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by: Shelly Harris / Entertainment
Attorney
MUSIC LAW
For the next few columns, I am going to answer “real
life” questions
that have been emailed to me which are representative of concerns shared by
many young bands:
Q: We have been playing out and recording under our band name for
several years, but never officially servicemarked/trademarked our name with the
US Patent and Trademark Office (www.uspto.gov)
because of the expense. Now a new band has surfaced in our area using the same
name, just spelled slightly different. What can we do about this, if anything?
A: If you were holding yourselves out to the public (performing
under your name in public and/or selling CDs under the same name) before the
other band and can prove it with hard evidence such as a dated ad, poster, or
newsletter, etc., then you are first in time with the use of the name (provided
no other band was using the name in commerce before you), and would have
priority under the eyes of the law, even if the other band officially registered
the name first. However, to enforce your rights, you will also have to
officially register the name in order to validly request that they cease and
desist use of the name, or to pursue further legal action to prevent them using
the name in the future. If the other band registered before you, however, you
will need to take up the issue with the US Trademark
office before applying for a servicemark for the same name. You can get
answers to such questions by calling the information line at the USPTO at
1-800-786-9199.
This question actually presents several common
issues/concerns. First, you will probably be “servicemarking” the name
rather than trademarking it, although you will be using the same form, and the
$325 fee is the same. This is because, as a live band, you will actually
be providing entertainment services rather than “brandnaming” goods.
The goods that you might eventually want to protect –– your original songs
and the performances of those songs –– are actually protected via
copyrighting them, which is another issue altogether. (I will revisit
copyrights again in a future column.)
Second, remember that the name of your band need not be
exactly the same as another band's for a trademark issue to arise. If two
bands, no matter what genre of music they perform or known for, have names that
are close enough in sound or the image they evoke to cause the possibility of
confusion in the minds of the general public, then the band using the name first
would have valid cause to enjoin the other from using the name.
Third, if you do trademark (servicemark) your name, it is no
guarantee hat another band has not been using the name first, even if you cannot
find their name registered on a search on the federal website, since they might
not have officially registered the name either. (The official site also advises
going to their offices/library for an even more extensive search.) Thus, you
must do more thorough research to make sure that another band is not using your
name other than merely doing a trademark search of the office's website.
The best way are to begin is to do comprehensive web search using the name and
variations of the name and spelling, and to also search regional and local
entertainment publications to see if any other local bands in the country are
using the name or one similar enough to
confuse the public. To be extra sure, you might want to hire an expert to search
for you, although even that is not a 100 percent guarantee that a band somewhere
has not been using the name for years before you did. (However, their use
of the name must be continuous and current for them to claim first
rights to it.)
Fourth, this question illustrates why you would
want to service mark your name as soon as possible to discourage other bands
from using your name in the future. When you register, there is a legal
presumption that you were using the name first, and it also puts others on
notice, especially other bands searching to see if the name or one like it is
already in use by a “musical act or group.” Although you must still be
first in time with the use of the name to validly enjoin another act from using
it, such notice can obviously work as a strong deterrent.
Once you have officially registered your name, and know you
can prove you were also first in time with the use of the name, a legal letter
notifying the other band of your priority and also requesting that they cease
and desist using the name in public can also be sent. If that proves
ineffective, then legal action in court must be pursued.
A fifth issue here is your logo. You do not have
to register your logo when you servicemark your band name, but you will save
additional fees if you register both the name and the logo on one
application. However, it is not advisable to register the logo (unique
artwork) unless you are certain you want to use that precise artwork throughout
your career. If you do register it on the initial application, and your precise
logo changes in the future and you want to protect it, a new service mark for
the logo must be filed.
NEXT MONTH
The advantages and disadvantages of signing with “indie”
labels.
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