Trademarking the bands name?

[Music Attorney]

I was seeking information to make sound decisions.

Let's start with the basics: A trademark is any word, name, symbol or device or any combination thereof adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those made or sold by others.

The whole point of a trademark (or service mark) is to identify your product or service to the consumer. If you see a can marked with Coke's name and distinctive packaging, then you're going to expect a certain taste from the can.

A service mark is a little different, but also applicable in the music space. A service mark is defined as a mark used in the sale or advertising of services to identify the services of one person and distinguishing them from the services of others. An example here would be in the touring space since the band isn't selling a product as much as it's providing a service.

In the U.S., the mere first and continuous use of a trademark (which does not infringe on the mark of someone else), can give rise to a common-law trademark which gives that trademark owner certain exclusive rights to the trademark. So then why pay a lawyer, filing fees, etc. to obtain a Federal registration?

First, the protection afforded a common-law trademark is limited to the geographical area within which it has actually been used whereas a federal trademark covers all territories covered by U.S. law. Also, having a federally registered trademark generally allows for much quicker enforcement of rights and more damages. Finally, if you follow all the steps for proper trademark registration, you will ultimately have an unassailable and conclusive claim to the exclusive right in your mark.

So if I have a trademark I can use it for everything, right?

Nope. Trademarks are awarded in categories/classes. Therefore, if you want to use your trademark in connection with sound recordings (e.g., masters, videos, etc.), then you need to register your mark in Class 9. If you want protection when you use your trademark on t-shirts, then you need to register your mark in class 25, I believe. If you want to use your mark in connection with entertainment services (e.g., touring, live performances, etc.), then you'll need to register your mark in class 41. And so on.

However, those 3 categories above are the ones I usually get for my clients (or, more accurately, have someone else get since I don't handle trademarks or work in that area).

And logos are a whole separate discussion apart from trademarking names.

So how might this play out in the real world?

Let's say band A uses one name in Los Angeles and band B uses the same name or one that is confusingly similar (e.g., Dead Lightbulbs versus Ded Litebulbs) in New York. Band B signs to Sony in New York and spends 12 months recording an album. Marketing plans are created and the album is released and the band goes on a national tour (including Los Angeles) only to get a nasty letter from band A's lawyer saying you can't tour in Los Angeles under Ded Litebulbs because it will confuse people in Los Angeles. Again, the whole point of a trademark is so that consumers aren't confused. If they buy a coke, they know what they're getting. If they buy tickets to a show, they know what band they are seeing. For example, if you heard the name Ded Litebulbs during a radio advertisement you would have no idea it's spelled differently.

Regarding costs, it obviously depends on a number of factors, but assuming the Dead Lightbulbs isn't problematic or competitive with other trademarks, then I think a range of fees (which includes government filing fees) for the 3 classes I mention would be between $1,500 and $2,500. But, again, I don't do practice in this area and if the client thinks it's worth trademarking, then I think it's important to pay someone I trust and who knows what they're doing. That is, cost is not the primary consideration.

That said, I think you can contact the Commissioner of Patents and Trademarks, Box 9, Washington, D.C. 20231, or call (703) 557-3158, and request that they send you pre-printed applications for trademark and service mark registration by an individual, firm, or corporation, whichever is appropriate in your case. The USPTO will, upon request, supply you with information pamphlets.

I'm sure I've left stuff out, but that's a start.

MA

 

[MultiScaleMale]

I was seeking information to make sound decisions. What I am seeing here is projected jealousy of a band that might be going somewhere or condemnation for even thinking it might. I did not come here seeking such Drama, just for the record. All I wanted was the information not the editorialization.

You're a metal band. Of course you're going to make it big. Heh.

 

[Music Attorney]

I was seeking information to make sound decisions.

OK. I just read another post of yours that said "we" (instead of "I") and that brings up an important point: Who is going to own the trademark?

If it's the band, and the band breaks up (not that it would ever happen), then what happens to the mark? This is a huge issue in the real world where legacy bands are touring under the famous name, but everyone on stage is unrecognizable. Also, you may have a band split where each new offshoot wants to use the name.

