Trademarks: Register Early and Register Often

Recently a lawsuit over a prominent band’s name was filed in state court in Virginia. At first glance, the lawsuit has  Trademarks: Register Early and Register Often by Mark Kaufmanthe ingredients required for an intellectual property case eligible for federal jurisdiction. So why is it being argued in state court?

The lead plaintiff, Aston “Family Man” Barrett, began playing with Bob Marley and his band The Wailers in 1969. After the original band members dropped out, Barrett was the last remaining original member until he quit earlier this year. However, The Wailers did not miss a beat and kept touring all over the world.

Although there are U.S. trademark registration for sound and video recordings featuring music, t-shirts, and all-purpose carrying bags (really?), no one registered for “entertainment services featuring live musical performances” or the equivalent. (Maybe they should have skipped registering the bags…)

In his complaint filed August 24, 2016, Barrett and his co-plaintiffs contend that The Wailers are using their names and likenesses in promotional materials without their permission. Plaintiffs make the additional claim that The Wailers are engaging in fraud on the public by implying that the current iteration of The Wailers contains members of the original band. This assertion is based on a Virginia statute:

  • Va. Code Section 59.1-466.2: [It is] unlawful for any performer or performing group, or its agents, to advertise or conduct a live musical performance or production in the Commonwealth through the use of affiliation, connection, or association, known to be false, deceptive, or misleading, with the intent to defraud the public, between a performing group and a recording group.

I suspect the fraud claim arose out of concern that Mr. Barrett and his co-plaintiffs do not feel they have a claim under federal trademark law. And in my view, they are right.

Trademark rights in the U.S. are based on earliest and continuous use. If Barrett were still part of the band, he could say he has been using the name since 1969—but in fact he has abandoned that claim by leaving the group. To establish federal trademark rights in federal court, he would have had to contend with the fact that he is no longer in the band—which would undermine his proving continuous use.

My opinion? The test under trademark law is whether the public is “likely to be confused” by being confronted with two similar trademarks. So to get around that argument, but toward the same end, Barrett is alleging that the new Wailers are defrauding the public. Supposedly, anyone seeing a promotional poster might think that the original band is appearing—and no one from the original band is in the remaining group.

I always appreciate a creative approach when you don’t have the facts to fit within something more conventional, but I think Barrett’s argument is weak. The new Wailers are certainly not going to confuse the general public into thinking Bob Marley is in the band, since he has been dead for 35 years. I also appreciate honoring the musicians who were part of creating that band, and creating a sound that has changed modern music (and the reggae fan sites seem to suggest that honoring the originators should dominate the law), but that doesn’t give them exclusive rights to own the name after they have stopped using it.

When all is said and done, if Mr. Barrett and his co-plaintiffs succeed, they might only have protections under Virginia law. The moral of this tale is to register any federal trademark rights early, and to register often—so that any claims you may have can be enforced nationwide.

Mark Kaufman

Mark S. Kaufman
Kaufman & Kahn

747 Third Avenue
32nd Floor
New York, NY 10017
Tel. (212) 293-5556
Fax. (212) 355-5009

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