27 July 2020TrademarksMuireann Bolger

Commodores win trademark battle at US federal circuit

The Commodores Entertainment Corporation (CEC) has won its trademark dispute against one of the original members of the US funk and soul band, the  Commodores, after the US  Court of Appeals for the Eleventh Circuit ruled in its favour on 23 July.

The suit concerned the ownership of the mark, “The Commodores”, the name of the Grammy award-winning band. Former guitarist Thomas McClary left the band in 1984, and later formed his own entertainment company, Fifth Avenue Entertainment.

Thirty years later, he began performing in a band marketed as “The 2014 Commodores” and “The Commodores featuring Thomas McClary”, prompting CEC to file a lawsuit at the  US District Court of Florida, claiming trademark infringement, trademark dilution, passing off, false advertising, and unfair competition.

The CEC moved for a temporary restraining order or a preliminary injunction, to which McClary raised several counterclaims, alleging “intentional interference with present and prospective business relationships, trademark infringement, misappropriation of likeness and identity, breach of duty of loyalty and utmost good faith and breach of fiduciary duty, and defamation”.

The district court granted CEC’s motion for a preliminary injunction, preventing McClary from performing under the trademark name, the ‘Commodores’.

After the injunction was entered, McClary and his band marketed performances in Europe and CEC filed a motion for clarification, after which the court stated that its injunction order prevented McClary from performing under the marks both domestically and internationally.

In December 2018, the  EU General Court ruled in favour of McClary and overturned a decision of the  European Union Intellectual Property Office (EUIPO) that rejected Fifth Avenue’s registration of the name ‘The Commodores’ trademark.

In May 2019, McClary moved to modify the permanent injunction arguing that he had licences to use the trademark in Mexico, New Zealand, and Switzerland.

The district court denied the motion, finding that it was “not timely” and that McClary did not show “a sufficient basis for modifying the injunction”. It held that the injunction had extraterritorial application because use of the marks overseas would have “a substantial and negative impact” on CEC.

The federal circuit concluded last week that it “was unpersuaded” by McClary’s argument that the district court “had erred by including in its grant of summary judgment on CEC’s trademark infringement claim on his performances outside the US”. The court agreed that the use of the marks was likely to cause confusion” and ordered McClary to pay damages to CEC.

The Commodores had a string of hit singles throughout the 1970s and 80s, including “Three Times a Lady”, “Still”, and “Nightshift”, the latter winning a Grammy Award in 1986. Former lead singer Lionel Richie enjoyed a successful solo career after leaving the group in 1983.

Did you enjoy reading this story?  Sign up to our free daily newsletters and get stories sent like this straight to your inbox.

Already registered?

Login to your account

To request a FREE 2-week trial subscription, please signup.
NOTE - this can take up to 48hrs to be approved.

Two Weeks Free Trial

For multi-user price options, or to check if your company has an existing subscription that we can add you to for FREE, please email Adrian Tapping at

More on this story

7 December 2018   Two members of American soul group the Commodores suffered a defeat in a trademark dispute over the band’s name after the EU General Court ruled in favour of founding member Thomas McClary’s Fifth Avenue Entertainment.
28 July 2020   An Australian contraceptive wholesaler has legal standing to challenge a trademark for the ‘Naked’ brand of condoms, the Federal Circuit has ruled.