Trade marks in music: Part three – The risks of going solo

Formed in 1968 by six students at the Tuskegee Institute in Tuskegee, Alabama, the Commodores is an American funk, soul and R&B group.

Its most famous member is arguably singer, songwriter and record producer Lionel Richie, who led the group as co-lead singer and saxophonist until his departure in 1982.

The band enjoyed its greatest success in the 1970s and early 1980s, when it released such hits as ‘Easy’ in 1977, ‘Three Times a Lady’ in 1978, and ‘Sail On’ in 1979. In 1985, the group also released ‘Night Shift’, a poignant tribute to the late soul singers Marvin Gaye and Jackie Wilson. This single would earn the group its first, and only, Grammy Award.

Despite several decades of success, however, the band’s line-up changed significantly over the years, reducing to just three core members when the Commodores appeared in a UK tour alongside other former Motown artists in the late 2000s.

Alongside Lionel Richie, guitarist Thomas McClary was one of the founding members of the Commodores at Tuskegee Institute. He played in the band during several significant milestones, including its big break as the opener for the Jackson 5 tour and its signing to record label Motown in 1971.

In 1984, however, Mr McClary would decide to leave the group to pursue a solo career, much as Mr Richie had done two years before.

Three decades after his departure, adverts began to appear promoting a band called ‘The Commodores featuring Thomas McClary’. The issue was that the Commodores still existed, albeit with only three members, and none of these individuals were scheduled to appear at any events alongside Mr McClary.

This led CEC, the business representing the existing members of The Commodores, to file suit in the US against Mr McClary for trade mark infringement, trade mark dilution, passing off, false advertising, unfair competition, and deceptive trade practices. In 2016, Mr McClary was permanently injuncted from marketing himself as ‘Commodores’ anywhere in the world.

In 2014, Mr McClary signed an agreement with a promoter to perform six shows in the UK, also under the name ‘The Commodores featuring Thomas McClary’, despite a temporary injunction already being in place in the US.

Mr McClary’s company, Fifth Avenue, also filed an application for the trade mark ‘THE COMMODORES’ with the EU Intellectual Property Office (EUIPO) that same year. This was swiftly opposed by CEC although, as CEC had neglected to register the trade mark, it could only rely on the unregistered trade mark rights in the member states of the European Union, which are notoriously difficult to enforce.

From then until February 2021, Fifth Avenue and CEC were locked in a back-and-forth legal battle which ultimately resulted in the opposition being dismissed and Fifth Avenue being awarded a registration for the trade mark in the EU for all goods and services.

In July 2021, as its EU right had ceased to cover the UK following the expiry of the Brexit transition period, Fifth Avenue also applied to register ‘THE COMMODORES’ at the UKIPO, again for musical recordings in Class 9 and entertainment services in Class 41. This application was also promptly opposed by CEC and, in a judgment issued on 20 March 2025, Allan James refused Fifth Avenue’s application and also ordered it to pay CEC £3,350 in costs.

The refusal of the application was largely the result of three key issues, analysed in Allan James’ 35-page judgment.

1. The goodwill of the Commodores. Evidence supplied by CEC demonstrated that the name ‘Commodores’ still carried a significant amount of goodwill, not least because the group of three existing members had taken part in, and received top billing for, a UK tour as the Commodores in 2009. This activity, alongside ongoing record sales, was enough to convince the judge that it “would have generated new goodwill as well as keeping the group’s earlier goodwill in the public’s mind”. Mr McClary’s attempts to reference the band name in connection with his own also provided “strong evidence that they believed goodwill still existed under that name”.
2. The US injunctions. Mr McClary argued that the US courts had overextended their jurisdiction when ordering a permanent injunction that prevented him from using the name ‘Commodores’ anywhere in the world. This was unsuccessful. The judge suggested that the applicant’s attempt to “apply for registration in the UK whilst still injuncted from using the mark here” was also a sign of bad faith.
3. The partnership agreement. In 1978, at the height of the group’s success, Mr McClary was one of seven people to enter into a General Partnership Agreement to conduct the musical business of the group. This agreement was still in force when Mr McClary left the group in 1984. Under Clause 9 of the agreement, “the remaining majority of the Partners shall continue to have the right to use the name THE COMMODORES for any purpose”, should less than a majority of the partners choose to leave. Furthermore, clause 8.1 stipulated that “no individual Partner or combination of Partners may render any performance or services or sell any product, tangible or intangible, or license any rights utilizing the Partnership name or any other name chosen prior thereto by the Partners as a name under which they will collectively perform, or any name confusingly similar thereto, without the written consent of all the Partners”. The judge agreed that this agreement was, ultimately, binding for Mr McClary, giving him the right to use neither the name ‘Commodores’, nor its associated goodwill, when he withdrew from the partnership in 1984.

Trade mark ownership disputes concerning partnerships are most commonly caused by a lack of clarity or agreement over who, or what, owns these assets, and whether ownership is affected as new members join and others leave.

In this case, however, the Commodores had ensured that ownership was clear from the outset via an agreement that gave “a majority of the partners the right to carry on using the group’s name if one or more of the members withdrew, died, or was expelled”.

Nevertheless, CEC having no registered rights in either the EU or the UK proved problematic for the group and meant that it was unable to prevent Fifth Avenue from registering the trade mark in the EU and could only prevent it from registering the trade mark in the UK after a complex and undoubtedly costly legal battle. Had CEC registered the trade mark, this dispute may well have been much more straightforward to resolve in its favour. Indeed the existence of a registration may well have dissuaded Fifth Avenue from even attempting to use and register the trade mark, thus avoiding the dispute in the first place.

This dispute also provides a cautionary tale for any members of a partnership who are considering breaking away and starting a new endeavour. Depending on the terms of their partnership agreement, it may be that individual partners must effectively ‘start from scratch’ when leaving a partnership, particularly if agreements prohibit them from using any existing marks and goodwill to establish their individual presence in the market.

Done properly, however, this may be a golden opportunity for partners to develop a new, more successful venture over which they, perhaps, have more ownership and control. One only has to look at Lionel Richie, now arguably better known as a solo artist than as a former member of the Commodores, as an example of how this can be done to achieve lasting success.