Trademarking Your Band
Are Your Protected?

by Stacey Friends, Esq.

You May be wondering, ‘trademarking, copyrighting, what’s the difference?’ Or perhaps you always wanted to know what the “™” or “©” symbols mean. Or maybe you are starting to sell Cds and merchandise and you want to make sure no one else has your band name, and that you can protect it. We have all heard the stories of bands that developed a following, spent lots of money on CDs, t-shirts, stickers, and a Web site, only to find out that another band somewhere else was using the name before them and they needed to change their name. This article will discuss the fundamentals of trademarks and how they work, how to search your band name to make sure there are no obvious conflicts, and the basics of registering your trademark.

WHAT IS A TRADEMARK?

A trademark is a word, phrase, symbol, or logo (and very rarely, a scent, sound or color) that is used to identify a source of goods or services to consumers. Famous trademarks include Coca-Cola (including the wavy symbol and various slogans over the years such as, “Have a Coke and a Smile”); McDonald’s (including the golden arches) and Nike (including the “swoosh” logo). Trademarks are protected by federal law, but the law does not exist to protect businesses, it exists to protect consumers from confusion. Think of how confusing it would be to encounter a White Stripes CD with 2 people pictured on the cover that were definitely not Jack and Meg. Once a person or company has begun using a trademark in interstate commerce, then that name has protection. The user basically has a monopoly on that mark for those particular goods or services, and in the U.S., the first user of the mark wins. Trademarks are considered valuable intellectual property. Large companies spend millions of dollars choosing new marks, registering them, enforcing them and marketing their goods using the marks. Even small local bands rely on their names - spending their own money on CDs, t-shirts, stickers and other merchandise, and building up an audience and reputation in that name.

Trademark law is completely separate from copyright law, which protects original artistic works fixed in a tangible medium, and specifically does not protect words or names. Some bands think that because they have registered the copyright in their CD, that they also have protection for their band name, but this is absolutely not so.

Trademark Rules: There are many, many rules and requirements for trademarks, but two major concepts that everyone should know are distinctiveness and likelihood of confusion.

Distinctiveness: Distinctiveness in trademark law refers to the uniqueness of the mark. Marks that are highly unusual, made-up words (called “fanciful”) are the strongest marks and will receive the highest level of protection, for example, “Xerox.” Marks that consist of a real word used for an unrelated product (called “arbitrary” marks) are also strong and receive high levels of protection, for example, “Apple” for computers. Marks that begin to hint at the product they represent (“suggestive” marks) are less strong, but still protectable, for example, “Coppertone” for suntan lotion. The problem is when someone chooses a name that is descriptive, such as “Rock Records” for a record label. Because the words in that mark are real words that actually describe the goods, the owner of that mark cannot claim trademark rights in that mark and cannot have a monopoly on those words for those goods - because others would need to use those words to describe their goods. This situation does not happen too much in the music world because artistic people normally choose very creative names for their bands and companies, but it is still an important concept to understand. You cannot protect just any name, it has to be distinctive.

Likelihood of Confusion: This is the standard used under trademark law to determine if one mark conflicts with another. Again, trademark law protects consumers from confusion, so a mark that is similar to another mark and used for similar goods is said to create a “likelihood of confusion” and will not protectable. A band in such a situation will not be able to use or register that name. Bands should be very careful to first search their name to check for conflicts. Many a band has had to change their name due to the existence of another band somewhere else, usually one who has just been signed and is about to be distributed nationally (see this author’s article on Band Agreements in the October issue of Performer for such a story). Remember, in trademark law, the first user wins.

SEARCHING A MARK

Bands can search their names through a professional search company such as Thomson & Thomson or CCH CORSEARCH. Search reports are very expensive (about $400), but are the safest route because they uncover all potential conflicts, including federal, state, and unregistered uses. Bands without such funds can do a few things on their own or through an attorney (a trademark attorney is recommended because attorneys know how to search using several permutations of a mark, where to search, and what to look for). First, one should conduct a general internet search using a search engine. Second, one should check the Patent and Trademark Office (PTO) (www.uspto.gov), to see if anyone else has actually registered or applied to register the name with the PTO. A band, or their attorney, should then carefully scrutinize the search results for potential conflicts with similar marks for similar goods and other factors.

