Access practice tools, as well as industry leading news, customizable alerts, dockets, and primary content, including a comprehensive collection of case law, dockets, and regulations. Leverage...
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.
To contact the reporter on this story: Blake Brittain in Washington at email@example.com
To contact the editor responsible for this story: Tom P. Taylor at firstname.lastname@example.org
All Bloomberg BNA treatises are available on standing order, which ensures you will always receive the most current edition of the book or supplement of the title you have ordered from Bloomberg BNA’s book division. As soon as a new supplement or edition is published (usually annually) for a title you’ve previously purchased and requested to be placed on standing order, we’ll ship it to you to review for 30 days without any obligation. During this period, you can either (a) honor the invoice and receive a 5% discount (in addition to any other discounts you may qualify for) off the then-current price of the update, plus shipping and handling or (b) return the book(s), in which case, your invoice will be cancelled upon receipt of the book(s). Call us for a prepaid UPS label for your return. It’s as simple and easy as that. Most importantly, standing orders mean you will never have to worry about the timeliness of the information you’re relying on. And, you may discontinue standing orders at any time by contacting us at 1.800.960.1220 or by sending an email to email@example.com.
Put me on standing order at a 5% discount off list price of all future updates, in addition to any other discounts I may quality for. (Returnable within 30 days.)
Notify me when updates are available (No standing order will be created).
This Bloomberg BNA report is available on standing order, which ensures you will all receive the latest edition. This report is updated annually and we will send you the latest edition once it has been published. By signing up for standing order you will never have to worry about the timeliness of the information you need. And, you may discontinue standing orders at any time by contacting us at 1.800.372.1033, option 5, or by sending us an email to firstname.lastname@example.org.
Put me on standing order
Notify me when new releases are available (no standing order will be created)