If you register your band’s service mark, could someone else who has worked with your band oppose that registration? It is possible, as we see in this week’s blog post about the mark for the band Split Decision – opposition does not equal success in winning a service mark or trademark.

The Players in Split Decision

You could add that this service mark registration was a long time coming. The band Split Decision first formed in 1990. The two founding members played sets of cover songs, performing at events and in venues along the East Coast. They started to work with manager and booking agent Billy Stott in 1991. 

Since then, Split Decision has been composed of a rotating cast of players. Stott managed the booking of gigs until the band terminated his position in 2018, though his influence lessened considerably after the late 90s. Performing band members (which does not include Stott) continue playing under the name Split Decision to this day. 

Service Mark Opposition

This background laid the foundations for this opposition. When the current band members of Split Decision agreed for one lead member, Doug Moore, to finally register the band name, Stott filed an opposition – claiming that he was both the owner of the band and a “full, non-performing primary band member.”

Proceedings began in 2019, with extensive testimony and discovery. The Trademark Trial and Appeal Board (TTAB)  just recently reached a decision. What did they find regarding the Split Decision service mark?

Stott’s Opposition

Stott argues that he did more than book gigs for the band, describing his role as instrumental in crafting their sound, image, and brand. For that reason, he posits that he is an owner of the brand.

He also touts himself as a non-performing member of the band. For this claim, he cites an early conversation that he had with the founding members, though his status as a band member was never put into writing. 

The TTAB did not buy into Stott’s arguments, Billy Stott v. Split Decision Music, LLC, Opposition No. 91249613 (January 31, 2024) and found substantial evidence to back up the denial of the opposition.

Court: 1, Stott: 0

Here is why the court did not see Mr. Stott as a full or partial owner of the brand, according to the testimony of a band member from 1999-2005:

• Stott did not manage the band’s finances
• Stott did not pick the songs in the band’s sets
• Stott did not participate in rehearsal or give notes on how the music was played
• Stott did not dictate the band’s wardrobe or appearance 
• Stott did not control how the band publicized its gigs
• Stott did not have the final approval or disapproval say in band gigs

As you can see, this centers on what Stott did not do. So, what did Stott do? As band member after band member testified: he booked gigs for the band. That is the duty of someone who works for a brand, not the owner of the brand.

Court: 2, Stott: 0

As for Stott’s claim that he was a non-performing member of the band, the court focused on the factor of public perception here. Testimony from club managers, venue patrons, and performing Split Decision band members seemed to coalesce around the same fact: nobody perceived him as a member of the band. Unanimously, they perceived him as a manager or booking agent. 

Band members even went so far as to acknowledge his significant contributions in the early stages of developing the band’s brand. However, none of them were confused about his role in or ownership of the band. Several band members testified: “He can’t continue to own us because he never owned us in the first place.”

Stott’s filing of a fictitious name application in the State of Pennsylvania in 2011 did not help his case since it could not provide a defense against an established senior user of the mark.

The Split Decision… Decision

All in all, five years after Stott’s opposition began, the TTAB dismissed it and declared Split Decision LLC owners of the SPLIT DECISION service mark. 

Are there any lessons to be learned here? This is a common problem in the music industry. Musicians pour all of their energy into a music group but never register the name of the band as a trademark. This often leads to disputes among current and past band members or like in this case disputes with former booking agents. Lesson, register the band name with the USPTO and have agreements in writing between band members and agents regarding the ownership interest of band members. Stott relied entirely too much on a verbal agreement that happened decades prior. For small businesses, if you are working with multiple people on a project but feel that you own the service mark or trademark – register it before decades go by.