Trademarking Band Names: The Basic Steps

I once told this writer a story about how I met the guys in an elevator and found out that we all had the same last name, so we decided to form a band.

–Joey Ramone, The Ramones

Finding the right band name can be a tricky process. You not only need to find a name that fits the band well, but also a name that is not already being used by another band.

A band’s name will often become its most valuable single asset, since a successful band’s name will, in itself, sell records and draw live audiences. Unfortunately, however, many bands fail to take even the most basic and inexpensive steps to legally protect their band’s name, and as a result jeopardize their rights to use the name and to keep other bands from using the same name.

There are several steps necessary to assure the maximum possible legal protection for a band’s name. Some of these steps — such as filing a federal trademark application — can be pricey, and may not be feasible right away due to a band’s limited finances. On the other hand, there are some other steps which are relatively inexpensive, and sometimes even free, but which will help a band avoid unpleasant legal repercussions in the future.

For example, it is very inexpensive to file a State trademark application (for example, with the State of Oregon). (The filing fee for a State of Oregon trademark application is $20, while the filing fee for a federal trademark application is $335). Though a State trademark registration offers far fewer benefits than a federal registration, a State trademark registration does offer some benefits, and also will get your band into the various national trademark databases that are used for trademark searching and may, as a result, discourage another band in the future from adopting your band’s name as their own.

Generally speaking, the following steps must be taken in order to seek the maximum possible legal protection of a band’s name: (1) When choosing the name, try to be sure that no one else is already using the same name; (2) Once a suitable name is selected, then have a written agreement among the various members of the band as to future legal rights to the name if the band breaks up, or if some of the members leave the band; (3) File the appropriate trademark application forms; and (4) Monitor the entertainment industry to be sure that no one else starts using the same name.

There are various problems that can arise when a band fails to take the necessary legal precautions. The most common problem is adopting a band name that is already being used by another band or entertainment company. A close second would be situations in which one or more members of the band leave the band, or the group splits up, and there is a dispute about who has the right to use the band name.

SOME TRADEMARK BASICS

It’s important to first remember that the legal protection of groups’ names is available through federal and state trademark laws, and not as a result of copyright law. In other words, a band’s name is legally considered a kind of trademark. Often the terms “trademark” and “copyright” are used interchangeably, however they have completely different meanings. Trademark law protects names and logos, including the names and logos of bands. Copyright law, on the other hand, protects such things as artwork and songs. So when we are talking about protecting a group’s name, we are talking trademark law.

Here’s another important fact to remember about getting legal protection of bands’ names: Legal rights to a band’s name, cannot, generally speaking, be obtained merely by sending in a trademark application form. Generally speaking, legal rights to a band name can be created only by active exclusive use of the name. There is one exception to this general rule, though. In certain circumstances, a federal trademark application can be filed even before the name is used, due to major changes in the federal trademark statute back in 1989. This is called an “ITU” (intent to use) application.

In any event, before a band starts actually using a particular band name (or files any trademark applications), it should make a serious effort to determine whether the same or a very similar name is already being used by another band. Otherwise, there is the risk that the band could spend a lot of time and energy developing public recognition of the band’s name, only to find that it has no legal right to use the name. The band may also unexpectedly find itself involved in a very expensive lawsuit.

Now, back to the issue of what steps are necessary to legally protect a band name.

CHOOSING A NAME

A prospective band name should of course be unique, not only for artistic reasons, but also for legal reasons as well. It is much easier to get legal protection for unique names like “Jimmy Eat World” than for more generic, descriptive names (like “The Band”).

Another consideration is that sometimes you cannot even use your own personal name as part of the band’s name, since someone else with the same name may already have exclusive trademark rights to the name. If, for example, your legal name is James Brown and you include that name in your band’s name, you can be certain that you will hear from the attorney for the James Brown as soon as you reach any degree of recognition in the music business.

Also, as already mentioned above, it is EXTREMELY important to avoid band names that are identical to OR confusingly similar to the names of already-existing bands. Another band’s name does not need to be identical to your desired name for it to cause you major trademark problems. As long as there is a likelihood of confusion among the public between the two names, you have a big problem. Therefore, it doesn’t work to just change the spelling of the name or to make only minor changes in the name.

Therefore, once you have decided on a name you like, you must then determine whether the name (or any very similar name) is already being used by someone else. For example, you should do an intensive Internet search. It’s also a good idea to check record store catalogues (Phonolog, etc.) and music business directories (like the Billboard directories and Pollstar). You should also do a search on the U.S. Trademark Office’s website (www.uspto.gov), but that database only contains trademarks which have been federally registered, and so it does not contain all the info you really need.

If the name still seems to be available after you have done your research, you should consider, as a final step, having a computerized trademark search done by a trademark research company, so that you can find out whether the name is already being used by someone else. The cost for a preliminary trademark search runs approximately $100, and a comprehensive search currently costs around $400-500. This is often money well spent. The advantage of obtaining a trademark search report from one of these companies is that they maintain massive databases containing, for example, all business license records of all the States.

By the same token, you should also be aware of a serious problem area in the area of trademark researching: the problem of “below the radar screen” bands. This problem arises from the fact that there are thousands of local bands who have never filed a trademark application, and who have never released a record through an established distributor, and who have never done anything “official,” like taking out a business license. As a result, these bands will typically not show up on any trademark search reports, yet they very easily may have established trademark rights to their band name, at least in their own local or regional area. Other than doing as much research as possible, there is really no way to avoid this problem; it is one of several risks inherent in the trademark process.

