Trademark Proceedings Do Not Preclude Infringement Claims Over Band Name; 3rd Circuit

Beasley v Howard, 14 F4th 226 [3d Cir 2021]

In a long in a long-running dispute over the rights to the band name “Ebonys,” the 3rd Circuit held that proceedings to cancel a trademark before the TTAB did not have claim preclusive effect against trademark infringement lawsuits in federal district court. The plaintiff had filed two petitions in the TTAB to cancel the EBONYS trademark, which were dismissed. He then sued in federal court, alleging infringement. The lower court dismissed the claims on the basis of the TTAB proceedings, but the appellate court reversed.

Beasley appeals, so we now consider whether trademark cancellation proceedings before the TTAB have claim preclusive effect against trademark infringement lawsuits in federal district courts. We hold that they do not. The TTAB's limited jurisdiction does not allow trademark owners to pursue infringement actions or the full scope of infringement remedies in proceedings before it. Because the judgments of tribunals with limited jurisdiction have limited preclusive effect, we will reverse and remand in part the District Court's order so that the District Court may determine the scope and plausibility of Beasley's claims. But we will affirm the District Court's order to the extent it dismisses any claim that Howard defrauded the U.S. Patent & Trademark Office (“PTO”).

Former Jefferson Starship Founder Can Sue Over Band Name

Chaquico v. Freiberg, 2017 US Dist LEXIS 128167 [ND Cal Aug. 11, 2017, No. 17-cv-02423-MEJ].

A California Federal Judge determined that the band ‘Jefferson Starship’ lost the right to use their name when co-founder Paul Katner died in 2016. The band name had been contractually retired in 1985 under an agreement, after Katner and various other founders left the band. In 1993, Craig Chaquico, whom brought the suit, agreed to allow Katner to use the name for a new band under a new agreement. The Judge determined that Katner’s death terminated the ’93 agreement and the band’s new members as well as older founders were barred from using the name as they were not parties to the agreement. While the Judge dismissed Chaquico’s Lanham Act claims that the former band members’ imagines in marketing creates confusion, she is allowing the breach of contract claim to proceed.

In Case Involving The Name of a Band, The U.S. Supreme Court Rules Disparagement Clause of Lanham Act Unconstitutional

Matal v. Tam, No. 15-1293 (U.S. June 19, 2017)

The United States Supreme Court ruled that the disparagement clause of the Lanham Act was unconstitutional under the Free Speech Clause of the First Amendment.  The disparagement clause of the Lanham Act, Section 2(a), prohibited the registration of trademarks that my, “disparage ... or bring ... into contemp[t] or disrepute” any “persons, living or dead.” 15 U.S.C. §1051(a).

An Asian-American rock band, “The Slants,” were refused registration of their band name based on a 2(a) rejection that “the slants” is a derogatory term for Asians. The Supreme Court held that the disparagement clause was not narrowly drawn enough to prevent trademarks that support discrimination. The court stated that the clause, “reaches any trademark that disparages any person, group, or institution. It applies to trademarks like the following: ‘Down with racists,’ ‘Down with sexists,’ ‘Down with homophobes.’ It is not an anti-discrimination clause; it is a happy-talk clause. In this way, it goes much further than is necessary to serve the interest asserted.”

Marshall Tucker Band TM Action Dismissed Because Mark Not Used In Commerce

Marshall Tucker Band v. MT Industries, No. 16-420 (D. S.C. Mar. 1, 2017).

In an action by the Marshall Tucker Band alleging trademark infringement, dilution, declaratory judgment, and trademark cancellation under federal law and a host of state-law claims, the Court granted the defendants' Rule 12(b)(6) motion to dismiss because the complaint failed to allege that the defendant actually uses the mark in commerce.  Instead, the complaint relied upon statements made by the defendant  when it applied to register two federal trademarks consisting of the mark (The Marshall Tucker Band) to satisfy the use in commerce requirement.  The Court held: "Completely absent from the SAC are any allegations of Defendants’ actual use of the Mark in commerce. Inasmuch as registration of the Mark, without more, is insufficient to constitute a use in commerce, Plaintiffs’ federal trademark infringement claim fails as a matter of law."  The trademark dilution claim was dismissed for the same reason, and the Court declined to exercise supplemental jurisdiction over the remaining state law claims.

"DJ Logic" Not Famous Enough to Win Trademark Case Against Rapper "Logic"

Kibler v. Hall, No. 15-2516 (6th Cir. Dec. 13, 2016).

