A music group sued its publishing company claiming that the company violated the group’s trademark rights by registering the band’s trademark, Marshall Tucker Band, with the United States Patent and Trademark Office. A South Carolina federal judge recently dismissed the band’s complaint, holding that the band failed to allege that the defendants actually used the mark Marshall Tucker Band “in commerce.” Specifically, plaintiffs alleged that the defendant used the mark in commerce by applying to register the mark, where the application requires applicants to sign a Declaration stating that the signatory believes it is entitled to use the mark in commerce and that the mark is now in use in commerce. However, the court found that trademark registration alone cannot be considered “use in commerce,” which pursuant to the Lanham Act means, “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.”

TIP: When pursuing trademark infringement claims under the Lanham Act, companies should ensure that they can demonstrate not only that the defendant has used the mark (e.g., by registering the mark), but that there was actual improper use in commerce.