Definitely something to consider.

MA

 

[Music Attorney]

Intellectual property is something that you already own, without needing to do anything at all involving the government. If you come up with an idea (like a band name), you own it, no matter what.

That’s not really accurate. For example, I represented a rapper who wanted to be professionally known as “Black.” Why couldn’t he trademark that name? Because it was too generic.

Another example was an artist who wanted to be professionally known as “Porcelain.” Again, the name was too generic and in broad use. The USPTO would not give a trademark for just the name “Porcelain”

And you don't own ideas. Just because you have an idea for a TV show, doesn't mean you own it. For example, I have an idea for a cop show set in New York City. What is it I own?

MA

 

[Metalbasspro]

All things considered I guess we need not worry about trademark and registration. My old band copy righted our songs but someone stealing the music was never an issue. I and we are used for my purposes interchangeably. It's not my project it's the brain child of a 23 year old guitar player.

Having done all this at his age I am trying to get it right for these kids and avoid any pitfalls so that is why I asked.

My conclusion is it's nothing to worry about.

 

[Music Attorney]

I think the reason we see these cheesy "name followed by a number" band names is that they're safe from trademark infringement.

Can you give me an example of what you're talking about? The issue is consumer confusion. Just adding numbers to a name is unlikely to make you safe from a trademark claim.

 

[Music Attorney]

Trademarks don't work like copyright.

Unless you register your mark, you are not protected. And whoever properly registers the name first is the holder of the trademark.

Don't register, and it won't matter if you've been using the name for years. The guy who registered the same name just last week legally owns "your" name.

Expect a letter if that happens. Especially if you're well known and successful - and an attorney representing the holder of the trademark senses there's money to be made off you.

Not true. There are state laws and common law trademarks that attach by being the first to use the name in commerce in a geographic area. For federal protection, then, yes, you do need to register. However, per my example in my other post, the state and common law trademarks can be every bit as enforceable.

 

[Music Attorney]

Its been a while but if I recall correctly, there are two steps to establishing a trademark. The first is to declare your intention that something is your trademark by putting a TM next to it, which doesn't require any paperwork or registration. The R in the circle means its registered with the USPTO, and that offers additional protection if you ever get into a dispute with someone who has something similar. In order to get a registered trademark though, you'll need to prove that you've already established a connection between it and your business.

That said, I'm not sure trademark is that big of a deal for band names. I don't recall seeing a TM or R next to any band names or logos. This sort of thing might be more of a copyright issue, and copyright is granted automatically as soon as you create something. You don't need to register that.

Also, this information is all assuming you're in the U.S. Other countries probably have different rules.

Your steps are wrong and the symbols you mention aren't terribly relevant. More importantly, trademark disputes among bands is one of the most litigated areas in the music business.

 

[Music Attorney]

Adding a little to this; If you're ever interested in shopping an album to a label or management, it is not at all uncommon for them to ask you to change your bands name. I've seen and heard of both instances-

Where a label shows interest, but refuses to sign a band until they change their name. Often it's due to marketing and/or offensiveness (more common than people realize)
Where a label is actually drawn to the name for whatever reason, only to find out that the name is in fact taken already (MUCH less common)

I agree that new artists are often asked to change their name for a variety of reasons (including, as you say, for marketing reasons).

However, the problem of names being already taken is a HUGE problem in the industry because the interwebs have allowed thousands and thousands of artists and bands to get their name out there. Bigly problem.

 

[Music Attorney]

Next catch is the tough one. Unless you 'police' you mark, and take every violater to court, you loose your protections.

No.

 

[Music Attorney]

Those who have trademarks only keep them by defending them. Large corporations have staff that do little more than defend trademarks and copyrights all day long.

Can you imagine how few bands check with the trademark office before picking a name?

For large corporations, there's some truth to that. But no one can (nor are they expected to) police and defend their trademarks all day every day. Yes, there is some requirement about defending your marks, but you're taking the concept way to the extreme and it would be an entirely different standard for a small business like a band.

