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Can You Sue A Co-Owner of Your Trademark?

Trademark law is the best.

Don’t believe it? Well, a recent Federal court case dealt with a dispute over the trademark GET THE LED OUT, a Led Zeppein tribute band. Strike that…according to the court documents, that should be “one of the greatest tribute bands in the history of the modern rock era”.

The court notes that the band played live in Philadelphia and West Chester, Pennsylvania. The modern rock era is truly a thing to behold.

(OK, that was an unfair slam. Their website clearly shows that they play all over the place, and I’ve seen Led Zeppelin tribute bands before, and I’ll probably do so again, so who am I to make fun?)

Anyway, I stand by my statement that trademark law is the best. Insurance defense attorneys rarely get to deal with tribute bands, let alone one of the greatest tribute bands in the modern rock era.

Let’s take a look at this case and see why it answers the question, Can You Sue a Co-Owner of Your Trademark?

What do entrepreneurs need to know about trademarks, copyrights, patents, and trade secrets? Click here for a free checklist.

The case is titled Piccari v. GTLO Prods., LLC, which is a good example of why I strongly support passage of the Federal Court Cases Need Cooler Names Amendment.

I’m going to tip my hat to an esteemed trademark blogger who previously wrote about this case, Pamela Chestek over at Property, Intangible. Chestek got into the convoluted history behind this case in a bit more detail than I’m going to, because I know you’re dying to find out the answer to the question posed in the title of this post.

Essentially, this Piccari guy thought up the name Get The Led Out in 2002. Well, sort of. When I was in high school in the early 90s, the local classic rock station would play 2 hours of Zeppelin every Saturday night. The show was called Get The Led Out, and we’d drive around listening to it and looking for trouble, because that’s what teenagers did back in the day before there was the Internet and virtual reality and whatnot, also known as the “Good Old Days.”

Anyway, Piccari decided to name his tribute band Get The Led Out, and about 8 years later the other band members cordially invited him not to be in the band anymore. They continued to perform as Get The Led Out, and Piccari filed a Federal lawsuit alleging trademark infringement.

However, the trademark registration for GET THE LED OUT lists Piccari and the defendants as owners (it’s a long story.)

Which means, you guessed it, that the court had to address the question of whether co-owners of a trademark registration can sue each other for infringement.

The court noted that:

A leading trademark treatise broadly concludes that “[w]hen parties are co-owners of a mark, one party cannot sue the other for infringement. A co-owner cannot infringe the mark it owns.”

Accordingly, the court stated:

The purpose of the Lanham Act [the Federal law that governs trademarks] is thus to protect both the public and the providers of goods and services—i.e. owners of trademarks—from imitators seeking to capitalize on the owner’s hard-earned goodwill…A co-owner with an equal right to use the trademark cannot be an imitator at whom this statute is directed.

Case dismissed.

Except…Piccari may still have grounds to sue his former bandmates in state court based on other claims (breach of contract and the like.) So the Get The Led Out story may not be over yet.

So, there you go: you can’t sue a co-owner of your trademark…for trademark infringement, that is.

Thanks for reading. Or, should I say…

Thanks to you, I’m much obliged/For such a pleasant stay, but now it’s time for me to go…

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