ESTTA Tracking number:
`
`Filing date:
`
`ESTTA1412028
`01/30/2025
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`
`Opposer information
`
`Name
`
`Entity
`
`Address
`
`Attorney informa-
`tion
`
`Callie Harpole
`
`Individual
`
`Incorporated or
`registered in
`
`UNITED STATES
`
`C/O LAUREN KILGORE
`1 MUSIC CIRCLE SQUARE, SUITE 300
`NASHVILLE, TN 37203
`UNITED STATES
`
`LAUREN KILGORE
`BUCHALTER, A PROFESSIONAL CORPORATION
`1 MUSIC CIRCLE SOUTH, SUITE 300
`NASHVILLE, TN 37203
`UNITED STATES
`Primary email: lkilgore@buchalter.com
`Secondary email(s): jbaxter@buchalter.com, cblair@buchalter.com
`No phone number provided
`
`Docket no.
`
`Applicant information
`
`Application no.
`
`98547335
`
`Opposition filing
`date
`
`Applicant
`
`01/30/2025
`
`Callie Harpole LLC
`3040 CODY HILL ROAD
`NASHVILLE, TN 37211
`UNITED STATES
`
`Goods/services affected by opposition
`
`Publication date
`
`12/31/2024
`
`Opposition period
`ends
`
`01/30/2025
`
`Class 009. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Musical sound recordings; Audio and video
`recordings featuring music and artistic performances; Audio recordings featuring music; Audio tapes
`featuring music; Compact discs featuring music; Digital music downloadable from the Internet; Digital
`music system that synchronizes digital music files stored on a home unit and a car unit; Download-
`able music files; Downloadable electronic sheet music; Downloadable ring tones, graphics and music
`via a global computer network and wireless devices; Phonograph records featuring music; Pre-
`recorded record albums featuring music; Prerecorded audio tapes featuring music; Prerecorded
`video cassettes featuring music; Prerecorded video tapes featuring music; Visual recordings and au-
`diovisual recordings featuring music and animation
`
`Class 035. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Online retail store services for download-
`able digital music
`
`Class 038. First Use: None First Use In Commerce: None
`
`

`

`All goods and services in the class are opposed, namely: Delivery of digital music by electronic trans-
`mission
`
`Class 041. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Music composition for others; Music com-
`position services; Music production services; Music video production; Composition of music for oth-
`ers; Entertainment services in the nature of a film series in the field of music; Entertainment services
`in the nature of a television series in the field of music; Entertainment services, namely, providing
`non-downloadable prerecorded music via a website; Entertainment, namely, live music concerts; Live
`music performances; Production of music; Providing information in the field of music and entertain-
`ment via a website; Providing live music performance venues; Publishing of books, e-books, audio
`books, music and illustrations
`
`Class 042. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Providing a website allowing users to down-
`load music and music videos; Providing a website allowing users to upload and download music
`
`Class 045. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Film, television, video, music and image li-
`censing
`
`Grounds for opposition
`
`Applicant not rightful owner of mark for identified
`goods or services
`
`False suggestion of a connection with persons,
`living or dead, institutions, beliefs, or national
`symbols
`
`Consists of or comprises a name, portrait, or sig-
`nature of a living individual without written con-
`sent, or the name, portrait, or signature of a de-
`ceased president without the written consent of
`the surviving spouse
`
`Fraud on the USPTO
`
`Trademark Act Section 1
`
`Trademark Act Section 2(a)
`
`Trademark Act Section 2(c)
`
`In re Bose Corp., 580 F.3d 1240, 91 USPQ2d
`1938 (Fed. Cir. 2009)
`
`Attachments
`
`Trademark Opposition - Randi Lee Mark.pdf(256964 bytes )
`
`Signature
`
`Name
`
`Date
`
`/Lauren Kilgore/
`
`Lauren Kilgore
`
`01/30/2025
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`CALLIE HARPOLE,
`
`Opposer,
`
`v.
`
`4U2ASKY ENTERTAINMENT INC. d/b/a
`CALLIE HARPOLE, LLC
`
`Applicant
`
`Opposition No.
`
`Serial No. 98547335
`
`Date of Filing: January 30, 2025
`
`Subject Mark: “Randi Lee”
`
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`NOTICE OF OPPOSITION
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`1.
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`Callie Harpole, an individual, (“Ms. Harpole”) is a singer/songwriter in Nashville,
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`Tennessee that performs under the stage name “Randi Lee.”
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`2.
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`“Callie Harpole, LLC,” the alleged “owner” of the mark “Randi Lee” is an
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`unauthorized limited liability company purportedly formed in the state of Tennessee by actual
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`trademark applicant 4U2ASKY Entertainment, Inc. (“Applicant”).
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`3.
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`The Application was filed for registration on the Principal Register on May 13,
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`2024 for use in commerce in connection with the provision of goods and services in the
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`music/entertainment industry. The Application was published for opposition on December 31,
`
`2024. This Notice of Opposition is being filed within 30 days of the publication date.
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`4.
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`For the reasons set forth below, Ms. Harpole opposes registration of the mark as
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`the Application was made without her consent, knowledge, or approval and ownership of the mark
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`remains an open question in ongoing litigation. Further, the mark suggests a false connection
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`between Ms. Harpole and Applicant. Finally, Applicant’s attempt to register the mark without
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`authority constitutes a fraud on the United States Patent and Trademark Office (“USPTO”).
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`Error! Unknown document property name.
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`

