In June 2020, with systemic racism at the forefront of America’s mind, country music group Lady Antebellum announced it would change its name to “Lady A” because of the racial connotations of “Antebellum” as related to slavery and the Civil War. Despite Lady Antebellum’s stated good intentions, it soon discovered that blues singer Anita White had already been performing and releasing music under the name Lady A. When negotiations over use of the name broke down, Lady Antebellum filed a trademark lawsuit in the Middle District of Tennessee seeking a declaratory judgment that its use of the LADY A mark does not infringe any trademark rights held by White.
In the complaint, Lady Antebellum states that it registered the LADY A mark with the U.S. Trademark Office in 2010 for entertainment services, musical recordings, and clothing. The registration is incontestable, meaning that, subject to limited exceptions, it serves as conclusive evidence of Lady Antebellum’s rights to the mark for the goods and services listed in the registration. Additionally, Lady Antebellum alleges that White neither opposed its application nor attempted to obtain her own registration for LADY A.
Lady Antebellum reports that it attempted to reach an amicable solution with White that would allow both parties to continue using their respective LADY A marks. Settlement discussions broke down when White sought a $10 million payment for the band’s continued use ($5 million of which, White publicly claims, constituted a donation to Black Lives Matter). Believing White’s demand was exorbitant and concerned that other statements by her counsel could be construed as a threat to sue, Lady Antebellum filed the action for declaratory relief.
In support of its claim that there is no trademark infringement, Lady Antebellum alleges long-standing use of the LADY A mark even before its registration in 2010 and that no consumers have been confused with the source of Lady Antebellum’s and White’s music. Specifically, the complaint states that the group had already used LADY A as a source indicator for its goods and services as early as 2006-2007 when fans began calling the band Lady A. As evidence, Lady Antebellum incorporates into the complaint screenshots of its website in 2008 and 2010 and news articles which all refer to the band as Lady A as well pictures of clothing with the words Lady A on the front. The group also alleges that White never used Lady A as a source of origin but merely as a stage name. Although Lady Antebellum acknowledges that White released music under the Lady A name in 2010 around the same time it registered the mark, if there is no likelihood of confusion as Lady Antebellum asserts, White has no claim for trademark infringement.
We will wait to see whether this case moves forward or if the parties reach an amicable solution. If the case does continue, the result is far from a forgone conclusion.
Based on information and belief, White has never used "Lady 'A'" as a trademark to identify her goods or as a service mark to identify her entertainment services. If, at any point, White's use of "Lady 'A'" to identify herself as a musical performer became a trademark use, such trademark use began after Plaintiffs established their trademark and service mark rights in the LADY A mark.
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