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One Direction Sued Over Trademark

One Direction Sued Over Trademark

The popular British boy band One Direction has been sued by another band with the same name, based out of California.

This post will refer to the UK band as One Direction UK and the US band as One Direction US. How are these disputes analyzed, and what’s the likely outcome in this case?

The central question here will be which was the first band to use the name One Direction in interstate commerce (meaning, more than one state) in the US.

One Direction US filed a trademark application with the US Patent and Trademark Office on February 14, 2011 for the mark ONE DIRECTION in connection with “Entertainment, namely, live performances by a musical band.” The application claims that One Direction US first used the name in commerce on October 2, 2010.

According to One Direction UK’s Wikipedia page (sorry, I have to confess I’m not an expert on every biographical detail of this particular pop group), the band was formed as part of the UK version of the TV show The X Factor in 2010. An alternate theory is that the band was formed in a lab in Simon Cowell’s basement. In either case, it’s not clear exactly when One Direction UK started using the name “in commerce” in the US – presumably, when their music was available here or when they had their first US live performance. It appears that they first signed a US record deal in November 2011 – long after One Direction US’ first claimed date of use, but it’s certainly possible that they had music available for sale online in the US prior to that.

If One Direction US’ claims of prior use turn out to be valid, this is going to cost One Direction UK a lot of money. I predict a swift settlement here. However, I’m surprised that the Brits didn’t research this beforehand, given that a big player like Simon Cowell is involved.

Another possibility is that One Direction US was operating and had their recordings for sale only in California, in which case they may have a more limited, regional trademark claim. The possibilities are endless.

There is some precedent for UK bands having to change their names due to a prior American band’s use of the same or a similar name. Suede is known as the London Suede in the US, and the Charlatans have long been marketed here as the Charlatans UK.

After the Libertines broke up, Pete Doherty wanted to call his new band the Shambles, but he had to change it to Baby Shambles after finding out about the amazing and brilliant San Diego-based power pop band the Shambles. Full confession: I briefly played bass in said amazing and brilliant band, but trust me, I’m definitely not biased.

Given their great success, I doubt One Direction UK will be inclined to change their name. It will probably be worth buying off the US group.

The moral of the story – one which all of my fellow musicians know – is that choosing a band name is fraught with peril. Be careful, and do your research before settling on a name. Unless you have Simon Cowell and a #1 record backing you, it’ll be a tough and costly legal fight if you end up with a conflict.

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