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FROM THE DESK OF... SHELLY HARRIS |
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by: Shelly Harris / Entertainment Attorney
Since I continue to
get more questions relating to the trademark/service mark and copyright
issues than any other area of music law, I will again answer readers’
questions on those two common but major concerns: QUESTION:
What should I do if I want to file a federal trademark for my band
on my own? Also, I have knowledge of another band using the same name as
ours, even though they play music entirely different from what my band
plays. I also think they
might have been using the name before we did, but I know they have never
officially registered a trademark for the name.
If we file for an official trademark first, will we be able to
prevent the other band from using the name? And, finally, will I have to
register our band's logo separately? ANSWER:
If you want to file
the trademark (actually a “service mark” when you are a band, but the
application and fee is the same) for your band’s name, go to the website
at: www.uspto.gov.
There are forms there, and information on how to fill out the
forms, and you may also file the application online if you have a credit
card to provide for automatic payment of the $325 filing fee.
However, be very careful about how you fill out the form(s) or they
will be returned to you with “exceptions” that you will have to
correct for the official filing to proceed.
It is optimal to have an attorney fill out and/or direct you
regarding types of information you should include on the forms, but, if
you feel you must do it yourself, there are numbers (posted on the
website) that you can call to get assistance with the filling out and
filing of any relevant forms.
Before you proceed with any filing, make sure that no other band is
registered with a name similar to yours by doing a search using your
band’s name or a similar name. You will have direct access to such a trademark/service mark
search right on the U.S. Patent & Trademark Office website.
However, you should also do a comprehensive search on the web and
any other resource available to make sure that no other musical group in
the country is using your name, whether “registered” or not.
You can also pay to have an even more comprehensive search done for
you. Which leads us to the
second part of your question...
If another band has been using the same band name as yours in
public before your band did, it will not matter if you beat them in the
race to filing the service mark for the name.
Even if you officially register the name first, they can prevent
you from using the name provided they can prove that they actually used
the name “in public” first via proof like fliers, advertisements, a
website, or merchandise for sale to the public prior to the time your band
began using the name (or a name similar enough to cause confusion in the
eyes of the public). It
will not matter if your band plays music extremely different from that of
the other band using the name, if you are both “musical groups” or
acts, and if there is ever a foreseeable time that the public could be
confused about which band was which, etc.
However, a band or artist must normally actually register a service
mark in order to protect their right to the name in court.
Obviously, the best time to investigate whether another band or act
is using your name or not is when you first decide to use it in public,
not when you feel you may be doing enough business or making enough money
to actually register the service mark.
A thorough internet search, a search of the trademark site itself,
and perusal of other resources like band registries and local music papers
accross the county would be a good start and could preclude a band from
investing time and money into establishing a name they will later be
forced to change. Finally, regarding the logo issue, you will be able to register your band's special logo on the same service mark registration if you choose, and you will then need to provide a sample of the logo with the application. However, first make sure that your logo is “original” and unlikely to be confused with any other logo. Also pause to consider if it is a logo you will want to stick with in the future. If you are in doubt, the band’s name can still be registered without an official logo.
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