DI Reed v. Joi Marshall; Tonya Harris, aka Tonya Kelly; Myracle Hollowway, 24-20198, (5th Cir. July 2, 2025)
“Critical to resolving this dispute is understanding that Reed, Marshall, and Harris entered into joint ownership of the JADE mark—that is, each individual owns a complete interest in the mark. Joint ownership of a mark has two interconnected problems. First, a mark is fundamentally intended to “identify and distinguish a single commercial source,” not three distinct owners. 2 McCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 16:40 (5th ed. 2025). Second, any discord between co-owners could result in “multiple, fragmented use” that may result in “consumer confusion and deception.” Id. It is for these reasons that “joint ownership of a trademark is disfavored in the law,” and that in the instances it does occur, parties often enter into “contractual agreements” to clarify outcomes should owner interests become unaligned. Id.
Here, the parties failed to enter into a contractual agreement that defined their respective obligations; and some of the mark’s co-owners have had a falling out with another set of co-owners. But at bottom, the question before us is simpler: whether the Lanham Act, which is aimed at protecting consumers and mark owners from fraud and deceptive acts, provides an appropriate cause of action to remedy disputes between the co-owners of a trademark. The answer, for the reasons discussed below, is “no.”“