Trick Pony Fights For Name

Heidi Newfield and Keith Burns are embroiled in a legal dispute with former manager Herbert Graham over the right to continue performing as Trick Pony – the name they and former bandmate Ira Dean performed under at various times since 2000.

Paul Parks – Trick Pony

Newfield and Burns say Graham assigned the Trick Pony trademark to a company he controls, PGP, after allowing the original service mark to expire. Graham says they failed to renew the mark during a period the band members were no longer performing together, and he hopes to form another group using the name in an attempt to recoup monetary losses from his earlier support of the group.

PGP is suing the duo in a Tennessee federal court for copyright infringement and breach of contract, claiming Newfield and Burns are infringing on his service mark by continuing to perform and sell music and merchandise as Trick Pony.

The case is further complicated by the band’s own history. Newfield, Burns and Dean formed the band in 1996 under the name “Rebel,” according to court documents. In 2000, they became management clients of Graham and, in 2001, released the debut Trick Pony, which spawned three hits including the Top 15 “Pour Me.”

In the meantime, Graham registered marks for “Trick Pony” for the purpose of musical recordings and promotional goods, which were assigned to the band’s company, NBD.

Trick Pony’s subsequent album releases didn’t match the success of the debut, and Newfield embarked on a solo career in 2006 with Burns and Dean making a brief go with a new singer.

By 2008, Trick Pony completely disbanded as a group. The following year, Burns filed articles of dissolution with the Tennessee Secretary of State to dissolve NBD, which owned the trademark and service mark.

Graham “decided to try to form a band to record and perform under the Trick Pony name in the hope of recouping at least some of the money that he had lost in establishing and supporting the Newfield, Burns, and Dean band,” according to the complaint.

In December 2011, he filed a trademark application for use of the Trick Pony name, and the U.S. Patent and Trademark Office issued the trademark to Graham in December 2013.

Two months later, Newfield, Burns and Dean registered a new company, TPIII, and attempted to put the old band back to together. At that point, the trademark was assigned to Graham, who says he agreed to license the name to the trio’s new company.

However, Dean again left the group. Newfield and Burns registered yet another company, TPII, and continued to perform as Trick Pony, with a new license from Graham.

The yearlong license was renewed at the end of 2014, but Graham claims Newfield and Burns “refused” Graham’s request to renew again at the end of 2015 – yet continue to perform as Trick Pony.

Graham filed suit in Texas, in a case that was ultimately withdrawn when his attorneys – the same ones who filed the trademark on the band’s behalf – were found to have a conflict of interest.

Graham then created PGP, a Texas limited liability corporation, assigned the trademarks and licensing to the new company. Newfield and Burns, in the meantime, filed to have the trademark canceled.

That issue went on the back burner when PGP filed suit in Nashville – now being heard in Memphis because of a judge shortage. Newfield and Burns say they’re not backing down.

“We spent the better part of our lives doing what we love – writing, recording and playing music live,” the pair said in a statement to the Tennessean. “Without it and without our fans, there would be no Trick Pony. It was a shot in the gut not only to be told that we could no longer use the name of the band we worked so hard to establish, but that it is someone that was our manager and friend stopping us.

“Make no mistake, we will never stop doing what we love, and we will never stop fighting for a name that has defined the musical journey that we’ve shared with the fans through the years,” the statement added.