REGISTERING YOUR TRADEMARK

Once you have carefully chosen your name, making sure it is both distinctive and not conflicting with an existing mark, then you may choose to register your mark. Registering is not necessary, as the law protects you once you start using the mark in interstate commerce. However, registering does have many benefits, such as notice to the public of your rights, the ability to enforce your rights in federal court, and more. If you do not register your mark, be sure to use the symbol next to your mark to alert others that you are claiming trademark rights in your name. If you decide to register your mark once you receive the actual registration certificate (usually a year or two after you apply), you may then use the ™ symbol next to your mark.

Registering a mark is done through the PTO. You can file paper documents through the U.S. Mail, or you can file online. Again, it is recommended that you hire an attorney to do your trademark registration for you, only because the application is more complicated than it appears. Often people trying to do it themselves make mistakes which they are then unsure of how to correct, so they have to hire an attorney to help anyway. That being said, the application process basically includes the following:

Contact information: You have to decide who owns the mark - an individual or the band - the entity type of the owner, and the address and contact information for the owner.

Mark: You can apply for just the typed name or for a logo. You should apply for the mark exactly as you are using it or as you intend to use it. Make sure you follow all the rules for submitting marks. Typed names must be in all caps, and if you are not filing online, there are also size restrictions. Logos must also be of a certain size and in black and white if not filing online and, if filing online must be in a certain format. The logos you submit to the PTO must not contain any other symbols or information, including the ™ symbol.

Use/Intent to Use: If you are already using the mark in interstate commerce, you will file a “use” application. If you are not yet using the mark in interstate commerce, but you intend to very soon, then you may file an “intent to use” application. There are further implications, both legal and financial, of filing use or intent to use, so again, I suggest you seek the advice of an attorney.

Class of Goods or Services: You will have to decide what goods or services for which you want to apply. You cannot have a monopoly on your name for everything under the sun; you have to choose exactly what you will be selling under that name. For bands, this usually means recorded music or entertainment services. Each of these is in a different class, and the PTO application fee is per class, so you should think carefully about this decision.

Description of Goods or Services: You will be asked to describe your goods or services. The PTO is very picky about how these descriptions are worded - they even have a whole manual called the “Acceptable Identification of Goods and Services Manual.” This is another good reason to hire a trademark attorney, because if the PTO does not like the way you worded the description they will issue you an “Office Action” asking you to revise it, which confuses most clients and costs a lot of time.

Specimens: If you are filing a “use” application, you must also file “specimens” along with the application showing your use in commerce. For example, if you are a band and you are applying for recorded music, you would submit a CD. If you are applying for entertainment services, you could submit advertisements, posters or tickets showing your performances. If you are filing online, you would submit electronic specimens, for example, a digital photo of your CD. Surprise, surprise, the PTO also has strict rules about specimens - size, color, electronic format, etc.

Fee: The PTO currently charges $335 per class for trademark applications. There are also further fees down the road if you file an intent to use application.

Registration: Once you have received your registration certificate, you should use the Æ symbol next to your mark, and be sure to calendar the date of your registration to keep up with the post-registration maintenance documents.

Maintenance: After registration, you must maintain your mark with the PTO. You must file documents between the 5th and 6th year after registration, between the 9th and 10th year after registration, and every 10 years thereafter. Each such document has a fee attached to it. Your attorney can explain these documents in detail to you.

This is only a summary of trademark law and the trademark registration process. Please be aware that there are entire law school courses in trademark law, and it is not as simple as it may appear. This article is not meant to be specific legal advice for you to rely on or to help you undertake the trademark process yourself, but it is meant to give you enough information to at least choose a name wisely and to know when you will need the help of an attorney. However, any time, effort or money you spend on the trademark process will be money well spent, because strong, cleared trademarks have a worth all their own. Bands should at least choose their names carefully and do a search to make sure they can claim trademark rights; otherwise, they could spend a lot of money on merchandise and other items only to have to spend more to change it all later to reflect a new name.