The Marvelettes Trademark Dispute: Junior User Cannot Develop Common Law Rights
As many fans of Motown music might know, The Marvelettes were among the most significant all-girl groups of Motown Records in the early to mid-1960s. Their single â€œPlease Mr. Postmanâ€ reached the number-one position on the Billboard Hot 100 pop singles chart, was the first number-one singles recorded by an all-female vocal group, and the first by a Motown recording act. In the 1970s, promoter Larry Marshak began using the mark “The Marvelettes” for groups staging live performances under his production and management, of which no group included any members of the original Marvelettes. Marshakâ€™s Marvelettes perform songs originally recorded by Motownâ€™s Marvelettes and have always consisted of three female members, whose ages tended to correspond with the contemporary ages of the original members of The Marvelettes. At no time prior to or during the show is the audience informed that the performers are not the original members of the Marvelettes group which recorded for Motown. Marshak applied for, and received the trademark for “The Marvelettes” in 1976. The registration for this trademark lapsed in 2008 at which time Katherine Shaffner and Gladys Horton, founding members of the Motown group, filed a joint application with the PTO to register the mark “The Marvelettes.” During the time between 1976 and 2008, Gladys Horton had attempted to return to the stage and sought to use the trademark to promote her appearances, but was threatened with litigation by Marshak if she were to use the name “Marvelettes” in association with her performances.
In early 2011, Marshak filed a complaint alleging false designation of origin in violation of the Lanham Act, seeking injunctive and declaratory relief as well as damages. Horton and Shaffner filed their answer and counterclaims, alleging false designation of origin, trademark dilution and tarnishement, common law trademark infringement, and deceptive acts and practices in violation of New York General Business Law. On May 11, 2012, the U.S. District Court granted Shaffner and Hortonâ€™s summary judgment on Marshakâ€™s claim.
Although Marshak had filed the original trademark in 1976, basic principles of consumer protection embedded in the trademark laws show that Marshak cannot own the rights to “The Marvelettes” if Motown (and/or original members of Marvelettes) continues to own the rights in connection with marketing recordings. This is because â€œfor inherently distinctive marks, ownership is governed by priority of use. For such marks, the first to use a designation as a mark in the sale of goods or services is the ‘owner’ and the ‘senior user.'” Common law holds that “[t]rademark rights develop when goods bearing the mark are placed in the market and followed by continuous commercial utilization.” Thus, Motown is the ‘senior’ user as it was the first to use the mark for commercial purposes, and because Marshak quite clearly trades upon the consumer goodwill associated with the original groupâ€™s use of the mark, he cannot assume to have a distinct right to the trademark. In fact, the courtâ€™s opinion writes that Marshak’s presentation actually encourages the audience members to believe that they are paying to see the original group rather than a tribute band, stating “The danger of consumer confusion and deception is manifest, and indeed, has almost certainly been realized.”
In conclusion, the Court held that Marshak cannot establish ownership rights in the mark because a senior user (Motown) already owned the mark prior to Marshak’s first use of the mark. Motown did not need to formally register a trademark to own have rights to the name, as they used it for commercial purposes and it remains used by its legal owner UMG (Motownâ€™s successor). Shaffner and Hortonâ€™s estate continue to receive royalties for both sales of recordings and radio plays. Because both Mashrak and UMG’s use of the mark rely on the same source of consumer goodwill (The Marvelettes’ original recordings and performances during the 1960s), Mashrak had no legitimate claim to the Marvelette trademark.
Although the Court did not rule on issues of damages, it seems that Motown and/ or the representatives of Horton and Shaffner may have substantial claims for damages against Mashrak for his wrongful use of the trademark in association with the live performances he presented of “Marvelettes”. It is surprising, to say the least, that Motown and UMG (Motownâ€™s successors) did not contest Mashrak’s use of the name in connection with his presentation of “Marvalette” live performances. In any event, this decision clearly vindicates the rights of Motown (and its successor UMG), Horton and Schaffner. It is an important reaffirmation of the fact that common law trademark rights may trump registered trademarks where it can be shown that the owner of the common law trademark was the senior user and continued to use the trademark after registration of the trademark by the junior user. It is also an important decision, because it reaffirms that the standard for continued use of a trademark (and avoidance of abandonment) is relatively lowâ€”almost any legitimate ongoing use will avoid abandonmentâ€”such as the receipt of royalties by Horton and Shaffner.