By Lee B. Hunt

When it comes to trademark co-ownership, the Fifth Circuit’s recent decision in Reed v. Marshall, 142 F.4th 338 (5th Cir. 2025), hits a familiar note: DON’T WALK AWAY without a clear contract. The case, featuring the R&B group Jade, reminds us that even chart-topping partnerships can hit a sour note without the right legal harmonies.

The dispute arose when Jade’s original members—Di Reed, Joi Marshall, and Tonya Harris—found themselves out of sync after a planned reunion tour fizzled. Two members took the stage with a new singer, still under the “JADE” name, leaving Reed singing the blues and heading to court. But the Fifth Circuit’s chorus was clear: under the Lanham Act, co-owners can’t sue each other for trademark infringement or dilution.

The Set-Up: A Reunion Tour Hits a Sour Note

Jade—best known for the early-90s R&B smash “DON’T WALK AWAY”—was originally composed of Reed, Marshall, and Harris. Back in 1994, the trio registered the service mark “JADE” for live musical performances, listing the JADE partnership as owner. The registration later lapsed, but when talk of a reunion tour resurfaced in 2018, the three regrouped long enough to file a new joint trademark application. A fresh registration (U.S. Reg. No. 5,787,227) issued in 2019 naming all three singers as co-owners—still with no written agreement allocating control, quality standards, or exit rights.

When reunion plans fizzled, Harris and Marshall hired vocalist and former THE VOICE contestant Myracle Holloway and hit the road without Reed, performing as “JADE.” As one can imagine, this struck a chord with Reed, who, feeling sidelined, sued in the Southern District of Texas for trademark infringement, dilution, false designation of origin, and unfair competition. The district court granted summary judgment for the defendants in Reed v. Marshall, 699 F. Supp. 3d. 563, 589 (S.D. Tex. 2023). Reed appealed to the Birthplace of Jazz, presenting a matter of first impression to the Fifth Circuit: Can trademark co-owners who stand on equal footing be liable to other co-owners for trademark infringement or dilution?

The Fifth Circuit’s Memorable Notes

1. No Infringement or Dilution Among Equals.
   The Lanham Act guards owners against third-party misuse. Where the alleged infringer is an equal co-owner, there is no “unauthorized” use to enjoin. Thus, the panel held that “a co-owner cannot infringe a mark in which she has an undivided ownership interest,” and the same logic shields a valid licensee of that co-owner. In so deciding, the Fifth Circuit joined a chorus of all other jurisdictions to face the same question. As both the trial and appeals courts noted, “all courts to consider the rights of co-owners in trademark cases have uniformly held that federal claims for infringement cannot be maintained against co-owners.”
2. Unfair Competition Requires Provable Harm.
   Reed’s fallback theories—false advertising and unfair competition—fared no better. At summary judgment a plaintiff must offer evidence of commercial injury. Reed claimed lost opportunities and reputational damage, but the record showed she remained free to perform as “JADE” herself; she simply chose not to. Absent proof of actual lost sales, the court refused to let the claims take an encore.
3. Contract or Bust
   The opinion closes with an industry lesson: joint trademark ownership is “generally disfavored” precisely because it invites consumer confusion and internal squabbles. Without a contract divvying up decision-making power, quality control, and exit rights, each co-owner may pursue divergent brand strategies—while none may invoke federal trademark law to corral the other. If you are tempted to share a mark, hire a suit for the paperwork.

Why the Decision Matters Beyond the Tour Bus

• Entertainment groups: Bands, production teams, and songwriting collectives often file joint marks in the flush of early success. Years later, when line-ups shift or reunion tours beckon, disputes surface. This case underscores that forgoing a written agreement can leave a departing member with no federal trademark recourse.
• Corporate joint ventures: The logic applies equally to joint ventures, spin-offs, and co-branding deals. Unless the parties funnel trademark ownership into a single entity or licensee—or craft a governance contract—each co-owner holds a pocket veto over enforcement but no claim for infringement.
• Licensees and promoters: A license from one co-owner is typically enough to keep you out of trademark hot water with another co-owner, but that same split authority can spawn competing tours or products. Conduct due diligence on the ownership chain and push for warranties that all co-owners have signed off on.

Practical Tips to Keep Your IP Harmonious

1. Put It in Writing Early
   Whether you are a chart-topping trio or a technology JV, execute a comprehensive co-ownership or operating agreement. Spell out who can use the mark, who polices it, and what happens if one partner exits the stage.
2. Centralize Ownership Where Possible
   If the venture will have an ongoing life, place the mark in a single legal entity that licenses use to the performers or divisions. That structure avoids the “equal rights, no remedies” trap highlighted in Reed.
3. Adopt Quality-Control Protocols
   Co-owners should agree on baseline quality standards and branding guidelines, with a mechanism for resolving creative differences. Trademarks rely on consistency, and fans expect it. They WANNA LOVE YOU!
4. Plan for Future Line-Up Changes
   Just as bands rotate members, corporate projects pivot strategy. Build in buy-out provisions, right-of-first-refusal clauses, or mandatory mediation so that a departing member doesn’t derail the brand for everyone else.
5. Document Licenses with Care
   Any third-party promoter, distributor, or merchandiser should receive a license signed by all co-owners or by an authorized entity. Otherwise, the licensee may end up caught between dueling owners—with royalties in dispute.

So You Don’t Misunderstand: Key Takeaways.

The Fifth Circuit’s refrain is simple: Don’t walk away without a well-drafted contract. In the absence of a governing agreement, trademark co-owners share equal rights but shoulder equal risk: they cannot sue each other for infringement or dilution, and they may struggle to prove competitive injury. By tackling ownership structure and license terms up front, brand partners can keep their marks—and their relationships—in tune long after the spotlight fades.

So, before you take the stage, grab your mic and your pen. In trademark law, as in music, harmony is rarely accidental; it is rehearsed, recorded, and—most importantly—written down.

The opinions expressed are those of the authors and do not necessarily reflect the views of the firm, its clients, or any of its or their respective affiliates. This article is for informational purposes only and does not constitute legal advice. For questions, please contact a member of the Intellectual Property practice.

Meet Lee

Lee B. Hunt focuses his practice on intellectual property, entertainment law, alcoholic beverage law, internal investigations, and general commercial litigation in both state and federal courts. Lee has experience in a wide range of intellectual property matters, including copyright and trademark clearance, protection, registration, licensing, anti-counterfeiting and enforcement, infringement actions, trademark cancellations, oppositions, and appeals before the Trademark Trial and Appeal Board (TTAB) and in federal court. Additionally, Lee offers guidance on IP transactional and litigation issues related to domain names, publicity rights, branded entertainment, digital rights, marketing and advertising campaigns, and software.