By Christopher Walsh
Nazareth, PA (March 20, 2008)–On January 22, the United States Patent and Trademark Office registered the “GA and Design” Mark to Gotham Audio, LLC, concluding the company’s three-year legal effort to confirm ownership of the Mark.
Charles Whitener and his Westrex Corporation (formerly Western Electric), a manufacturer of vacuum tubes, had challenged that ownership in December, 2005. The Trademark Trial and Appeal Board granted Gotham’s motion to dismiss this Opposition with prejudice on December 13, 2007.
The “GA and Design” Mark registered to Gotham Audio, LLC is identical to the Mark that the late Stephen Temmer and his company Gotham Audio Corporation registered as a U.S. Trademark in August 1965. Temmer subsequently registered this identical Mark, through his company Gotham AG, as a Swiss Trademark in 1984.
The Patent and Trademark Office determined that Gotham Audio, LLC CEO Franz Ammann could assert use of this Mark as early as the spring of 1984. Consequently, the Mark registered to Gotham Audio, LLC was assigned a date of first use as March 14, 1984. The link between Gotham Audio, LLC and Temmer’s Gotham Audio Corporation is now a matter of record.
“The name ‘Gotham’ is almost generic in language now,” Lewis Frisch, Gotham Audio LLC’s director of operations in the U.S., tells Pro Sound News. “It’s used for so many things. We weren’t really interested in that, but we really thought that that Mark is Temmer’s. When people see that, it brings the old company to mind, and that’s what we didn’t want [Westrex Corporation] doing.”
The dispute between Gotham Audio and Westrex arose in 2004, when the former was launching a new company to distribute Gotham Audio Cable, produced and marketed by Swiss Company Gotham AG, in the U.S. Gotham AG was originally established as a subsidiary of New York-based Gotham Audio Corporation, which Temmer had established in 1958.
Shortly before his retirement, Temmer registered his Gotham trademark in Switzerland, in 1984. He subsequently transferred the sales rights for Gotham Audio Cable, along with rights to continue to use the Gotham name and Mark, to Ammann. Ammann used the Gotham name and mark over the next 20-plus years, establishing an organization near Zurich that distributes professional audio equipment in Switzerland, and marketing Gotham Audio Cable worldwide.
Until 1991, the New York-based Gotham had been the U.S. distributor of Neumann microphones. Temmer died in 1992.
In 2004, Ammann and Frisch, who has held positions at recording studios, pro audio distributors and manufacturers including Amek and Gepco, named their new company Gotham Audio, LLC. But Temmer’s successors at New York-based Gotham Audio had failed to renew his U.S. trademark and done little to preserve the company’s legacy after the business was shuttered. In late 2004, Frisch informed several of them of his intention to revive the name and renew the Mark in the U.S., but, he says, received no reply.
Frisch planned to launch a website using the domain name www.gothamaudio.com but found that Whitener held the address. Frisch contacted Whitener and informed him of his plans for Gotham Audio LLC. Whitener, according to Frisch, offered to sell the address, and his attorneys offered to license the GA and Design Mark to Gotham Audio LLC for an annual fee. Frisch made an offer on November 4, 2004 and, he says, heard nothing further over the next 12 months.
Gotham Audio, LLC was incorporated in the Commonwealth of Pennsylvania on November 24, 2004. On December 20, 2004 the LLC filed an application for the “GA and Design” Mark with the US Patent and Trademark Office.
A year later, Westrex Corporation filed a notice of Opposition to the Gotham application with the Trademark Trial and Appeal Board. Westrex attorneys claimed that Gotham Audio’s use of the GA Mark would infringe upon the Gotham trade name and Mark that Westrex had allegedly used to brand audio power amplifiers since 1995. At the same time, Westrex Corporation filed a trademark application for the Gotham name and GA Mark in the European Community. In September 2005, Westrex had also filed a trademark application in the U.S. for GOTHAM, an application subsequently suspended due to its conflict with the registered trademark of Miramar, Florida-based JL Audio for that company’s GOTHAM power amplifiers.
JL Audio’s GOTHAM line, Frisch explains, “has never been a problem for us. It’s never been a problem that there’s Gotham Sound & Communications in New York. But the logo–the ‘GA’–was very special.”
Whitener maintains that while Gotham owns the rights to the logo, his company owns “the Gotham name in the EU and several other countries. The GA [logo is theirs] but Western Electric owns the Gotham Audio name worldwide.” Whitener says that in regard to the logo, “we in fact decided just not to answer their complaint, because we weren’t that interested in the GA logo,” however, he maintains that Gotham doesn’t have the registration for the name and Western Electric continues its interest in maintaining rights to the name.
Gotham Audio, LLC retained patent and trademark attorney Sanford Piltch to answer the Opposition. On February 28, 2006, Piltch affirmed that Whitener did not possess any rights to the GOTHAM or “GA and Design” Marks either directly or through a predecessor entity; that Gotham Audio, LLC possessed rights to these Marks through the affiliation with Gotham AG, which had acquired the rights to use the Marks from Temmer in 1984 and used them continuously in the U.S. from that time until the founding of Gotham Audio, LLC; that Whitener had adopted the Marks to confuse and mislead the public into assuming that his companies were affiliated with Temmer and the Gotham Audio Corporation, which originated the Marks; and that there was no evidence that Gotham Audio, LLC’s use of the “GA and Design” Mark would in any way confuse or mislead the public as regards to the source of or possible associations with the goods allegedly manufactured or sold by Whitener’s companies.
On October 26, 2007 Piltch filed combined motions to dismiss Opposition for failure of Opposer to take testimony and for judgment for Opposer’s failure to prove case. On December 13, 2007, the Trademark Trial and Appeal Board granted all of Gotham Audio, LLC’s motions and dismissed the Opposition with prejudice.
The date of first use and first use in commerce was set as March 14, 1984, prior to Temmer’s retirement and the expiration of his original U.S. trademark registration in November 1985.
“I guess this is what lawyers argue,” Frisch summarizes. “There’s the fine point of the law. But if [a trademark] is in continuous use, widely seen in commerce by a company, can somebody else take advantage of the technicality that it wasn’t properly legally registered and steal it? Franz and I claimed that we were in active use, but the big difference with us was Franz’s connection, and this is what [the Trademark Trial and Appeal Board] recognized with that date of first use–Franz’s connection to Stephen Temmer.”
Gotham Audio LLC.