https://www.law360.com/articles/1531428 ... r-song-tms
Brand Battles: Ex-Journey Singer Fights Band Over Song TMs
In Law360's latest roundup of new actions at the Trademark Trial and Appeal Board, former Journey frontman Steve Perry is trying to strike down trademark registrations on several songs ostensibly owned by the current band members — plus three other cases you need to know.
By Tiffany Hu
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By Tiffany Hu
Law360 (September 16, 2022, 6:43 PM EDT) -- In Law360's latest roundup of new actions at the Trademark Trial and Appeal Board, former Journey frontman Steve Perry is trying to strike down trademark registrations on several songs ostensibly owned by the current band members — plus three other cases you need to know.
Battle of the Band Steve Perry, the former lead singer of the rock band Journey, filed a petition on Sunday to cancel Freedom JN LLC's registrations on 20 song titles released during his time in the group and at the "height of each of the 20 song(s)' and the band Journey's success and popularity."
Freedom JN — which Perry said is owned by Journey co-founder and keyboardist Jonathan Cain and guitarist Neal Schon — requested to register trademarks for songs like "Anyway You Want It," "Open Arms" and "Wheel In the Sky" in 2020 for athletic jackets, hats, T-shirts and more. The U.S. Patent and Trademark Office issued the registrations between February and May.
But Perry said that the trio in 1997 signed a partnership agreement that notably established that no partner could approve or exploit any composition they made in connection to any products without "prior, written unanimous consent of all partners in each instance."
After Perry officially left the group in 1998, the agreement was amended to address his departure from Journey and "from the partnership subject to the [agreement]," he said.
"But that amendment, as well as any subsequent amendment, did not change the unanimous consent requirements [of the agreement]," Perry said in his petition.
Perry claimed that the company filed and prosecuted the applications in question with "false or misleading information" that it was the exclusive owner of the registrations, and intended to deceive the USPTO to get the registrations, so they should now be voided, he said.
Journey, which is perhaps best known for the 1981 hit "Don't Stop Believin," has been dealing with trademark battles before this. In March 2020, Schon and Cain accused their former drummer and bassist of trying to wrest control of one of the band's entities in order to hold the Journey name hostage. The case was reportedly settled a month later.
Representatives for both sides did not immediately return requests for comment Friday.
Perry is represented by Krane & Smith APC. Counsel information for Freedom JN was not immediately available Friday. The case number is 92080555. Best of the Rest