Antebellum: Existing before war, especially American Civil War (Merriam-Webster) This summer, as our nation began in earnest a reckoning regarding the vestiges of the evil institution of slavery, a popular country music band decided it only proper to jettison this term from its band name. Lady Antebellum announced it would no longer go by that name, but would instead be called “Lady A.” This could indeed be considered a noble move. That is, if “Lady A” was not already the service mark used by blues singer Anita White for over 20 years!
This is a good place to interject a bit of trademark law. Every small business owner should be aware of at least a few trademark law concepts as you build your business. The first among them is how trademark rights are attained. Trademark rights are amassed in two ways here in the United States; by common law usage and by federal registration. When a business begins using a non-generic identifier for their business that allows customers to recognize certain goods or services come from that particular business, that identifier is considered a trademark or service mark. It does not need to be registered with the United States Patent and Trademark Office in order to receive protection. As a matter of fact, the stated purpose of trademark law is to serve the consuming public and prevent customers from being confused as to the source of goods or services. So, usage of the mark in a state or region develops what are known as common law rights for the business in that state or region. Federal registration, on the other hand, extends protection across the entire country if the owner can show she is using the mark in interstate commerce (across state lines).
With that primer, you might ask “Shouldn’t Ms. White have federally registered her trademark if she was touring or selling music across the country?” Yes. In my opinion. But her failure to do so does not obviate her trademark rights which she developed over two decades.
Now, there is a lawsuit. Why? Because talks between the parties did not resolve the matter. Again, in my view, a reasonable resolution should be able to be had between these parties. Ostensibly, they were attempting to work out a deal whereby the band and Ms. White would continue to coexist and perhaps even collaborate. That’s the smarter business move in my opinion. However, talks broke down and the band is asking a court for what is known as a declaratory judgment. That is when a court lets the parties know who owns what and what the respective parties are able to do and what they’re not able to do based on their respective rights. One of the complications in the band’s case is that the federal registration the band asserts (U.S. Reg. No, 4,030,752) for Lady A is for clothing in international class 25; not entertainment services in international class 41. I will not go into this aspect too much but suffice it to say the band does not have a slam dunk. Further, if Ms. White can prove touring and/or music sales across the country since well before the band filed its federal trademark application(s) (and before the use dates alleged in those applications) there is a potential that Ms. White could walk away with an injunction preventing the band from using Lady A for entertainment services.
What the band may have meant for good has the potential here to backfire bigtime. Changing the name; good. Being perceived to kick a Black woman’s rights to the curb; not good. While I cannot give legal advice in these articles, I will simply say…some disputes really should be hammered out in a conference room rather than a courtroom.
And to all you small business owners out there I’ll ask the following as merely food for thought; “Shouldn’t you have a lawyer on your team knowledgeable and experienced in patent, trademark and copyright law to resolve and perhaps even prevent these kinds of problems?”
©2020 Albert F. Davis, Esq.
This law update is intended for general information purposes only. One should not consider the update legal advice or legal opinions relating to any specific facts or circumstances. An attorney-client relationship is not created by reading this update. Please feel free to contact A.F. DAVIS LAW for further information.