This post comes at the request of Brian over at Punk on Deck, a fun blog about punk rock and baseball. Do check it out, particularly if you’re a Cardinals fan. Brian suggested a post about claiming band names, and who has priority if there is a claim by another band that you’re using their name. Great suggestion, you’ve probably read about this happening to bands and wondered why this happens. It’s happened to bands like Blink 182 and The Academy Is…. To start, this is an issue of trademark law. I’ve heard people talk about bands having to change their names because of copyright law, and that’s not the case. I want you to know what you’re talking about, in part because I want to educate you, and in part because it’s a pet peeve of mine. Generally, a trademark refers to marks protected in association with goods, and service marks refer to those marks for services. Trademark law protects word marks, logos, some slogans, even certain scents and colors.
Trademark protection exists on 3 levels: common law, state, and federal protection. The strongest level is federal registration with the United States Patent and Trademark Office, which gives the trademark owner the right to enforce that mark in every state in the U.S. To register for federal trademark protection, you have to register for each class of goods or services you will be using the mark. So for example, for a band, you could register for “providing live musical services,” “clothing, including t-shirts, baseball caps, and sweatshirts,” and “recorded music on CDs, records” you get the idea. Federal registration can get expensive as you get into multiple classes of goods and services. State registration protects, as you would imagine, only in the state or states in which you register. The benefit of state trademark registration is that it gives you proof to use in court that you have been using the mark since a certain time. However, with the Internet, I’m not sure how well state trademark protection will protect a band name, since the Internet can be accessed worldwide. You can still enforce a trademark like a band name without registering it for either federal or state protection under the common law, the challenge that often arises is proving the date of first use in commerce.
Why does first use in commerce matter? Well let’s take a band, perhaps they’re like your band. After hours of debating potential names, perhaps fighting with your bandmates in the process, agonizing over the perfect name, you settled on what you think is a great name. So you start touring, selling your music online or in physical product, and start getting a following. Then, just as you start getting successful, you get a letter in the mail from another band with the same name threatening to sue you if you don’t stop using the name. This is where first use in commerce and being able to prove it comes into play. The standard for who has priority to use a mark is who was either the first to use the mark in commerce or the first to file an intent to use application for the mark with the USPTO. Hopefully you and your bandmates have been keeping flyers, CDs, or other items along the way since you started using the name that would prove when you first used the name in commerce. Or you registered the mark yourselves online, or perhaps you have consulted an attorney knowledgeable in this area of the law to help you register your name for federal registration. If you indeed were using the mark first and can prove it, you would be able to fight off the other band and keep on truckin’ under that name as the Dead would say.
But what if you are what is known as the junior user, and weren’t using the name first? Ideally before starting to use a name, you would have hopefully run a Google search for the name, perhaps set up an alert to see if anyone else is using it, and perhaps consulted an attorney to run a full search. But even having done all of the above, you could still end up with another band firing off a cease and desist letter to your band demanding that you stop using the name. If either you weren’t the first user of the name, or you just don’t want to spend the time, money and hassle of fighting to protect the name or paying to license it from another band, it may just be easier to change your name.
The decision of what steps to take as a band vary from group to group. I’ll discuss band partnership agreements, entity selection and other measures you can take in future posts. If you visit the USPTO site and perform a basic search of some of your favorite bands, you can see that some bands have chosen to register their band names for federal protection and others who haven’t. While federal registration gives you the strongest level of protection, it doesn’t automatically do so. Enforcing a trademark means monitoring for other uses of your mark, and having your attorney send cease and desist letters to those other users in your class of goods or services ordering them to stop using the name. Some bands just don’t want the hassle and expense of doing so.
So what’s the best course of action in choosing a band name and trying to protect it in the future? Here are some tips:
- Run a search engine search for the name, set up an alert like Google alerts to see if any other bands using the name come up
- Also check sites like MySpace, Facebook, Twitter, as well as domain name registration sites to see if any bands are using the name
- Run a basic search on the USPTO site to see if the name is registered
- Consult with an attorney knowledgeable in trademark law to run a search on the name and possibly register it for federal protection
- If you opt not to register for federal trademark protection, document, document, document the use of the name by your band with corresponding dates so you can prove
- Address who owns the band name as part of your band partnership agreement or other internal agreement (this can save you a lot of headache later)
Well Brian I hope that answered some of your questions. If any of you out there have suggestions for topics you would like covered here, please don’t hesitate to send them my way.