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Founder of Commodores Loses Trademark Battle, Again

By George Khoury, Esq. on January 11, 2018 | Last updated on March 21, 2019

A year and a half after losing a four-day trial, former Commodores guitarist, and founding member, Thomas McClary was dealt a blow by the Eleventh Circuit Court of Appeals.

McClary used the Commodores name for his band in 2014. Not surprisingly, the surviving members of the Commodores (that never left the band) filed a lawsuit against McClary claiming trademark infringement, and were awarded a permanent injunction. On appeal, the permanent injunction was affirmed.

The Band Partnership

While a creative person's interest in an idea or work doesn't necessarily end when they walk away, under the band's own partnership agreement, that's exactly what happens and happened. By quitting the band, McClary had to disclaim the right to use the name, and the court found this agreement binding.

The appellate court relied heavily on the fact that (two years before the group won a Grammy) McClary left the group in 1984 in order to pursue a solo career, much like Lionel Richie, who left the band two years earlier to find major success as a solo artist. In addition to the clear lack of McClary from the band after 1984, the court also relied on a letter allegedly penned by McClary that said he was leaving the band.

On appeal, McClary seemed to pull out the kitchen sink and attempted to make anything stick, but failed. And while he may be looking to request en banc rehearing, or seek High Court review, it's probably not likely to happen as the case might not be too hot ta trot. As the appellate panel succinctly explained: "While an individual might identify with a name, he still might not have the right to use that name to identify himself in commerce."

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