TRADEMARK REGISTRATION

A trademark application can be filed with the federal government if the name is being used in interstate or foreign commerce. Under certain circumstances, a federal trademark application can also be filed even before the name is used, due to major changes in the federal trademark statute back in 1989. This is called an “ITU” (intent to use) application.

In addition, trademark applications can be filed in any State where the band is doing business. If a federal registration has already been obtained, it is generally not necessary to also obtain State registrations, though it is sometimes a good idea to do so.

As I mentioned above, it is not absolutely necessary that a trademark application be filed in order to have legal rights to a name. Nonetheless, there are many substantial legal advantages in having a trademark registered, particularly if it is a federal registration. As a general rule, any band desiring to protect its name on a national (or even regional) level should file a federal trademark application as soon as it is financially feasible to do so. This is because the federal trademark statute says that your filing of a federal trademark application is legally considered to give national public notice of your use of the name to anyone not yet using the name. (This is referred to as the “constructive notice” provision of the federal trademark statute.) In some situations, your federal trademark registration may enable you to defeat the future trademark claims of another band using the same name or a very similar name.

In short, the filing of the federal application at the earliest possible time can give you trademark rights which you would not have had otherwise (assuming, of course, that you are issued a federal trademark registration based on your application.) In a number of instances in which a band has obtained a federal trademark registration early in its career and then later confronted a trademark dispute over the band name, the band’s early federal trademark registration enabled the band to keep the band name which it otherwise would have lost.

One final comment about the federal trademark application process: The Trademark Office’s rules are strict, technical, and unforgiving, and you need to be sure you are dotting every “i” and crossing every “t”. Otherwise, you can find that you have either damaged your trademark rights and/or are forfeiting your application fee without any right to a refund.

THE DIFFERENCE BETWEEN TRADEMARKS
AND “ASSUMED BUSINESS NAMES”

A trademark is a name or logo that the public, or some significant portion of the public, knows your band by. On the other hand, an “assumed business name” (also known as a “dba”) is the name you do business by with other businesses, whether the public recognizes that name or not. In other words, a trademark is the name that the public knows you by, and an “assumed business name” is the name that other businesses know you by, akin to a company name.

With some bands, the band name and the “assumed business name” are the same name. With other bands, they may have a company name that is different than the band name. In either case, though, both a trademark application and an “assumed business name” application should be filed. For one thing, banks require you to register your “assumed business name” with the State before they will open a bank account for your band, unless the band is set up as a separate legal entity (for example, as a corporation or a LLC (limited liability company).

Trademarks and “assumed business names” can each be registered with the Oregon state government in Salem (in addition to the right to register your trademark with the federal trademark office in Washington, D.C.).

The only reason that I mention this distinction between trademarks and “assumed business names” here is that sometimes someone will file an “assumed business name” application with the Oregon state government and think that they are filing a trademark application, or vice-versa. Therefore it’s important to keep this distinction in mind.

AGREEMENT AMONG BAND MEMBERS

It is CRUCIAL that you have a written agreement among the band members regarding who can use the name if the band breaks up, or if some of the members leave the band. Experienced entertainment attorneys routinely include such provisions whenever a written partnership agreement or incorporation or limited liability company (LLC) papers are drawn up for a band (most often, these days, it’s an LLC agreement). Or, alternatively, and less preferably, there can be an agreement drawn up that pertains only to the rights of the band members in the band name and that doesn’t cover the other aspects of the band’s business (such as, for example, how the band’s income and expenses will be handled).

Incidentally, it is extremely important that the band agreement relating to trademark rights be drafted very carefully, because a poorly drafted provision can easily create many more problems than it solves.

FURTHER STEPS TO PROTECT THE NAME

Whenever you use your band’s name — for example, on posters and record packaging — you should give notice of your trademark rights. If you have obtained a federal trademark registration, there should be the symbol ® (an encircled R) next to the band’s name in a conspicuous place somewhere on the packaging and in print ads. If, on the other hand, a federal registration has not been obtained, you cannot legally use the symbol ®, but you can use the symbol ™. For example, Nickelback® or The Jones ™.

It will also be necessary to renew your trademark registrations after a certain period of time — for example, after ten years in connection with federal trademark registrations, and after five years for trademark registrations with the State of Oregon. In regards to federal trademark registrations, there are also some other documents which must be filed from time to time, in order to keep the federal trademark registration in effect.

Finally, you should take immediate legal action if someone else starts using your band’s name. Otherwise, you run the risk of losing all legal rights to the name. Names like “aspirin” and “thermos” were once legally protected trademarks, but were later lost because the trademark owners of those names failed to stop other companies from using those same names.

In short, the following steps should be considered whenever a band is trying to protect its band name as much as possible: (1) First, try to be sure no one else is using the desired name: (2) Have a written agreement among the band members as to the members’ rights to future use of the name; (3) Obtain federal and state trademark registrations, if possible; (4) Be sure that your trademark registrations are renewed when necessary, and that other necessary documents are filed in a timely manner, and take immediate legal action if someone else starts using your band’s name as their own.

 

Editors Note: The reader is cautioned to seek the advice of the reader’s own attorney concerning the applicability of the general principles discussed above to the reader’s own activities.

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