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Journey’s Next Journey

September 21, 2022 | Intellectual Property

Former singer of the legendary band Journey, Steve Perry, has filed to cancel trademark registrations allegedly owned by other current Journey band members, including lead guitarist Neal Schon and keyboardist/rhythm guitarist Jonathan Cain.

Under 15 U.S.C. §1064: “A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed as follows by any person who believes that he is or will be damaged, including as a result of a likelihood of dilution by blurring or dilution by tarnishment under section 1125(c) of this title, by the registration of a mark on the principal register.” Apparently Mr. Perry believes he will be damaged by continued registration of Mr. Schon and Mr. Cain’s trademarks.

The trademarks cited are all for “Athletic jackets; Hats; Hiking jackets; Hoodies; Jackets; Shirts; Shirts and short-sleeved shirts; Socks; T-shirts; Tee-shirts; Tee shirts; Graphic T-shirts; Short-sleeved or long-sleeved t-shirts” in Class 025 and are named after many of Journey’s hit song titles. These include: “Good Morning Girl,” “Only the Young,” “Trial By Fire,” “Any Way You Want It,” “Stay Awhile,” “Lovin’, Touchin’, Squeezin’,” “Wheel in the Sky,” “Raised on Radio,” “When You Love a Woman,” “Open Arms,” “Still They Ride,” “Who’s Crying Now,” “Hopelessly in Love,” “Send Her My Love,” “After the Fall,” “Girl Can’t Help It,” “Ask the Lonely,” “I’ll Be Alright Without You,” “Stone in Love” and “Separate Ways.”

Mr. Perry argues that the use of the song titles with these marks violates a prior 1998 agreement between the three, which according to the complaint requires “unanimous agreement and consent by the Partners [(Perry, Schon, and Cain)]” to use the co-authored song titles “including use on or in connection with products as a trademark or otherwise.”

However, Mr. Perry has not been a member of the band since 1998. Further complicating the matter, according to Loudwire, “longtime bassist Ross Valory and drummer Steve Smith were booted from the group” and “Schon and Cain were able to use their 1998 written agreement with Perry to maintain their rights to the group’s name and trademark” to reach a settlement with the fired band members.

Cancellation proceedings can be quite long, and this dispute could take years (or more) to resolve. Apparently Journey has one more journey to embark upon.

Special thanks to our Law Clerk, Kyle Pettine, for the drafting of this blog post.