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Florida Federal Court's Findings in Battle Over "LINEAR" Band Name Not So Linear

The U.S. District Court for the Southern District of Florida, Miami Division, issued a mixed ruling in litigation over rights to the band name LINEAR. Restivo v. Pennachio, 21-23388 (S.D.Fla. 2022). Since 2008, Charles Pennachio, a co-founder in the 1980s of LINEAR, has been battling Joseph Restivo, who Pennachio claims was a "hired gun" in the music group until 1994, over commercial use of "LINEAR." In 2013, Restivo obtained federal registration of the band name in the U.S. Patent and Trademark Office (USPTO) for "Entertainment in the nature of live performances, Entertainment, namely, live music concerts, Entertainment [sic], live performances by a musical band." In 2019, he filed an application with the USPTO to use the "LINEAR" mark for "[c]lothing, namely, shirts, sweaters, blouses, jackets, slacks, hats and baseball caps," and for "[a]dvertising services, namely, promoting the brands, goods and services of others; endorsement services, namely, promoting the goods and services of others." (In 2017, the Trademark Trial and Appeal Board (TTAB) dismissed Pennachio's Cancellation petition to the 2013 registration. Pennachio's Notice of Opposition to the 2019 application is now before the TTAB.) South Florida District Judge Jose E. Martinez recently found in part: "Res judicata prohibits Pennachio from relitigating [Restivo's] registration of the LINEAR mark in 2013, but not his renewals." District Judge Martinez further found: "Restivo contends that because he is the owner of the LINEAR mark, Pennachio's dilution claims [under the Federal Trademark Dilution Act, 15 U.S.C. §11259(c)(6)] are preempted. His argument inherently fails because the validity of his ownership in the LINEAR mark is still at issue in this case. Although Pennachio cannot contest the validity of the 2013 Registration itself, his claims for fraud upon the USPTO in 2018 and 2019 [for Restivo's filings of Declarations of Use and of Incontestability] survive dismissal and are pending before this Court."