While fans of the country music band Lady Antebellum have long abbreviated the band’s name for convenience, the band announced on June 11, 2020 that it would be officially changing its name to “Lady A.” Merriam Webster defines “antebellum” as “existing before a war, especially existing before the American Civil War.” And while the band’s motivations for the name change seem pure, the name change itself created ripples in the trademark and entertainment world that should have been anticipated and could have been avoided.
Unfortunately for both musical acts, the term “LADY A” was already spoken for. Specifically, the term is the stage name of blues musician Anita White, who has been playing music under the name for more than twenty years, according to Rolling Stone. Assuming Ms. White’s date of first use to be sometime in the late 1990’s or early 2000’s, she is certain to have priority of use over Nashville’s junior user, who released their first album in 2008 and whose website touts, “13 years together.”
This issue demonstrates several considerations in name-changes, trademark registrations, and trademark law generally. First, it is important to note that the Trademark Act seeks to address this very situation! The Act not only seeks to prevent the “misimpression” that the senior user (the blues singer) is the source of a junior user’s goods and services, but it also protects against “reverse confusion,” where a significantly larger or prominent junior user (Nashville) is perceived as the source of a smaller, senior user’s goods and/or services such that the “senior user may experience diminution or even loss of its mark’s identity and goodwill due to extensive use of a confusingly similar mark by the junior user” for related goods and/or services. See In re i.am.symbolic, llc, 866 F.3d 1315, 1329, 123 USPQ2d 1744, 1752 (Fed. Cir. 2017) (quoting In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993)); Fisons Horticulture, Inc. v. Vigoro Indust., Inc., 30 F.3d 466, 474-75, 31 USPQ2d 1592, 1597-98 (3d Cir. 1994).
Loss of the mark and the rights associated therewith are the very sorts of issues the blues singer must now be concerned with. When Rolling Stone magazine refers to “Lady A,” separate and aside from the current story, it will likely be in reference to the country band. A few years from now, the senior user may have all but lost her identity as a result of this name change. Had the country band been more diligent in conducting a trademark search before the name change, might they have avoided all of this? Perhaps.
Alternatively, perhaps Ms. White could have put herself in a better position than she is currently in by taking actions to oppose the registrations of the mark “LADY A” by the Nashville band almost a DECADE ago! The term “LADY A” is a registered trademark appearing in U.S. Registrations 4004006, 4030752, and 4292685, all belonging to the junior user. These marks are registered for downloadable sound recordings in International Class 009, clothing in International Class 025, and live musical performances in International Class 041. Further, the most recent of the three registered more than seven years ago.
Trademark Act Section 7(b), 15 U.S.C. §1057(b), provides that a certificate of registration on the Principal Register (as the junior user here has) is prima facie evidence of the validity of the registration, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the mark in commerce on or in connection with the goods and/or services specified in the certificate. Thus, Nashville’s own Lady A is presumed to have the exclusive right to the term for the relevant goods and services. Further, the USPTO’s Trademark Status and Document Retrieval System indicates that on June 28, 2017, the Office accepted the junior user’s declaration of incontestability under Section 15 of the Trademark Act. This protection is available when a mark has been registered for five or more years and limits the sorts of attacks that can be made to cancel the mark. Also, Section 14 of the Trademark Act requires that cancellations for likelihood of confusion be filed within five years of the mark’s registration, making an incontestable mark essentially “2(d)-proof” without a showing of other impropriety (i.e., fraud of the office, overly broad registrations including goods/services not offered in commerce). See TBMP §1605.06.
Had Ms. White registered the mark “LADY A” when she first began using it, she’d have the strongest case for infringement and likely the most lucrative options for settlement. However, recent updates regarding this story suggest that the respective Ladies A have reached “common ground“, and that ground likely has several zeros.
If your Grammy-winning country band is seeking to change its name, the attorneys of Brackett & Ellis are happy to help.