The Sixth Circuit affirmed summary judgment for defendants, holding that a disc jockey named "DJ Logic" was not famous enough to succeed on his trademark dilution claims against the rapper performing as "Logic" and there was no likelihood of consumer confusion.  As to the trademark infringement claim, the parties agreed that the DJ's mark was protectable so the Court focused on "the likelihood that potential buyers of rap would believe Kibler’s music is Hall’s or vice-versa." and applied the 6th Circuit's balancing-test to find that "because no reasonable jury could find a likelihood of confusion based solely on a few instances of actual confusion, defendants are entitled to judgment as a matter of law on Kibler’s federal trademark infringement and related state law claims."  As to the dilution claim, 

Kibler’s evidence clearly falls short of the high threshold for fame under the Lanham Act. “DJ LOGIC” is simply in a different league from the marks that have met this threshold. Indeed, having failed to show that his mark is commercially strong for even trademark infringement purposes, Kibler cannot point to a triable issue here.

Court Clarifies Scope of Injunction in "Commodores" Band Name Dispute

Commodores Entertainment v. McClary, No. 14-cv-1335 (M.D. Fla. Nov. 15, 2016).

The Defendant's post-injunction actions triggered a motion by the Plaintiff clarifying the scope of the injunction, and the Court found that the Revised Band Name (COMMODORES’ Founder Thomas McClary” or “COMMODORES’ founder Thomas McClary") improperly suggested a sponsorship or endorsement by Plaintiff.  The revised band name not only placed “Commodores” before the historical reference,  but also emphasized it by writing it entirely in capital letters.  "Such placement and prominence, in combination with the overlapping audiences for the two bands, at minimum, suggests endorsement and, thus, continues to cause a likelihood of confusion between the two bands."  However, the Court found that Defendant could use Plaintiff’s Marks in a historically accurate manner so long as: (1) Plaintiff’s Marks are preceded by the historically accurate reference; and (2) the Marks are not more prominent than other words contained in the band name.  "For instance, Mr. McClary’s band name could be 'Thomas McClary original founding member of the Commodores' or 'Thomas McClary formerly of the Commodores.'” 

Jury Finds No Likelihood Of Confusion In "Boston" Band Name Trial

Scholz v. Goudreau, No. 13-10951 (D. Mass. Nov. 1, 2016).

The plaintiff, a founder of the rock group "Boston," did not prove a likelihood of confusion between his current band and the band of the defendant, a former member of "Boston," finds a Massachusetts federal jury after relatively brief deliberations on plaintiff's trademark infringement claims.

Rapper Enjoined From Using Burberry Trademarks

Burberry Ltd. v. Moise, No. 1:16-cv-05943 (S.D.N.Y. Aug. 15, 2016) [Doc. 30].

Luxury brand Burberry successfully obtained a preliminary injunction against rapper Perry Moise based on his use of various Burberry-related marks.  The preliminary injunction restrains Perry from using the marks, displaying the marks, using "Burberry Perry" or "Burberry" as usernames on his social media accounts, and otherwise engaging in activity associating himself with Burberry.  Perry was also ordered to remove all references to Burberry on his Soundcloud and iTunes pages, from his email address, and from his various social media accounts.  Plaintiff was ordered to post a $5,000 bond.

Former Commodores Band-Member Properly Enjoined From Using "Commodores" Or Performing Under "Commodores" Name

Commodores Entertainment Corp. v. McClary, No. 14-14883 (11th Cir. Apr. 15, 2016).

The 11th Circuit affirmed a preliminary injunction enjoining the defendants from using the "The Commodores" mark and from performing under the name "The Commodores featuring Thomas McClary" or "The 2014 Commodores."  The Commodores were a popular funk/soul group on the Motown label in the 1970s (hits included Brick House and Three Times a Lady).  In the early 1980s, two fo the original members of hte group left to embark on solo careers, including defendant McClary.  The remaining members, as the plaintiff corporation, continued to perform and registered four trademarks.  In 2014, defendant McClaray began performing songs made famous by the band in the 1970s with his own band called "The Commodores featuring Thomas McClary" or "The 2014 Commodores."  This use gave rise to litigation, and the lower court granted plaintiff a preliminary injunction.  The 11th Circuit affirmed, finding that defendant's use was likely to confuse and therefore plaintiff was likely to succeed on the merits, and further that the plaintiff had standing and had made a showing of irreparable harm.  Lastly, the Court found that there was no error with the distric court's conclusion that the defendants may be enjoined extraterritorially (i.e., outside of the United States).

Rapper Can't Use "Rolls Royce" Name Or Images

Rolls-Royce Motor Cards v. Davis, No. 15-0417 (D.N.J. Mar. 11, 2016).

