Most musicians know about copyrights. Without copyright protection, other musicians and music companies might claim your songs as their own, reap profits from them, and even sue you if you perform your own compositions. Many musicians are not aware that a similar calamity can befall a band that does not properly establish and protect trademark rights in the name it chooses.
Band names and logos as trademarks
A trademark is any word, phrase, symbol, sound or design that is used in commerce to identify the source of goods or services. Music recordings are goods, and entertainment is a service, so a name that is used to identify the source of a song or the musicians who perform it is a trademark. For example, the name, “Smashing Pumpkins” is a trademark that is used to identify a particular band’s sound recordings and musical performances. It is also a trademark for posters and shirts displaying that phrase.
Copyright law does not protect names, titles or short phrases. Registering a copyright for a collection of songs with the band’s name on the cover may protect the band’s rights of authorship in the music, but it will not protect the band’s name. For that, trademark registration is needed.
Logos are a special case. If a logo is an original work, then the artwork may be copyrighted. When it is used to identify a particular band, then it may also be protected as a trademark.
How trademark rights are created
Trademark rights are created by using a name or symbol in connection with goods or services to identify the source of the goods or services. Merely deciding on a name for a band is not enough, even if the name is written down on a piece of paper, witnessed, notarized, and kept in a safe deposit box. Trademark rights come into being only when the band takes the further step of putting the name on a product (such as a CD, or a digital recording that is made available for download on the Internet) or an advertisement for the product, or publicly performs or advertises its entertainment services under the name.
Trademark rights can come into existence without registration. As between two bands with the same name, the first to use the name in commerce to identify the source of their musical products or services (such as affixing the name to a CD that is offered for sale, or using the name in an advertisement or flyer for a concert performance by the band) will be the one with trademark rights.
Why registration is important
Since trademark rights are linked to first use, some websites offer to protect a band’s name by simply listing the name in a band name registry. While this can generate some evidence of use, it is not determinative of the issue, and it is not sufficient for trademark protection. Only registration with a state or federal trademark office will establish a prima facie case or a legal presumption of trademark ownership.
Registering your band name with the U.S. Trademark Office creates a strong presumption that you own the trademark rights in that name. Subject to some exceptions, it usually will be all the evidence of ownership you need for your defense if another band attempts to sue you for using a name that it claims is confusingly similar to theirs. And it will enable you to file suit, if necessary, to prevent other bands from using your name, or a name that is confusingly similar to your band’s name.
The stakes are high. Being ordered to stop using a name is not the only thing that can happen to a person who is successfully sued for trademark infringement. He may also be ordered to destroy or surrender any products that have the infringing name affixed to them; to disgorge any profits that have been made through the use of the name; and to compensate the trademark owner for damages. In some cases, he may also be ordered to pay punitive damages and the trademark owner’s attorney fees.
Trademark considerations in choosing a name for your band
Many musicians think only about aesthetics when choosing a name for their band. You should also think about the distinctiveness of the name as a brand. One way to begin to do this is by searching the Internet to see if anyone else is already using the name. Search Amazon, iTunes, ReverbNation, MySpace, and Facebook. Then do a global search using Google or a comparable search engine. If a band is already using the name you want to use, you should choose a different name.
It is important to understand that a band name may infringe another band’s trademark even if it is not identical to the other band’s name. A different name can infringe another band’s trademark if it is confusingly similar to the other band’s name. The name “Pearl Jamb,” for example, would infringe Pearl Jam’s trademark rights.
A number of trademark rules and principles can impact your ability to register and protect your band’s name. For example, trademarks that merely indicate geographic origin cannot be registered. Names that are merely descriptive of the goods or services provided also cannot be registered. Deceptive, generic, immoral or scandalous names cannot be registered. The rule against disparaging trademarks prevented The Slant from registering a trademark in their name. According to the USPTO, the name could be construed as disparaging Asian people. These are just a few of the possible reasons the USPTO might reject a trademark registration.
Of course, most bands do not have the resources to conduct a trademark search or retain a trademark attorney’s services when they are first starting out. It is a good idea to consult with a trademark attorney as early as possible, though. In addition to the potentially devastating consequences of an infringement lawsuit, it can be difficult and costly to re-build your band’s name recognition if you end up having to change the name somewhere down the line, especially if you are unable to prevent other bands from using the name you originally chose.
Who owns a band’s name
The general rule is that the owner of a trademark is the person who controls the nature and quality of the goods or services. In the absence of an agreement, determining who controls the nature and quality of a band’s goods or services can be complicated, particularly if a band works with a producer and/or a recording company. There can also be issues within the band itself. If a band breaks up, which members, if any, have the right to use the former band’s name?
