being sued over band name

[Robroy]

I love when people don't read threads and then way down the line they question previously stated details. You my friends are probably the kind of people that should never be commenting about legal or medical advice.

On that note, if these guys don't have the name already trademarked, you really should get on that.

According to a post up the thread, they do.

 

[Bass Master General]

Our band had something, somewhat similar happen. We're FLAGG

You're lucky Greg Ginn didn't try to sue you guys...

 

[BuffaloBob4343]

Yah, definitely trademark it and threaten them with a lawsuit .

Not going to work. They have priority for the use of the name. A trademark registration application would be subject to cancellation by the priority user, if UK trademark law if anything like the US, which is suspect it is.

 

[LordRyan]

I was in a band called Riders on the Storm that had been using the name since 1990. Several years ago when The Doors of the 21st Century lost the lawsuit over use of The Doors name they changed their name to Riders on the Storm. We started getting letters from their lawyer telling us we had to quit using the name. They did a European tour under the new name. Things worked out well for us when we went to Europe and a lot of people came expecting to see members of The Doors.

 

[BuffaloBob4343]

Donno how it works in UK, but in the US, you can't copyright something like that - it's a trademark issue.
If you like to roll the dice, go ahead and let them sue over copyright and then let it get tossed out since they sued over the wrong thing.
(Meanwhile, go process your trademark registration !)

Their initial contact is cheap & easy if it works - i.e. - you agree to stop.
Next up would traditionally be a 'Cease & Desist' letter from an attorney (I understand you have different names for civil vs criminal attorneys over there - this is a civil action. Barrister?) which is an indication they're more serious about it, but it will cost them something. It pretty much amounts to a threat.

Actual legal action will cost them, and maybe you, if you choose to defend. You'd probably have to countersue for court costs in the event you prevail.

Do your research - what kind of resources do they have to pursue such a claim? Who started using it publicly first, and can you document that?

People get confused over the differences between patent, copyright and trademarks all of the time. This tells me that they likely did that on their own. A lawyer would have gotten it right.

 

[Fergie Fulton]

hi guys
i just got an email from a band with exactly the same name as us.
basically, they say they have copyright on the name and have given us 30 days to stop using it, or we face legal action.
our first reaction is, stuff it!!!
we play in different parts of the UK, we play covers, it seems they play original material.
do they have any rights to the name?
btw, its "from the ashes", which if you google it, or look on youtube there are loads!
cheers

Wait for the letter...then decide how to move on. MU Legal department is a good move.
If not an MU member then joining may cost less than a single legal appointment or council????

But in all cases of the threat of legal action...wait for the letter to arrive then act.

 

[BuffaloBob4343]

It's a regional thing here in the states. Can't have the same band name if you're in the same region but if you're band is 1000 miles away, it fair game. Can you imagine how many bands have the same name here in the states?!?! 1000's!

That is unless you're a national act.

Not if there is a federal trademark registration! If a user of a name obtains a federal trademark registration, they have priority use in every corner of the US, EXCEPT those who may have used first and the use is limited to the territory in which the priority users had been using it.

Put another way, if one uses a name first and is touring and selling records nationally, one can establish common law rights in pretty much the entire territory where they have used the name as a trademark, without a federal registration. BUT on the other hand, you could be using the name just in your original city of Boston, sell a CD to someone in Pittsburgh, file and obtain a federal registration, and now that band owns that name throughout the entire US, even though they haven't played a gig outside of Boston. The only way their territory can be limited is iif some local band, say in Atlanta, had used the name BEFORE the registered owner sold their CD to someone in Pittsburgh, and then they would be frozen in time to their Atlanta locale. The owner of the Federal Registration cannot stop the Atlanta band from using it in Atlanta and a reasonable surrounding area, but they can outside of that.

 

[Kmonk]

Also, I worked enough in the copyright world to know that you don't need to register your copyright to make it valid and defend-able. You just need to establish proof that you're the creator and when.

That's true but it is much easier to defend if you register it.

 

[GreggBummer]

I'd wait for a letter from an attorney. An email is not the way official legal notices are served, you will receive it by mail. This will give you the name of the firm that is representing the band.

Then make a decision. If you feel they have a strong claim, change your name. If you feel that you have a stronger claim, lawyer up.

 

[BuffaloBob4343]

Since we're wandering into bigger trademark/wordmark territory...let me ask this. When we first became a band I did a search on our proposed name. No bands were or are using it. We've been performing under this name for 3 years, and obviously can confirm our timeline with our media outlets (FB, other band related sites, local and regional press, etc). A search of TESS shows no hits for the wordmark. Even the google prompt shows us as the top search term:

Invalid Link Removed

Without spending the roughly $1K to go through the registration process (fees plus legal) is there a good way to keep the primacy of our ownership of the name within the US.

When you depend on common law rights, like you are now, you only establish primacy (priority) and rights in those geographic areas that you have played or sold goods such as CDs and tee shirts, etc . with the name on it. The ONLY way to be sure no one else starts up in say Portland, Oregon is to obtain a federal registration.

In order to do that, you have to prove that the band name has been used in "interstate commerce," so you had to sell a CD, hat, tee shirt to someone in another state, or at least went on tour and played outside of your home state.

 

[BuffaloBob4343]

It doesn't need to cost $1000+ to trademark something either, as the actual fees are far lower than what the agent/lawyer is charging you to do the work.

