The US Court of Appeals for the Fifth Circuit upheld a district court’s summary judgment decision that a co-owner of a trademark cannot bring infringement or dilution claims under the Lanham Act against other co-owners or their licensees. Reed v. Marshall et al., Case No. 24-20198 (5th Cir. July 2, 2025) (Graves, Smith, Duncan, JJ.)

Originally formed by Di Reed, Joi Marshall, and Tonya Harris (aka Tonya Kelly), Jade was a music group that enjoyed commercial success before disbanding in 1995. In 2018, the trio attempted a reunion and jointly applied for the federal service mark JADE, which was registered in June 2019. The reunion ultimately did not materialize. In 2021, Marshall and Harris began performing under the JADE name with a new singer, Myracle Holloway, engaged under a six-month work-for-hire agreement. Reed objected, claiming they used the jointly owned mark without her consent, and filed suit in the US District Court for the Southern District of Texas, asserting claims under the Lanham Act and Texas law. The district court granted summary judgment in favor of Marshall and Harris. Reed appealed.

The Fifth Circuit affirmed. The central question was whether a co-owner of a federally registered trademark may bring an action under the Lanham Act against another co-owner for alleged unauthorized use of the mark.

The district court concluded that absent a contractual agreement to the contrary, co-owners of a trademark each have equal rights to use the mark. The Fifth Circuit affirmed that the Lanham Act does not authorize one co-owner to sue another for infringement or dilution; such disputes must be resolved through contract law or other private arrangements. Because Holloway’s use of the mark was authorized by two co-owners of the registration, she too was shielded from liability under the Lanham Act.

The Fifth Circuit also rejected Reed’s unfair competition and dilution claims, finding no evidence of misuse that would infringe the rights of an equal co-owner.

Practice note: When multiple parties intend to co-own a trademark, it is usually advisable to enter into an agreement that clearly defines each party’s rights and limitations on use. Without such an agreement, co-owners may find themselves with limited recourse in the event of a dispute.