Because bands almost always break up at some point, it is very likely that a legal dispute over the right to use the band’s name will arise between members of the band, or between members of the band and the band’s former producer or recording company, unless rights to the name are clearly laid out in a written agreement. For this reason, it is a good idea to get clear on ownership of the band’s name from the outset, and spell it out in a written agreement. If the band is operating as a corporation or a limited liability company (LLC), it should be addressed in the articles of incorporation or the operating agreement. It can be a good idea for the corporation or the company to own the name, and to include specific intellectual property provisions in the operating agreement. This will put the band in a better position in dealings with producers and recording companies, and will forestall disputes over departing members’ use of the name.
The registration process
There are three basic steps in the trademark registration process: (1) a trademark search; (2) applying for registration; and (3) Trademark Office processing of your application for registration.
After you have completed your preliminary search of the Internet and think you have found a name that is not confusingly similar to another band’s name, it is advisable to do an actual trademark search, not only of the USPTO’s web site, but of other databases, too. There are trademark search firms who will do this for you. Before paying one of these firms, though, make sure you understand what you are getting. Non-attorney firms might produce a list of similar names, but will not advise you about whether a name is confusingly similar or not. Not being attorneys, they normally will not advise you about whether the name you’ve selected is eligible for registration or not. Finally, in many cases, they will only conduct a search of a single online database, the USPTO’s. A trademark attorney who performs this service for clients will search state and other relevant databases, will advise you about whether the kind of name you’ve selected is eligible for registration, and will give an opinion about whether any similar names his search uncovers are too confusingly similar to yours to be registered.
Application for registration
If you are confident that your name is eligible for registration, the next step is to file an application for registration of your trademark. The federal filing fee is $325 for each category of goods or services in which you wish to register a mark ($375 per category if filing by regular mail instead of electronically.) At a minimum, a band name should be trademarked in the categories of recorded music and live entertainment services. Other categories to consider might include clothing using the band’s name (e.g., T-shirts), and printed items such as posters. Ultimately, the categories you select will depend on how you plan to market your band.
You will need to include a specimen of your mark along with the application. A specimen is documentary evidence of your actual use of the trademark.
If you have not yet begun to use the name in commerce, you can file an “intent to use” application. You will still have to file a statement of use, along with a specimen image, at some point, but filing an intent-to-use application gives you more time to do it.
Examination, publication and opposition
After filing your application and specimen images, a trademark examiner will review your application for completeness and eligibility for registration. If there is a problem, you will receive an “office action.” You will then have a specified period of time in which to correct the problem and respond. If your application is not rejected at this stage, it will be published in the Trademark Office’s Official Gazette. Anyone opposing registration of your mark will then have a specified period of time in which to object. If an objection is filed, an opposition proceeding is commenced. An opposition proceeding is similar to a civil lawsuit, in that each party files pleadings, conducts discovery, and may make motions. An opposition proceeding can delay the registration process considerably, sometimes for years.
Issuance of a registration number and certificate
If your application is not rejected at the examination stage, and if it is not successfully opposed after publication in the Official Gazette, then your mark will be assigned a registration number and you will be issued a registration certificate.
Trademark registration only provides protection within the geographic region in which the mark is registered. A mark that is registered with the USPTO does not protect your trademark rights in other countries. If your band begins to tour internationally, or if you start selling your wares in other countries, you will need to register your band’s name in those countries to protect your trademark rights there.
After a registration certificate issues, it is your responsibility to police it, i.e., monitor the marketplace to ensure that no on is infringing it. It is also your responsibility to ensure that it is renewed at the proper times.
Should you hire an attorney?
While it is possible to register a trademark without an attorney, the USPTO recommends that you use one. There are good reasons for that. A trademark attorney can help you avoid wasting a lot of time and non-refundable filing fees trying to register an ineligible mark. Also, if your application contains even a single minor mistake, it can take many months for the USPTO to let you know, and it can take many more months after that for the USPTO to let you know if the problem has been corrected. An attorney familiar with trademark laws and the Trademark Office’s examining procedures should get the application right the first time.
Trademark protection for your band’s name is one place where the old adage, “An ounce of prevention is worth a pound of cure” is true. It is one of the first things you should do once you make the decision to seek a wider audience for your band’s music than the neighbors living next to your garage.
This article does not constitute legal advice. It is only background discussion about trademark issues. If you have any questions or concerns, it is strongly recommended that you contact a lawyer.