What happens if two companies, unlikely to be confusing to the general public, claim rights to the same name? Is there still a “likelihood of confusion?”
This is the precise question that the country music trio, Lady A, is currently facing. In May of 2010, the country trio applied to register the name Lady A with the U.S. Patent and Trademark Office. When no opposition was forthcoming, the application was officially registered in July of 2011.
After changing their band name from Lady Antebellum to Lady A (in light of national conversations about racism), the country trio found themselves in hot water with “Lady A”, a jazz singer from Seattle, Washington. Anita White had been singing and recording music using the name Lady A for over 20 years, and was quick to speak out against the country trios’ use of–what she considered– her name.
While Ms. White went public with her opposition, the newly branded trio headed to federal court in Tennessee seeking to affirm their trademark with the court’s permission to continue using the name. Ms. White responded by countersuing, stating her claim to the use of Lady A in connection with music, recording, and additional entertainment services predated the trio’s case regarding trademark rights and should solely belong to her, also requesting $10,000,000.00.
According to the United States Patent and Trademark Office (USPTO), a trademark “[I]s a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others” (Trademark, Patent, or Copyright?, 2021). This ambiguous definition leaves much to be determined when considering how a trademark is designated without official registration, however “Lady A” clearly qualifies as a product capable of being trademarked. The question is, can Anita White’s previous use of the name “Lady A” prevent Lady Antebellum from using (and registering) this name?
A court is likely to look at the length of time the name was used; as well as, the scope of use when determining whether to honor the countersuit request banning the use of Lady A by the country trio. Simply a name or a phrase will not be enough to satisfy trademark requirements. The court will rely on facts that can be proven when resolving who has a greater or exclusive right to the name. Ms. White will most likely need to prove that she simply did not call herself Lady A, rather, the name is a brand that has continually been used in ticket sales, flyers, or other mediums associated with advertising.
When the country trio filed the application for the trademark, they may have created an argument that this was the first legal attempt to brand the name and therefore the right to use belongs to them. However, Ms. White will be able to argue that her use of the name had longevity. A court will look at how each party used the name and what name was used in advertisements in making their determination. Essentially, what becomes more important: duration of use, or first to register?
Based on previous decisions, it seems likely that the court will find a co-existence between the two parties is proper. The court could allow both parties to have a concurrent right to use the name, thereby granting the trio’s request since it is possible to trademark a name, brand, or merchandise on the local level, meaning that the Lady A’s would have concurrent use. However, a court may also grant trademark rights on a federal level, meaning sole trademark rights would belong to one party. If this is the case, one of the parties could shut down the other, effectively forcing a rebrand.
There are solid arguments on both sides in this case and the court will likely have an interesting time balancing the various factors. Regardless of the outcome, the issues presented in this scenario are an important lesson for entrepreneurs seeking guidance on how to brand themselves and how to most effectively use trademarks to their advantage: register your trademarks early, so that you can avoid competitors from popping up and infringing on your rights later on.