Your name is your identity. Do not let anyone erase you without a “formal” fight.
Wheww where to start? In the middle of a global pandemic, a number of big businesses, music artists and sports organizations finally understand that their brands are racially problematic. From Quaker Oats Company changing the name of their famous pancake line, Aunt Jemima, to the Washington Redskins finally deciding to undergo rebranding (cuz folks haven’t been calling for that change for years), there is a global reckoning happening. We (black folks) are tired and now white people and organizations are starting to see why.
If ever I needed a strong example of why formal registration of one’s trademark is so important, this situation involving Lady Antebellum is definitely IT! The mega successful country group decided to get in line with all the other companies reexamining their brands and the racially insensitive messages they might be inadvertently sending. With the public outcry over the unjust death of Georgia Floyd, the group realized their band name, particularly Antebellum, is associated with Slavery in the South, racial oppression, etc. Companies have sent out all the on brand emails in support of “Black Lives Matter,” speaking out against injustice and pledging funds to worthy organizations in the fight against racism and police brutality. I assume, wanting to position themselves as an “ally,” hence the name change decision.
I must note here that Lady Antebellum has a formal business structure or Tennessee Limited Liability Company that is called Lady A Entertainment LLC. I am going to assume they filed a DBA to formerly be known as Lady Antebellum. The group has five USPTO registrations for Lady Antebellum covering the protection classes of posters, musical recordings, clothing (namely t-shirts), entertainment services (live performances) and online retail services. All of these filings were filed in 2010 but the earliest use of the name began in about 2006.
While it seems that “Lady A” is more of a nickname that was used occasionally , the group formally registered the name with the USPTO in three protection classes, musical recordings, clothing, namely t-shirts and entertainment services. The earliest usage claimed was 2006 but formal usage in commerce is claimed for 2012.
When the Lady Antebellum made the announcement to retire use of Antebellum to take up Lady A, the massive media attention caught the eye of blues singer Anita White who has used the stage name Lady A for 20 years or more. So what does this mean the legal context?
Trademark rights or the ability to claim ownership in a protection class happens based upon actual use in commerce and then later registered with the USPTO. If one’s use is just based upon making sales whether a service or product, the company or person receives common law rights in every place a sale has been made and within the geographical area that they have established themselves in. Formal registration once use is established, gives protection all over the United States regardless of whether or not a sale has been made outside of the established area.
If Ms. White who is a black woman, established use of Lady A 20 years ago, just counting back to 2000,that would give her superior or senior rights in every place she’s toured, made formal music sales or merchandise and is well before Lady Antebellum claimed use in 2006. However, because Lady A received formal registration in 2010, Ms. White rights would be limited only to the places in which she has an established fan base. So even though Lady Antebellum has solid legal footing based upon their prior registrations, morally it does not look good to assert domination over name that a black woman has been using since 2000 when the main reason for the name change was to address the racial insensitivity of the prior name.
Lady Antebellum had been in several meetings with Ms. White who has done a number of interviews since the news broke and her asserting herself. She stated in Roland Martin’s Facebook show that her counsel suggested “Lady A the band” which they declined. Her counsel suggested assisting Ms. White with rebranding herself under a different name and assisting financially and with management in the effort. The last suggestion of course was monetary, in the formal of monies going directly to Ms. White and to charity. Those offers were declined and now Lady Antebellum has launched a lawsuit seeking a declaratory judgment. Whatever the outcome is, all of it looks pretty bad from a public relations standpoint. The whole point was to denounce oppression but basically bullying a black woman out of name she’s been using since possibly 2000 though without formal registration just screams white privilege. Ms. White refuses to be silenced and don’t blame her. In fact, the attention can be used to grow her career and identity.
Your name is your identity and you never know what situation may catapult your brand into the spotlight or threaten to limit you. After Kobe and Gianna Bryant’s unfortunate passing, the hash tag “girldad” went viral. Of course folks love taking advantage of viral moment and a number of “Girl dad” USPTO registrations popped up. But Hilary Wertin doing business as Hildawn Design out of Ohio had the registration in the protection class of clothing, namely shirts and hats since 2016. She saw a surge in business after that. One of my favorite law school classes involved the original Burger King which was a mom and pop operation in a small Illinois town. Once the behemoth, Burger King corporation came along, they were able to continue operating but only within the geographical area they had established a presence. Understand the potential power your brand could have. Ask Slutty Vegan! Your formal trademark registration today including even domain names could be worth millions to someone else willing to pay for rebranding or file the registration essentially locking you out from expansion.
Whatever the case, if you need assistance understanding your brand IP, what protection areas you need to file for and ensuring you are not limited, feel free to reach out to EJLee Law where we encourage our clients to be the MVPs in their industries offering standout services and products!
For educational purposes only! Always seeek independent legal advice for your situation.
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