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`PRELIMINARY STATEMENT
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`5.
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`Ms. Harpole and Applicant are currently involved in arbitration over the rights of
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`the parties with respect to a contract entered into between Ms. Harpole and Applicant on March 1,
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`2016. That contract expired in 2023, more than a year prior to the Applicant’s filing of the subject
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`application. The arbitration is still ongoing and no final decision has been rendered.
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`6.
`
`“Randi Lee” is Ms. Harpole’s stage name, which she has been utilizing in
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`commerce for the last 6 years.
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`7.
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`Applicant’s attempt to register Ms. Harpole’s stage name in the midst of ongoing
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`litigation in which the ownership of that name is a disputed issues was done solely to harass,
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`frustrate, and intimidate Ms. Harpole. Upon information and belief, Applicant has no intent to use
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`the name in commerce; it merely wants to prevent Ms. Harpole from capitalizing on her
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`burgeoning success.
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`8.
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`Applicant has no rights to the stage name “Randi Lee” and its registration attempt
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`constitutes a fraud on the USPTO. Because Applicant has no legitimate claim to the proposed
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`mark, the ownership of the mark is disputed in an ongoing arbitration proceeding, and Applicant
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`failed to obtain consent from Ms. Harpole before attempting to register the mark, the Application
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`should be denied.
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`FACTUAL BACKGROUND
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`The Parties Enter a Contract and Applicant Fails to Perform.
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`In 2016, Ms. Harpole executed an agreement (the “Agreement”) with Applicant,
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`I.
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`9.
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`who touted itself as an artist development and personal management company that has worked
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`with high-profile artists. The Agreement expired at the latest on March 1, 2023.
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`2
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`10.
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`Between 2016 and 2021, Applicant took minimal steps to grow Ms. Harpole’s
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`career. Despite her writing songs and recording consistently over this time period, Applicant never
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`released a single song written or recorded by Ms. Harpole.
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`11.
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`Near the end of 2021, Ms. Harpole was becoming increasingly frustrated with
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`Applicant’s failure to provide the services it contracted to provide. Applicant learned of Ms.
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`Harpole’s frustration and in November of 2021, Applicant unilaterally formed “Callie Harpole,
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`LLC” without Ms. Harpole’s knowledge or consent.
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`12.
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`On February 2, 2022, Ms. Harpole, through counsel, sent a letter to Applicant
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`noticing it of breach of the Agreement and terminating the Agreement for cause (the “Termination
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`Letter”).
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`13.
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`Nine months after receiving the Termination Letter, in November of 2022,
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`Applicant sent directly to Ms. Harpole (despite knowledge of her representation by counsel) a
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`letter entitled “Notice of Renewal” (the “Renewal Attempt”) attempting to renew the Agreement
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`that Ms. Harpole had terminated in February of that year.
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`14. Ms. Harpole, through counsel, sent a response to the Renewal Attempt by email dated
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`December 2, 2022 informing Applicant that the Renewal Attempt had no legal effect, both because of
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`Ms. Harpole’s prior termination of the Agreement and because any renewal requires “mutual consent”
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`under the Agreement, and further requesting a copy of any operating agreements for the
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`nonconsensually formed LLC.
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`II.
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`15.
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`The Parties Enter Arbitration and the Arbitrator Holds that the Agreement
`Terminated, at the Latest, on March 1, 2023.
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`In June of 2023, Applicant initiated arbitration proceedings against Ms. Harpole
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`alleging claims for breach of contract, unjust enrichment, breach of copyright, breach of fiduciary
`
`duty, and violation of the Personal Rights Protection Act, along with requesting declaratory relief
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`3
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`