On an unopposed motion for default judgment, the Court entered a permanant injunction restraining the defendant rapper from using the name "Rolls Royce Rizzy" and using Rolls Royce imagery.  Plaintiff brought claims for trademark infringement, unfair competition, false designation of origin, and trademark dilution under the Lanham Act, and was awarded default judgment on those claims.  However, Plaintiff was not awarded default judgment on its claim for unfair competition under New Jersey common law.

Most "BOSTON" Trademark Claims Dismissed In Dispute Between Former Band Members

Scholz v. Goudreau, No. 13-cv-10951 (D. Mass. Memo & Order Sep. 21, 2015).

In a trademark dispute between two original members of the band BOSTON, the Court dismissed most of the claims against a guitarist on the band's first two albums concerning the promotion of his current musical endeavors.  Plaintiff's direct trademark infringement claims were dismissed with respect to various advertisements and performances, as well as defendant's use of meta-tags on his website.  The contributory infringement claim survived summary judgment only with respect to defendant's invovlement with one band on the issue of direct control and monitoring of that band's advertisements and promotions.  Plaintiff's claim for dilution by tarnishment failed because the alleged use, in connection with a political event, was not a use in commerce.  As to unfair competition under the Lanham Act and Mass. state common law, plaintiff failed to establish evidence of reputational injury.  As to breach of contract, plaintiff fialued to establish that defendant (and not third parties) violated a prior settlement agreement by deviating from the agreed to term "formerly of BOSTON".  As to the "Truth In Music Statute," under Mass. state law, the Court found the statute applicable only to performances in Mass., and as to the two subject performances in the state, neither group sought to perform under the BOSTON name.

Jackson 5 Tribute Band Trademark Cancelled

Wonderbread 5 v. Gilles, TTAB No. 92052150 (TTAB 6/30/2015).

This case involves a dispute about who owns the band’s name in the wake of the departure of one of the band’s five members.  The band, a Jackson 5 tribute band, filed a petition to cancel a trademark registration obtained by a former member who filed the application for the registration only 3 days after he was fired from the band.  The court found by a preponderance of the evidence that the mark WONDERBREAD 5 was not “personal” to the applicant/departing-band-member (Gilles), or for that matter, any of the band members as individual musicians.  Rather, the mark signified the collective “style and quality” of the group, and the partnership, not the departing band member, controlled those qualities. That is to say, the mark WONDERBREAD 5 identified a Jackson 5 tribute band, not a “particular performer combination.”  Thus, because the consuming public did not associate the mark with a particular member (but rather, a style of tribute band), the applicant did not "own" the mark when he applied for it.  The application was therefore void ab initio, and the registration was cancelled.

Former Band Member Enjoined From Using "Commodores" Mark For His New Band

Commodores Entertainment Corp. v. Thomas McClary, 6:14-cv-1335 (M.D. Fla. dated Oct. 9, 2014).

The Court granted the band "The Commodores" a preliminary injunction enjoining one of its founding members from performing under the name “The Commodores featuring Thomas McClary” or “The 2014 Commodores.”

First, the Court found that Plaintiff has demonstrated a substantial likelihood of success on its trademark infringement claim.  Defendant had left the band in 1984.  "When members of a band dispute ownership of a mark associated with the band, courts have found that members who remain active and associated with the band have better title to the mark than those who do not."  Continuing, "Defendant no longer has a valid claim to ownership over the Marks. Rather, the band members who remained after Defendant left in 1984 have prevailing ownership because they maintained continuity with the group and have been in a position to control the quality of services of the Marks associated with the band name. Defendant has not put forward any evidence to suggest that he maintained quality or control over the Marks associated with The Commodores after he left; rather, it was the other original band members who stayed with the group that continued to control the nature and quality of the Marks, went on to win a Grammy, and further expanded the band’s fan base and recognition."  (Internal cit. om.).

The Court also found that there is a likelihood that consumers would confuse the Grammy award winning band, ‘the Commodores,’ with the ‘The Commodores featuring Thomas McClary’ and/or ‘The 2014 Commodores'.  Due to the trademark infringement, there was a presumption of irreparable harm, and the Court found the balance of equities in plaintiff's favor.

Injunction Entered On Use Of Platters Band Name

Herb Reed Enterprises, Inc. v. Monroe Powell's Platters, LLC, No. 2:11-cv-02010 (D. Nev. June 17, 2014).

