Thomas McClary (“McClary) is a founding member of the group, “The Commodores” and parted ways with his group members a while back, but he doesn’t want to part ways with The Commodores brand. Apparently, McClary is trying to remain relevant in the music industry and was doing shows under the name “The Commodores Experience featuring Thomas McClary”. Only problem is, the Commodores Entertainment Corp (the “Commodores”) owns the rights to the trademark “The Commodores” and McClary’s acts are a violation of that right. The Commodores sued McClary back in 2014 for its unauthorized use of their trademark and a Florida court issued an injunction against McClary, prohibiting him from its use back in 2016. The court at that time reasoned that any use of the Commodores name was likely to cause confusion to the consumer with regard to whom they were going to see at a show when the Commodores name is mentioned. The Commodores filed a complaint against McClary, contending that he is in violation of the injunction and should be held in contempt and sanctioned. And the 11th circuit upheld it as a clear violation of the trademark. McClearly is permitted to use the name “Commodores” to properly identify himself in commerce, but that’s about it.
A trademark is a word, symbol, phrase, design, or combination of any of those things used to distinguish the goods and/or services from those of another. Marks must be associated with specific goods and/or services in order to obtain registration and protection. Trademarks must be renewed every ten (10) years and applicants must be able to show present use of the mark in commerce at that time of renewal. The Commodores filed their first trademark registration in July 1999 and renewed it in 2010. The second trademark registration was filed in April 2000 and renewed in 2011. The Commodores first mark was registered in connection with entertainment services, namely live performances by a musical and vocal group, and their second mark was registered in connection with musical sound and video recordings; and, the Commodores Entertainment Corp is listed as the owner of the mark.
Trademark infringement is the unauthorized use of a trademark in a manner that is likely to cause confusion, deception, or mistake as to the source of the goods and/or services. The hallmark of whether or not infringement is found is the “likelihood of confusion” test. This means that unauthorized use of a trademark that is not likely to cause confusion, deception, or mistake as to the source of goods and/or services, may not be trademark infringement. Courts generally conduct a balancing test and weigh a number of factors to determine whether a likelihood of confusion is present. While the factor tests vary by circuit, most of them are similar and include the strength of the marks, relatedness of the goods and/or services, similarity of the marks, evidence of actual confusion, marketing channels used, likely degree of purchaser care, intent of applicant in selecting mark, and the likelihood of expansion of product lines. In analyzing the likelihood of confusion using these factors, there is no mathematical precision and not every factor may apply in each case; the factors are to be used as a guide in determining whether or not confusion is likely. Applying the factors to the case at hand, given that the marks are identical and being used in connection with the same class of services, it makes perfect sense that the court found in favor of The Commodores initially, and are likely to find in favor of them once again.
Sorry McClary, you’re going to have to stand on your own name to sell out these shows. It kind of sucks though because he was actually one of the Commodores. That’s why ownership of your intellectual property is so important. If he had some ownership rights in the name, he probably wouldn’t have had this problem. But hey, you live, and you learn.
Lerae Funderburg, Esq. is the Managing Attorney at Funderburg Law, LLC, an Atlanta based entertainment law firm. Lerae has almost 10 years of experience in entertainment law in both music law and film law. As an entertainment lawyer and blogger, Lerae keeps her viewers and subscribers up to date with entertainment legal news, especially in the areas of music. If you are local to Atlanta, call and set up a consultation! She would love to hear from you!