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`that the Agreement was renewed by Ms. Harpole’s actions and that Ms. Harpole was required to
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`pay certain liquidated damages arising from a “Buyout Provision” in the Agreement.
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`16.
`
`In the Arbitration, Ms. Harpole filed a “Motion on Legal Issues” to address some
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`purely legal issues that could be determined as a matter of law. These issues included: (1) that the
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`Buyout Provision was unenforceable; (2) that the Agreement terminated on February 2, 2022, or
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`at the latest on March 1, 2023; and (3) that no copyrightable works were transferred to Callie
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`Harpole, LLC because the LLC was not formed for five (5) years after execution of the Agreement.
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`17.
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`On December 30, 2023, the Arbitrator issued an order on Ms. Harpole’s motion
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`(the “Arbitration Order”). A true and correct copy of the Arbitration Order is attached hereto as
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`Exhibit A. In the Arbitration Order, the Arbitrator held that the Agreement between the parties
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`terminated, at the latest, on March 1, 2023 and that Ms. Harpole had not extended the term of the
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`Agreement by her actions.
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`18.
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`Nearly five (5) months later, on May 13, 2024, Applicant filed the Application
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`attempting to register the mark “Randi Lee.” At the time it filed the Application, Applicant was
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`in ongoing litigation with Ms. Harpole and had full knowledge of the Arbitration Order, which
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`definitively determined that the Agreement was terminated as of March 1, 2023—more than 14
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`months prior to the Applicant’s filing of the Application. Moreover, ownership of the mark
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`remains a live issue in the arbitration and no final decision has been rendered.
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`III. Ms. Harpole’s Use of the Mark in Commerce
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`19. Ms. Harpole began performing under the stage name “Randi Lee” in 2019. Since
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`that time, Ms. Harpole has fostered a burgeoning career as a singer/songwriter in Nashville,
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`Tennessee.
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`4
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`20.
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`Applicant never released any songs by Ms. Harpole under the stage name Randi
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`Lee. Indeed, Applicant never utilized the stage name “Randi Lee” in commerce. Instead, Ms.
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`Harpole took efforts, on her own, to build her brand and reputation. This hard work is at risk if
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`Applicant is allowed to unilaterally register Ms. Harpole’s stage name without her consent and in
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`derogation of her prior rights to the mark.
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`BASES FOR OPPOSITION
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`I.
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`21.
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`The Mark Consists of a Name of a Living Individual Without Her Written
`Consent.
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`First, the Application should be denied because it seeks registration of Ms.
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`Harpole’s assumed stage name, Randi Lee, without Ms. Harpole’s written consent.
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`22.
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`Title 15, section 1052(c) of the United States Code provides: “No trademark . . .
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`shall be refused registration on the principal register on account of its nature unless it-- . . . (c)
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`Consists of or comprises a name, portrait, or signature identifying a particular living individual
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`except by his written consent . . . .”
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`23.
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`This section applies to fictitious names, such as stage names. See, e.g., Bunstine v.
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`Kivimaki, 77 Misc. 3d 1232(A), 182 N.Y.S.3d 602 (N.Y. Sup. Ct. 2023) (“Written consent is
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`required for registration of a mark containing a name, including a pseudonym, stage name or
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`nickname, or signature, if the name or signature identifies a particular living individual”).
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`24. Ms. Harpole has been utilizing the stage name “Randi Lee” in commerce since
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`2019.
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`25. Ms. Harpole never assigned use of this name to Applicant and never gave consent
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`for Applicant to file the Application.
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`26.
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`The Application was filed in direct derogation of Ms. Harpole’s rights to her name,
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`image, and likeness and without her approval or authority.
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`5
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`