The Court granted plaintiffs' motion for summary judgment, granting plaintiffs approximately $60,000 and enjoining defendants from using the mark THE PLATTERS in connection with any vocal group or live musical performance.  First, the Court found that plaintiffs have common law rights in THE PLATTERS mark, even though they do not have a registered mark in THE PLATTERS, based on their registered mark HERB REED AND THE PLATTERS.  There was no genuine issue of fact that plaintiffs owned interests in THE PLATTERS mark and that those interests were superior to defendants.  Second, the court found a likelihood of confusion under the 9th Circuit test.  Accordingly, a permanent injunction was appropriate.  Damages were also awarded for both domestic and foreign profits.

Band Refused Trademark Registration For Name "The Slants"

In re Simon Shiao Tam, Serial No. 85472044 (TTAB Sep. 26, 2013).

A band sought to register its name "The Slants" with the U.S. Patent & Trademark Office.  Registration was refused under Section 2(a) of the Trademark Act, 15 U.S.C. § 1052(a), on the ground that applicant’s mark “consists of or includes matter which may disparage or bring into contempt or disrepute persons, institutions, beliefs or national symbols under Trademark Act Section 2(a).”  The Trademark Trial and Appeal Board (TTAB) affirmed the examining attorney's refusal to register.

The TTAB found, "Thus, it is abundantly clear from the record not only that THE SLANTS, used for the identified services, would have the 'likely meaning' of people of Asian descent but also that such meaning has been so perceived and has prompted significant responses by prospective attendees or hosts of the band’s performances. The evidence of public perception of the meaning of THE SLANTS, as used in connection with applicant’s services, shows that meaning to be a derogatory reference to people of Asian descent."  The TTAB also rejected the applicant's argument that it had "good intentions" (e.g., taking ownership of a disparaging term): "the fact that applicant has good intentions with its use of the term does not obviate the fact that a substantial composite of the referenced group find the term objectionable".  Lastly, the TTAB found that the record established that the slang term “slant” or its plural “slants,” when used to indicate
ethnicity, is disparaging to a substantial composite of the referenced group.

Trademark Claim Over Band Name Dismissed For Lack Of Standing And Failure To State A Claim

Newsboys v. Warner Bros. Records Inc. et al., No. 3:12-cv-0678 (M.D. Tenn. - Nashville filed July 11, 2013) [Doc. 41].

Plaintiffs filed suit under the Lanham Act against defendants -- music distributors and the band New Boyz -- alleging trademark infringement of the mark NEWSBOYS.  The court concluded that the plaintiffs Newsboys Inc. lacked standing to pursue its claims because the other plaintiff, Wesley Campbell, is the sole owner of the Newboys trademark.  Also, the Court concluded that because Campbell's registered trademark is limited to "live musical performances of a religious nature rendered by a group," he had failed to allege plausible facts of the likelihood of confusion of the two groups.

Platters Injunction

Herb Reed Enterprises, LLC v. Florida Entertainment Management, Inc., No. 2:12-cv-00560 (D. Nev. July 24, 2012) [Doc. 43].

In this case, the assignee of founding band member Herb Reed asks the Court to tell Defendants – who promote an unlicensed show featuring a group called The Platters – that “It Isn't Right.”  The Court granted Plaintiff's motion for a preliminary injunction enjoining defendants and their agents from use of the mark “The Platters,” and any equivalent or phonetically similar names or marks, in connection with any vocal group in any advertisements, promotional marketing, or other materials, with two narrow exceptions.  First, Defendants could use the mark “The Platters” in connection with the names that included the words "tribute to" or "salute to" the Platters.  Second, defendants could use the mark “The Platters” in any other manner with Plaintiff's permission.

LIVE Former Singer Sued For Use Of Band Name

Action Front Unlimited Inc. v. Edward Kowalczyk, No. 12-cv-5483 (SDNY complaint filed July 17, 2012).

Plaintiff furnishes the services of the rock band "Live" and owns numerous trademarks in the name LIVE.  Plaintiff claims that defendant, the former lead singer of Live, is committing trademark infringement by promoting and advertising his musical performances under the name ED KOWALCZYK OF LIVE.

Vegas Singer Enjoined From Using "Platters" Name

Herb Reed Enterprises, Inc. v. Monroe Powell's Platters, LLC, No. 2:11-cv-02010 (D. Nev. filed Feb. 1, 2012)[Doc. 26].

The Court entered a preliminary injunction enjoining a Las Vegas singer from using the name of 1950s vocal group The Platters. The decision traced the long-history of litigation between members of the band and their use of the band name, and then underwent the preliminary injunction standard for trademark infringement. Plaintiff showed a likelihood of success on its ownership in the mark, and that it acquired rights to the mark through prior use. Additionally, plaintiff established a likelihood of success on its claim that “The Platters featuring

Monroe Powell” is confusingly similar to “The Platters.”