As for other DIY things you can do to establish your ownership of it... get all that information together, as far back as it can be verified, and take it to a Justice of the Peace to notarize it. Or a lawyer to do the same. Another very simple thing... you can laminate your name and artwork - listing who the rights belong to - onto a post card and send it to yourself by registed mail, which becomes a legal timestamp at that point also. Any little thing can eventually be valuable down the road, if someone else starts elbowing in on your name.

Yes, true. But I've seen people try to register trademarks on their own, and it ain't just a fill in the blank application. You have to be sure the species of the use of the mark are correct and acceptable, you have to be sure you are choosing the correct classification of goods and services, and if you get a rejection based on something like your name is likely to be confusing to the public because someone else has a similar name, you are going to need to do some legal research to figure out how to argue against the rejection.

It's not just some automatic thing like copyright registration. Copyright registrations are like car registrations, it just says you believe you have correct title in the work and it allows you into court if you want to sue someone. But they don't exam it to be sure it's your original work, etc. They just take you word for it and let the courts settle infringement.

Trademarks are examined by examiners to be sure that the applications are of correct format, and they also examiner them to be sure they are not likely to confuse the public over other federally registered marks. Also, even if the PTO is willing to give you the registration, other trademark owners are allowed to contest the registration after allowance, or to cancel the mark even after registration if they feel that the mark will be confused with theirs.

Also, the old mailing something back to oneself is really ONLY good for establishing when a copyrighted work was created. It has NO value in Trademark rights and NO value in patents anymore.

 

[DigitalMan]

I would have thought the "After the Fire" rule would be in effect.

 

[BuffaloBob4343]

I've heard that in the US if you have a particular name and become big enough to be "big", you may have a problem if bands in some other state(s) have the same name, because they have the right to it simply by existing before you Trademarked.

But I could be wrong.

See my post above here for discussion of this issue. That is why it is always good in choosing a band name to be absolutely sure that is not only NOT already federally registered by someone, but also that there are not local users in various local areas using the mark, OR a name that could be considered confusingly similar as well. That is what is know as a trademark clearance search and big companies do it all of the time. They understand the PITA it can be if they are trying to establish a brand name and some podunk user has priority over them in Athens, Georgia.

Once you have established a clear mark, then file even an "Intent to Use" application. This allows you to establish national priority in the mark by essentially saying that at this moment, I intend to use the mark in interstate commerce. Once the examination process is complete, and the opposition period passes, the registration will issue pending the filing of a Statement of Use that references an ACTUAL use in interstate commerce that will establish the registration.

If you do that, anyone podunk user that comes along afterward you can shut down.

 

[Frank Tuesday]

Freakin' horrible lyrics.

The "melody" isn't so hot, either. To be fair, the lyrics are better that what I could do, but I know better than to write lyrics.

 

[Frank Tuesday]

You think the lyrics suck, you should read the bass players bio. Comes across as a real tool. The OP better watch out or their bass player might "kick the nose off his face".

Just the band mission statement is incredible:

FROM THE ASHES write the kind of music that refuses to tick boxes. Bringing together disparate influences, absorbing blues and heavy rock, grunge and country, ... create a unique sound that defies easy genre boundaries.

 

[AdamR]

Simply ask for proof such as the copywrite or trademark number.

 

[Big Brother]

To top what InterL says (and I'm a trademark expert myself as well), I did a quick trademark search in the UK, and DID find a proper mark granted in April 2013 to Malcolm Woolliams, Stephen White, Geoff White, Gideon Simons, 94 Huddleston Road, London, N7 0EG, on the proper trademark class (Class 41, which is "Entertainment", but also in classes 9 and 25, which are for CDs, DVDs, and downloadable digital music, and for Clothing including t-shirts, hoodies, sweatbands, caps and hats, as well).

They seem to be very well covered. Even if they have been using it only since 2013, and you pre-date them...it makes no difference. They protected it first, and they seem to be actively enforcing it.

My recommendation: change your band name immediately. Or wait until you get a cease-and-desist letter, but in the end you WILL have to change the name anyhow. You are, I'm afraid, infringing on their mark, and you have very few if no chances to contest that anymore (unless you did file an opposition, which it seems you didn't).

The post I was looking for... I suspected that the OP interchanged the terms 'trademark' with 'copyright' as opposed to the letter.

I would just add that if they couldn't afford an attorney to send a letter, they most certainly can't afford an attorney to sue anyone.

I assume that trademark holder sent the letter...

 

[gln1955]

It's also prudent to check not only if other bands are using aname, but if any company has a trademark claim. Once I was in a band that planned to use a certain catchy product name that happened to be a great name for a classic rock cover band. Doing a Google search I saw that not only were there a half dozen or so bands in the US using that name, I also saw that the legitimate corporate owner of the name had gone after one of those bands and succeeeded in shutting them down.

 

[MultiScaleMale]

Simply ask for proof such as the copywrite or trademark number.

MarkoYYZ posted earlier:

Invalid Link Removed

 

[Big Brother]

I remember going to see a band named 'Eddie and the Cruisers' in the mid 80s, the bar was filled with people waiting for them to play 'On the Dark Side,' the guitar player got pissed off when someone asked for it and said it 'wasn't their song.' OK that someone was me....

Likely they got a cease and desist from playing it because they wouldn't touch it. I assume they had an existing trademark for the band name because they had nothing at all to do with the movie or John Cafferty at that time.