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Talk To Our Lawyer | 05.06

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Keep records of when and where you perform, sell CDs, and get publicity so you can prove your priority of use of the name in various territories.

 

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One of the most valuable assets a band can own (besides the music) is its name. Before committing to a name for your band (read: spending lots of money, getting thousands of screaming fans, etc.), you should determine whether any other band is already using the name. Whether you have rights to your band name depends on a few things: (1) priority—whether you used the name first; (2) territory—area(s) [city, state, region, country, etc.] where you use the name; and (3) use —whether you actually perform under the name.

If you used the name first, you may be able to stop someone else from using the same or similar name. However, unless you have a federal trademark registration, which gives you exclusive rights to use the name for the same or similar goods and services throughout the United States, you only have rights to use your name exclusively in the area where you have actually used it. For example, if you began using your band name in the St. Louis area in 2000 and did not perform or sell CDs outside of that area, you cannot prevent a band in, say, New York from using the same or similar name…although you can prevent them from using the name in the St. Louis area if you were the first to use the name in that area. If you decide to apply for a federal trademark for your name in 2003, you most likely could not prevent another band that started using the name before that date in another part of the country from using the name in that territory, as they have priority in that area.

Researching a Band Name | You should research the potential name for your band as thoroughly as possible before committing to the name to avoid using another band’s name. Use search engines such as www.google.com, search the federal trademark database available at www.uspto.gov, and check with ASCAP and BMI to see if someone is using a name that is the same as or similar to the name you are considering. You may even want to consult an attorney and have a full trademark search performed to be as careful as possible not to infringe on someone else’s name. While you can never be absolutely certain that no one else is using your name, these are good methods to rule out potential problems from arising down the road (such as finding a cease and desist letter from another band’s attorney in your mailbox, or potentially having to destroy all of your CDs and merchandise, among other remedies, if a court finds you guilty of trademark infringement).

You will also want to check to see whether your potential band name is available as a domain name for your Web site. Visit www.internic.net or www.networksolutions.com and perform a “Whois” search for yourbandname.com and similar variations to see if someone already has it registered. If the domain name is available, and you are relatively confident that the band name is not being used by others, you may want to register the domain name to prevent someone else from getting it first.

Protecting Your Band Name | Once you are reasonably comfortable that no one else is using the name, you will want to protect it. An important issue to address in your Internal Band Agreement [see the March 2006 issue] is who, if anyone, gets to use the name if the band breaks up or if a key member or members leave the band. It is much easier (and less expensive) to deal with this issue when the band members are all happy with each other than to wait for a situation to arise and try to deal with it then. Keep records of when and where you perform, sell CDs, and get publicity so you can prove your priority of use of the name in various territories. You may also want to apply for a U.S. federal trademark (and/or potentially foreign trademarks), advisedly through a trademark attorney as this process is quite a bit more expensive and complicated than registering your copyrights. Furthermore, use the ™ or SMsymbol with your unregistered band name and/or logo to let others know that you claim trademark rights in your name. If you have a federal trademark registration, be sure to use the ® symbol to inform others that you have a registered trademark.

Trademarks | A trademark includes any word, name, symbol, device, or any combination of these used or intended to be used in commerce to identify and distinguish the goods or services of one manufacturer, seller, or provider from goods or services manufactured, sold, or provided by others and to indicate the source of the goods or services. In short, a trademark is a brand name. Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark. Note: The term “trademark” applies to a mark used to identify goods or products (such as CDs or band merchandise) and the term “service mark” is a mark used to identify a service or service provider (such as a band name). For purposes of this article, a trademark is the same thing as a service mark and the only real distinction is how a mark is being used: in association with goods or services.

Registering Your Trademark | Federal registration is not required to establish rights in a trademark. Common law rights arise from actual use of a mark. Generally, the first to either use a mark in commerce or file an intent-to-use application with the U.S. Patent and Trademark Office (“USPTO”) has the ultimate right to use and register the mark. However, federal trademark registration provides many benefits, such as the exclusive right to use the mark on or in connection with the goods or services set forth in the registration. To obtain a federally registered trademark, an application must be filed with the USPTO, and the application filing fees range from $325–375 per mark per class of goods and services. (The four classes of goods and services that are usually a registration priority for a band are [1] Class 41 for the band’s performing services as a musical artist, [2] Class 9 for CDs, DVDs, and other music media, [3] Class 25 for t-shirts and other clothing items, and [4] Class 16 for posters, stickers, and other paper merchandise.)

Use of the ™ or SMSymbols | Use of the symbols “TM” or “SM” (for trademark and service mark, respectively) usually indicate that a party claims rights in the mark and are often used before a federal registration is applied for or issued.

Proper Use of the Federal Registration Symbol ® | The federal registration symbol may be used once the mark is actually registered in the USPTO. Even if an application is pending, the registration symbol may not be used before the mark has actually been granted registration. The federal registration symbol should only be used on goods or services that are the subject of the federal trademark registration.

Date of First Use of Mark Anywhere | The date on which the applicant first used the mark in commerce anywhere. Please note this date may be earlier than, or the same as, the date of the first use of the mark in commerce date.

Date of First Use in Interstate Commerce | For goods, “interstate commerce” involves sending the goods across state lines with the mark displayed on the goods or the packaging for the goods. With services, “interstate commerce” involves offering a service (performing a show) to those in another state or rendering a service which affects interstate commerce (e.g., restaurants, gas stations, hotels).

Specimens of Use | A specimen is a real-world example of how the mark is actually used on the goods or in the offer of services. Labels, tags, or containers for the goods are considered to be acceptable specimens of use for a trademark. For a service mark, specimens may be advertising such as magazine advertisements or brochures. One specimen is required for each class of goods or services specified in the trademark application.

This article provides an overview of some issues you should consider if you are engaging in activities in the music business as a musical performing artist. However, trademark law is very complex. Because your marks can be some of your most valuable assets, please consult with an attorney who has experience with trademark prosecution for advice regarding your particular needs and issues.

| Danica L. Mathes is an entertainment and intellectual property attorney with Blackwell Sanders Peper Martin LLP and an adjunct professor of entertainment law at Washington University School of Law in St. Louis. For more information, contact Danica at dmathes@blackwell
sanders.com. If you have topics you’d like to see addressed in future columns, let us know at This e-mail address is being protected from spambots. You need JavaScript enabled to view it .


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