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`27.
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`Accordingly, the Application should be denied for violating 15 U.S.C. § 1052(c).
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`II.
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`The Mark Creates a False Suggestion of a Connection With a Living Person.
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`28.
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`Second, the Application should be denied because Applicant has no legitimate
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`connection to Ms. Harpole since the termination of the Agreement in 2023.
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`29.
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`Title 15, section 1052(a) of the United States Code provides: “No trademark . . .
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`shall be refused registration on the principal register on account of its nature unless it—(a) . . . may
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`disparage or falsely suggest a connection with persons, living or dead . . . .”
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`30.
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`The Agreement between Applicant and Ms. Harpole terminated, at the latest, in
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`March of 2023. This issue was ruled upon in the Arbitration Order prior to Applicant’s filing of
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`the Application.
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`31.
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`Applicant knew at the time of filing its Application that Ms. Harpole was no longer
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`in any contractual relationship with Applicant and, thus, had no connection with Applicant. As
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`such, the registration of the Mark suggests a false connection with Ms. Harpole that does not exist.
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`III. The Application Constitutes a Fraud on the USPTO.
`
`32.
`
`Title 15, section 1120 of the United States Code provides:
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`Any person who shall procure registration in the Patent and Trademark Office of a
`mark by a false or fraudulent declaration or representation, oral or in writing, or by
`any false means, shall be liable in a civil action by any person injured thereby for
`any damages sustained in consequence thereof.
`
`15 U.S.C. § 1120.
`
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`33.
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`In its Application, Applicant indicated to the USPTO that “The name(s), portrait(s),
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`and/or signature(s) shown in the mark does not identify a particular living individual.” This
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`statement is materially false.
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`34. Ms. Harpole has been utilizing the stage name “Randi Lee” in commerce for more
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`than 6 years at the time of the filing of the Application.
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`6
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`

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`35.
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`Applicant had knowledge at the time of filing its Application that Ms. Harpole was
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`using the stage name “Randi Lee” and that the name represents the living individual Callie
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`Harpole.
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`36.
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`Applicant knowingly made a false statement of material fact in its application by
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`indicating that the name that comprises the mark “does not identify a particular living individual.”
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`Despite knowledge of its falsity, Applicant provided false information to the USPTO that the mark
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`did not identify Ms. Harpole.
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`37. Moreover, Applicant’s use of “Callie Harpole, LLC” to register the mark also
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`constitutes a fraud on the USPTO. Applicant unilaterally, and in derogation of the terms of the
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`Agreement, attempted to register “Callie Harpole, LLC” as a limited liability company in the State
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`of Tennessee without Ms. Harpole’s consent or knowledge.
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`38.
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`The validity of the LLC’s existence is currently in litigation in the arbitration. This
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`issue was outstanding at the time Applicant filed the Application. Applicant knew there was a
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`challenge to the legal validity of the LLC—which utilizes Ms. Harpole’s name without her
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`consent—and nevertheless represented to the USPTO that it was the proper owner of the Randi
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`Lee mark despite that issue still being in dispute in the arbitration.
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`39.
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`By making knowingly false statements of material fact to the USPTO in the
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`registration process, Applicant intended to induce, and did induce, the USPTO to act in reliance
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`on Applicant’s misrepresentations.
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`40.
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`By preliminarily approving the mark for publication, the USPTO was actually
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`deceived by Applicant’s materially false statements.
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`7
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`

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`CONCLUSION
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`41. WHEREFORE, for the foregoing reasons, Ms. Harpole respectfully requests that
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`the present Opposition be sustained in favor of Ms. Harpole and that the Application with Serial
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`Number 98547335 be denied.
`
`
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`Respectfully Submitted this 30th Day of January, 2025
`
`/s/ Lauren Kilgore__________________
`Lauren Kilgore, Esq. (TN Bar. No. 30219
`Connor Blair, Esq. (TN Bar No. 031992)
`1 Music Circle South, Suite 300
`Nashville, TN 37203
`P: 629-224-6600
`lkilgore@buchalter.com
`cblair@buchalter.com
`
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`8
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