By Thomas Long, J.D.
Group obtains preliminary injunction barring former member Melvin Riley and other performers from using the registered trademark "Ready for the World" or similar names in connection with their concerts or recordings.
R&B group Ready for the World has been granted a preliminary injunction by the federal district court in Detroit barring the members of another group from using the name or confusingly similar variations of it. The defendants included the former lead singer of the complaining band, Melvin Riley. According to the court, Ready for the World was likely to succeed on the merits of its trademark infringement and dilution claims, and would sustain irreparable harm, both financially and to its reputation, in the absence of preliminary injunctive relief. In particular, Ready for the World demonstrated the need for an injunction by presenting evidence that a concert promoter had expressed frustration over confusion resulting from two touring bands using the name Ready for the World (Ready for the World Inc. v. Riley , February 8, 2019, Hood, D.).
The plaintiff was a corporate entity, Ready for the World Inc., which did business under the band’s name, Ready for the World. The band Ready for the World was formed in 1982 by Melvin Riley and Gordon Strozier and recorded several pop, soul, and dance hits in the 1980s. The band underwent a lengthy hiatus, disbanding in the early 1990s and reemerging in 2018 with a new lead vocalist replacing Riley. Ready for the World asserted that defendants Riley, John Eaton, Renee Atkins, Daniel Dillman, and Jan Mark Land had been using the name "Ready for the World" in connection with live concerts and musical recordings. They also allegedly used the names "Ready for the World featuring Melvin Riley," "Ready 4 the World," "Melvin Riley is Ready for the World," and "Ready." The defendants allegedly continued to perform under variations of the trademark even after attempts by Ready for the World to persuade them to stop. Ready for the World filed suit for trademark infringement and dilution and moved for a preliminary injunction seeking to prevent any further use of "Ready for the World" or any other name that would constitute infringement in advertisements, solicitations, social media communications, performances, or recordings.
Trademark infringement. Ready for the World demonstrated that it owned a valid and legally enforceable mark in the band’s name, the court said. The mark was registered with the USPTO on July 20, 2010, in connection with entertainment services and live performances by a musical band. The band was currently using the mark. In the court’s view, there was a high likelihood that the defendants’ use of the Ready for the World mark will cause confusion among consumers. There was at least one instance in which a promoting company expressed frustration over the bands’ similar names. According to the court, it did not appear that any of the likelihood of confusion factors weighed in favor of the defendants, and the defendants did not argue otherwise.
Trademark dilution. Ready for the World established that its mark was famous and distinctive as a result of the band’s recognized acclaim and notoriety. The defendants had used the name commercially because their primary use of the mark had been for purposes of touring in the United States. The defendants began using the name only after the plaintiff’s mark became famous. According to the court, the dilution of the Ready for the World mark was implied by the circumstantial evidence presented by the complaining band, and it was likely to prevail on the merits of this claim. The defendants argued that because Riley never officially left the band, he was a co-owner of the trademark and could not be liable for diluting it. They also asserted that Riley went on tour by himself under the name "Ready for the World" before the complaining band adopted the mark. However, the defendants did not submit evidence to support this assertion. The court therefore relied on Ready for the World’s evidence that Riley left that band in February 2015.
Irreparable injury, balance of harms, public interest. Ready for the World showed that it would be irreparably harmed if the defendants continued performing while using the complaining band’s trademark. The confusion caused by the defendants’ actions could negatively affect Ready for the World’s relationship with the consumers of its music. Use of the mark by the defendants could damage Ready for the World’s reputation, the court said. A preliminary injunction would not harm the defendants because they would still be able to use their own personal names or a band name that was distinct from "Ready for the World." Moreover, the defendants did not argue that they would be harmed by the issuance of an injunction. The public had an interest in preventing the confusion resulting from the defendants’ use of the mark. An injunction would ensure that concertgoers would not be deceived by false or misleading advertisements, the court said.
Accordingly, the court concluded that Ready for the World was entitled to a preliminary injunction barring the defendants from using its trademark.
This case is No. 2:19-cv-10062-DPH-DRG.
Attorneys: Lisa J. Orlando (Orlando Law Practice, PC) for Ready for the World Inc. d/b/a Ready for the World. Darrin A. Auito (Hubbs, Enatsky & Auito Law Firm) for Melvin Riley.
Companies: Ready for the World Inc.
MainStory: TopStory Trademark MichiganNews
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