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New Kids On The Block Embroiled in Struggle for Group's Name Amidst Comeback.

NEW YORK, June 11, 2009 -- Eighties boy band New Kids On The Block staged a reunion and comeback in 2008 only become entangled in trademark ownersip dispute with former members of its management.

The legal proceedings initiated today in the U.S. District Court for the Southern District of New York accuses SM Productions, Denny Marte, John Rascke and the estate of Richard Scott of attempting to expropriating the trademarks NEW KIDS ON THE BLOCK and NKOTB.

The group was originally formed by producer Maurice Starr with his business partner Mary Alford as a white counterpart to R&B/Pop group New Edition. Auditions were held in the Boston area in the early 1980s at which approximately 500 teenaged boys auditioned. Among those auditioning was 15-year-old Donnie Wahlberg, who become the group's first member. Wahlberg assisted in helping to recruit the other members. After years of success the group split from Starr in 1993 and putting the acronym NKOTB into use before breaking up.

The complaint filed today states management company Big Step Productions, Inc. held the exclusive rights to the New Kids recording and performing-related services from the groups inception through April 1, 1992. Richard Scott was a minority shareholder. In its unique position, Big Step owned the federally registered trademark NEW KIDS ON THE BLOCK and a stylized logo.

Big Step entered into a recording contract with CBS Records in 1986 for the New Kids. In connection with the New Kid's first album "Hangin' Tough", CBS registered the copyrights in the album and its artwork which included the band's trademarks. CBS then contractually assigned their interest in the copyright to Big Step on March 1, 1988. In preparation of or leading up to the split with Starr and management, the New Kids copyrights and trademarks were turned over to the band via written agreement dated March 1, 1992.

Collectively, the defendants are accused of trying to hijack the trademark NEW KIDS ON THE BLOCK by forming a group of the same name, producing recordings and related products, organizing performances, and filing an application with the United States Patent & Trademark Office (USPTO) to register the mark NEW KIDS ON THE BLOCK.

SM Productions did file an application to register NEW KIDS ON THE BLOCK with the USPTO on August 22, 2005.

Ownership of a trademark is based on being the first party to use a mark in commerce in connection with particular goods and or services. The first party to make use of the mark has priority and may prevent subsequent users from using a confusingly similar mark so long as the senior party continues to use the mark. If a party stops using a mark, even though registered, that party loses their date of priority establishing their claim of ownership.

An issue in the case may be whether the group stopping using the mark NEW KIDS ON THE BLOCK in favor of NKOTB or if the acronym was in addition to band's full name. Another issue may be whether the band continued to use the mark even through the members disbanded for approximately 15 years. If the New Kids recordings were still being actively sold or distributed during the members' split, use in connection with recordings may be established allowing the group to claim a priority date going back to 1988.



Notables.
News. New Kids On The Block Embroiled in Struggle for Group's Name Amidst Comeback. NEW YORK, June 11, 2009 -- Eighties boy band New Kids On The Block staged a reunion and comeback in 2008 only become entangled in trademark ownersip dispute with former members of its management. The legal proceedings initiated today in the U.S. District Court for the Southern District of New York accuses SM Productions, Denny Marte, John Rascke and the estate of Richard Scott of attempting to expropriating the trademarks NEW KIDS ON THE BLOCK and NKOTB. The group was originally formed by producer Maurice Starr with his business partner Mary Alford as a white counterpart to R&B/Pop group New Edition. Auditions were held in the Boston area in the early 1980s at which approximately 500 teenaged boys auditioned. Among those auditioning was 15-year-old Donnie Wahlberg, who become the group's first member. Wahlberg assisted in helping to recruit the other members. After years of success the group split from Starr in 1993 and putting the acronym NKOTB into use before breaking up. The complaint filed today states management company Big Step Productions, Inc. held the exclusive rights to the New Kids recording and performing-related services from the groups inception through April 1, 1992. Richard Scott was a minority shareholder. In its unique position, Big Step owned the federally registered trademark NEW KIDS ON THE BLOCK and a stylized logo. Big Step entered into a recording contract with CBS Records in 1986 for the New Kids. In connection with the New Kid's first album "Hangin' Tough", CBS registered the copyrights in the album and its artwork which included the band's trademarks. CBS then contractually assigned their interest in the copyright to Big Step on March 1, 1988. In preparation of or leading up to the split with Starr and management, the New Kids copyrights and trademarks were turned over to the band via written agreement dated March 1, 1992. Collectively, the defendants are accused of trying to hijack the trademark NEW KIDS ON THE BLOCK by forming a group of the same name, producing recordings and related products, organizing performances, and filing an application with the United States Patent & Trademark Office (USPTO) to register the mark NEW KIDS ON THE BLOCK. SM Productions did file an application to register NEW KIDS ON THE BLOCK with the USPTO on August 22, 2005. Ownership of a trademark is based on being the first party to use a mark in commerce in connection with particular goods and or services. The first party to make use of the mark has priority and may prevent subsequent users from using a confusingly similar mark so long as the senior party continues to use the mark. If a party stops using a mark, even though registered, that party loses their date of priority establishing their claim of ownership. An issue in the case may be whether the group stopping using the mark NEW KIDS ON THE BLOCK in favor of NKOTB or if the acronym was in addition to band's full name. Another issue may be whether the band continued to use the mark even through the members disbanded for approximately 15 years. If the New Kids recordings were still being actively sold or distributed during the members' split, use in connection with recordings may be established allowing the group to claim a priority date going back to 1988.
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