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By Blake Brittain
Oct. 16 — A former member of the Commodores performing with a new band cannot use the “Commodores” name because of a likelihood of confusion with the original—still-active—R&B group, the U.S. District Court for the Middle District of Florida ruled in an order released Oct. 15.
The court's ruling grants the remaining members of the Commodores a preliminary injunction against former guitarist Thomas McClary, concluding that his use of the Commodores name while performing the band's music likely infringed the remaining Commodores' marks and justified an immediate injunction to enjoin McClary from further use of the name.
The court had denied the Commodores a temporary restraining order against McClary in August, saying that there was no threat of imminent harm from his use of the name.
McClary was a founding member of the group, which formed at the Tuskegee Institute in 1968. The band rose to fame in the 1970s with then-lead singer Lionel Richie, for Motown hits like “Brick House," “Easy,” and “Three Times a Lady.” McClary left the band in 1984 to record as a solo artist.
The remaining members of the band continue to record and tour as the Commodores, and registered four band-related trademarks with the PTO in 2001 as Commodores Entm't Corp.
McClary recently formed a new band called “The Commodores Featuring Thomas McClary,” which he also calls “The 2014 Commodores.” The band has played several Commodores hits in concert, and McClary has not presented the band as being different from the original Commodores.
Commodores Entm't Corp. sued after band members were asked about a performance by McClary's band, with the questioner assuming that he had attended a Commodores concert. A concert venue director had also hired McClary's band believing it to be the original Commodores.
After determining that the Commodores had “prevailing ownership” of the four marks, the court ruled that the band's infringement claim had the “substantial likelihood of success” required for a preliminary injunction, with a probable likelihood of confusion based on the similarity of “The Commodores Featuring Thomas McClary” to “The Commodores,” and similarities in the bands' music, advertising, fan bases and concert venues.
Judge Roy B. Dalton Jr. also said that actual confusion existed, “given the fact that fans and executive directors of venues have confused Defendant's band with The Commodores.”
The court also determined that the infringement claim's likelihood of success created a presumption of the “irreparable harm” necessary to justify a preliminary injunction.
Commodores Entm't Corp. was represented by Dean Adrian Kent of Trenam Kemker, Tampa, Fla. McClary was represented by Beryl B. Thompson-McClary, Orlando, Fla.
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