities (including continued claims of ownership and later licensing attempts) did not restore priority over the respondent’s continuous use and registration.

## Legal Principles

- Service-mark rights may exist in the name of a performing group and may be held and transferred by private agreement, including survivorship arrangements.
- Trademark licensing is permissible only if the licensor exercises control over the nature and quality of the goods or services offered under the mark.
- A license without adequate contractual quality-control provisions, and without actual quality control, may be deemed a naked license.
- Naked licensing can constitute abandonment or otherwise eliminate the licensor’s ability to rely on licensed use to establish priority and enforce the mark against subsequent users.
- Post hoc assertions of ownership or passive receipt of payments are insufficient substitutes for quality control in maintaining trademark significance as a single, source-controlled indicator.

## Conclusion

The TTAB refused to cancel the respondent’s registration because the petitioner’s uncontrolled license of the group name functioned as a naked license, causing loss of enforceable rights and leaving the petitioner unable to establish superior priority over the respondent’s registered, continuously used service mark.


Yocum v. Covington, 216 U.S.P.Q. 210 (T.T.A.B. 1982)