The southern rockers in The Marshall Tucker Band may be singing the blues. That’s because the musicians in the legendary, long-running, and oft-reconstituted band had their trademark lawsuit against their publishing company dismissed recently.

The band had filed various trademark claims against MT Industries (MTI) over “The Marshall Tucker Band” mark. But on March 1, a U.S. District Court in South Carolina granted a motion to dismiss the band’s claims of infringement and dilution against the company.

Band members had also initiated a claim of copyright cancellation, as well as other state law claims. MTI argued that the entire action should be dismissed, and filed a motion to dismiss, arguing the court’s lacked subject matter jurisdiction. How did this long hard ride end?

MTI sought first to dispel the infringement and dilution claims, arguing that these were band members’ bases for the court’s jurisdiction; if those claimed failed, the court then would lack jurisdiction over the rest of the action.

Trademark infringement

To prevail on a claim for infringement, band members had to satisfy a five-pronged test outlined in the Lanham Act: They had to show they possessed the mark, that the defendants used it and that use occurred in commerce or in connection with the sale, offering for sale, distribution, or advertising of goods or services. They also had to demonstrate that defendants’ use of the mark would be likely to confuse consumers.

The court found that band members failed to provide sufficient evidence that MTI used the trademark in commerce. The mark was registered by MTI and the company even stated its belief that the mark is “now in use in…commerce.” But the court held there was no concrete proof provided by band members that MTI actually used by the mark after the initial registration.

Several cases, including People for Ethical Treatment of Animals v. Doughney, 263 F.3d 359, 364 (4th Cir. 2001), Omega S.A. v. Omega Eng’g, Inc., 396 F.Supp.2d 166, 174 (D. Conn. 2005), and Kusek v. Family Circle, Inc., 894 F.Supp. 522, 532 (D. Mass. 1995) all state that simply applying for a mark puts it in commerce. Thus, even if MTI intended to use the mark, since it took no steps  after its initial application, the mark wasn’t in commerce and the band members’ claim failed on this key test.

Trademark dilution

As for the musicians’ claim of dilution, the court turned to a four-part test codified in § 1125(c): Plaintiffs had to show that they owned a famous mark that is distinctive, and that the defendants had commenced using a mark in commerce that allegedly diluted the famous mark. Plaintiffs also had to show a similarity between the defendant’s mark and the famous mark gives rise to an association between the two, and that association is likely to impair the distinctiveness of the famous mark or likely to harm its reputation.

The court found that this argument failed, again, because band members could not prove that MTI actually used the disputed mark in commerce.

Their battle with MTI underscores a point that courts have dealt with but that many attorneys may overlook: a simple application for trademark registration—even when coupled with an express intent to use the mark in the marketplace—does not satisfy the “use in commerce” tests for infringement or dilution.

It also will be interesting to see where the creatives in this controversy go next to seek to control the valuable mark, left in the hands of the defendants—their publisher, and, the group’s longtime manager. Band members had trademarked the name of the group sometime after it was founded in the 1970s, but allowed the mark to lapse, with one online tracking service showing this abandonment may have occurred in the late 1990s. Another online tracking service shows MTI re-applying for the mark in 2013, a step that led to the band members’ claim that they, and not the company should hold it, and eventually filing suit, and, at one point, seeking to disqualify lawyers long involved with both them and the company.

The Marshall Tucker Band, of course, has a history of shifting players, starting with an original quintet and involving at least 17 others. Doug Gray, a plaintiff in the mark suit, a guitarist, and vocalist, is the only original member still performing with the band, after: founding bassist-vocalist Tommy Caldwell’s 1980 death in a car accident; the fatal overdose of his brother Toy, a guitarist and vocalist; the 2007 death of rhythm guitarist George McCorkle, 61; and the 1983 departure of drummer Paul Riddle, who still plays and teaches.