The judge based her decision on the band’s failure to allege the publisher used the band’s trademarks in commerce. The band relied entirely on the publisher’s trademark registrations,  as well as its statements to support its trademark applications that its marks were “now in use in . . . commerce.”
To establish trademark infringement under 15 U.S.C. § 1125(a) of the Lanham Act, a plaintiff must prove five elements, including that the defendant uses the mark “in commerce.” Section 15 U.S.C. § 1127 defines the term “use in commerce” to mean “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.”
Stating that a mark is “now in use in . . . commerce” while prosecuting a trademark application is not the same thing as “using” a mark “in commerce.” Judge Lewis cited Kusek v. Family Circle, Inc., 894 F. Supp. 522, 532 (D. Mass. 1995) for this notable proposition: “a federal registration [of a trademark] gives the owner of a mark legal rights and benefits, [but] its mere registration does not create the mark nor amount to ‘use’ of the mark [, and, therefore,] trademark registration per se cannot be considered as a use in commerce.”
While it has certainly been a “Long Hard Ride” for The Marshall Tucker Band, the decision shows that a plaintiff cannot rely solely on defendants’ statements while prosecuting a trademark application to meet the Lanham Act’s “use in commerce” requirement.
 “Searchin’ for a Rainbow” is the fourth studio album by The Marshall Tucker Band.
 Marshall Tucker Band Inc, The et al v. M T Industries Inc et al, No. 7:16-cv-00420 (D.S.C. March 1, 2017)
 See United States Trademark Reg. Nos. 4616427 and 4616428.
 15 U.S.C. § 1125(a) requires the plaintiff to prove the following five elements: (1) that it possesses a mark; (2) that the defendant used the mark; (3) that the defendant’s use of the mark occurred in commerce; (4) that the defendant used the mark in connection with the sale, offering for sale, distribution, or advertising of goods or services; and (5) that the defendant used the mark in a manner likely to confuse consumers.
 “Long Hard Ride” is the fifth studio album by The Marshall Tucker Band.
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