 

[guy n. cognito]

For large corporations, there's some truth to that. But no one can (nor are they expected to) police and defend their trademarks all day every day. Yes, there is some requirement about defending your marks, but you're taking the concept way to the extreme and it would be an entirely different standard for a small business like a band.

My example was dramatic, intentionally of course. But if you look at the statement to which I replied, you'll understand the point I was making.

 

[Music Attorney]

You said:

My example was dramatic, intentionally of course. But if you look at the statement to which I replied, you'll understand the point I was making.

The statement to which you replied said: :I came here to see about information. The information posted suggests we need not worry about it. With trade marked name and registered I don't see why there would be a legal battle. Isn't that why you go to the trouble? To avoid it?"

Registering the mark can make a "legal battle" go away by sending a simple cease and desist letter which can very often help "avoid" the legal battle by allowing you to point out your ownership of the mark. And can be a very good reason for justifying the cost as to "why you go to the trouble." Unless I'm still missing something, I don't see the point you're making.

 

[dxb]

First, the protection afforded a common-law trademark is limited to the geographical area within which it has actually been used whereas a federal trademark covers all territories covered by U.S. law. Also, having a federally registered trademark generally allows for much quicker enforcement of rights and more damages. Finally, if you follow all the steps for proper trademark registration, you will ultimately have an unassailable and conclusive claim to the exclusive right in your mark.

I'm curious, how would this apply to a trademark used primarily on the internet, since it's not tied to a geographical area?

 

[dxb]

Your steps are wrong and the symbols you mention aren't terribly relevant. More importantly, trademark disputes among bands is one of the most litigated areas in the music business.

What are the correct steps then? At least generally speaking, don't you have to be able to prove that a trademark is yours and that you're actively using it to be granted federal protection? And you're saying its not necessary to include those symbols on printed materials? Like I said, I got my info 20 years ago and it was related to the printing/graphic design field, specifically whether or not to add the symbols next to logos and slogans on packaging.

 

[40Hz]

Not true. There are state laws and common law trademarks that attach by being the first to use the name in commerce in a geographic area. For federal protection, then, yes, you do need to register. However, per my example in my other post, the state and common law trademarks can be every bit as enforceable.

Learn something new every day.

The attorney who told me what I passed on must have only been talking about federal protection.

I guess she only gave me the Cliffs Notes version because I wasn't her client and the topic just came up in a general conversation at a social gathering. (She did give me her card however.)

Thanks for the correction. I'll add a note to my original post.

 

[allotabass]

OK. I just read another post of yours that said "we" (instead of "I") and that brings up an important point: Who is going to own the trademark? If it's the band, and the band breaks up (not that it would ever happen)

Good point.
I was in a band 25 years ago and blah blah blah blah we broke up.
I.....not them, had sent away for a copy right form to protect our two cd's full of original music.
I, not them, sent it off with my name as the sole owner of said original work and got a confirmation and some type of docket number. I still have the return documents.
I also went to the studio and got every copy of the DATS and I still have those as well.

Bottom line is this. Trust no one even if you all agree in the presence of a f'n voodoo witch doctor to never turn your backs on each other.

They screwed me so I took it all.

 

[lfmn16]

Don't bother. I was in a band that trademarked our name in the 70's. A label band came out with the same name. We hired a lawyer and they just ignored us. We couldn't afford to pursue it. Unless you have the money to protect your trademarked name it's a waste of time. There was a band called Starz in DC in the 70's. They had protected their name and a label came out with a band named Starz. After about a year of legal costs, they gave up and changed their name to DC Starz.

You only get as much justice as you can afford.

 

[Coolhandjjl]

That’s not really accurate. For example, I represented a rapper who wanted to be professionally known as “Black.” Why couldn’t he trademark that name? Because it was too generic.

Another example was an artist who wanted to be professionally known as “Porcelain.” Again, the name was too generic and in broad use. The USPTO would not give a trademark for just the name “Porcelain”

Isn't that similar to a trademark application being shifted to the supplemental register because it's too descriptive? IE, a burger joint wanted to get a trademark for the name 'Thick and Juicy', and if their burgers really are thick and juicy, it goes to the supplemental register where rights and protections are different?

 

[gln1955]

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