a band called lady antebellum recently realized its name was racist & announced it would go by lady A instead. but another artist has performed as lady A for decades. today, the band sued. i'll try to explain the suit & break down some of the trademark issues in this thread.
1st let me say i agree w/ those calling out the band for its faux activism & hypocrisy. @thejournalista, @ira, @matthewacherry, @IWriteAllDay_ , & @yashar all have excellent threads on what's wrong w/ the band effectively silencing a black artist in the name of anti-racism.
i focus on the TM aspect to clarify the legal issues, not to defend the band's actions. in the end, the band may be legally well-situated but morally wrong. & painting themselves as victims is a particularly bad look. (see @pitchfork quotes: YIKES.)
the band has several federal trademark registrations for LADY A: one for musical recordings, one for apparel, & one for entertainment services. all 3 allege first use ~2006-2008 & are incontestable. that makes it a lot harder (though not impossible) to challenge their validity. 
that said, i'm not too impressed by the band @ladya's specimens. they should show use as a trademark--a symbol that tells you who puts out goods & services. instead they seem to show use as a casual nickname (mostly the band's nickname for itself). arguably they fail to function.
the specimens for the t-shirt registration are garbage. they demonstrate what's called "ornamental use"--use on the front of the shirt as decoration or slogan, not use as a brand name or indicator of source.
i'm also not impressed by the band's assertions in its complaint that it used "lady A" on its website in the 2000's, or that "lady A" has always been part of the name of its legal entities. those don't necessarily constitute trademark use either.
meanwhile @ladiawhite has been performing as lady A for decades in seattle & beyond, including touring in the PNW & mississippi delta. she has released a number of albums as lady A, toured as lady A, & she's easily found on spotify under lady A.
federal trademark registrations trump almost everything, but they don't always trump prior common law rights, which white may well have. her earlier use of "lady A" for music performances may give her superior TM rights in the areas where she's well-known, if not nationally.
tbh, the law is not crystal clear on how this might play out, especially in the age of the internet & music streaming services. @nicgaitheresq tweeted the question earlier about the extent of white's common law rights & got radio silence b/c no one is 100% sure. #dawndonut
even incontestable marks are "expressly subject to any prior user’s common law rights that existed at the time of registration in any particular territory based on use that continues to the present." IP firm @FishRichardson has a helpful explainer: fr.com/news/prior-use…
ANYWAY white & the band got together to try to work out how they might coexist & both use the name. white later stated, after receiving the band's letter supposedly memorializing their agreement, "their camp is trying to erase me...and I no longer trust them."
she upgraded to a big firm, whose next draft agreement included payment of $10m to white. the band balked. it sued for declaratory judgment of noninfringement: it's asking a court to hold that it has valid rights in the TM. it's NOT seeking to stop white from using the name.
that is, it's not seeking to stop white from using the name IN THIS LAWSUIT. fascinatingly, the band maintains in its complaint that white doesn't use "lady A" as a TM at all! fascinating b/c she uses it pretty much the same way they do--in connection w/ music performances.
specifically, the complaint alleges white "has never used lady A as a trademark to identify her goods or as a service mark to identify her entertainment services." use of a stage name doesn't always equal use as a mark, but again, both parties' range of uses seem comparable.
another observation that may only be of interest to the law nerds: DJ jurisdiction (the ability to sue for this kind of declaration) requires reasonable apprehension of suit, usually in the form of explicit threat.
i had to read this paragraph twice before i realized why "litigation" & "dispute" were bold & italicized. white did not explicitly threaten to sue. the band interprets her lawyers' settlement request as "a course of action from which a threat of suit could be inferred."
those are the key issues that jumped out at me. love to hear what others see in this complaint & set of facts.
ps: one more #ladyA note for the civil procedure nerds. the band asserts personal jurisdiction in part based on white participating in phone & zoom calls with the band while aware the band members were in TN! is that a thing?
a non-lawyer suggests i make this crystal clear: the band's suit is not an attempt to get white to stop using "lady A" or limit her in any way. it's a defensive move based on the premise that SHE was about to sue THEM anyway. the suit seeks affirmation their tm rights are valid.
