Over the years, names of bands have served as guideposts of popular culture. The mere mention of the Supremes, the Sex Pistols, Jefferson Airplane, and the Beatles conjure up many images of cultural and political events of the times; but most importantly, the names bring to mind images of the acts themselves. The strength of association between an act's name and its music means that you must choose a name carefully and protect it fiercely. Except for its songs, the most important thing a band possesses is its name. For that reason, you need to understand why you should own the trademark for your band name and learn how to obtain it.
A trademark is a brand name associated with a source of goods available to the public. Trademark law specifies that brand names be unique so that the public can distinguish one seller of goods from another. You should keep two technical points in mind as you read this column. First, all references to “bands” can be extended to include other entities, such as production companies, recording studios, and song-writing teams. Second, bands provide “services” (in the form of live performances) and “goods” (CDs and other merchandise) in the eyes of trademark law, so all references to trademarks include “service marks” as well. For a look at the differences between trademarks, service marks, and copyrights, see the sidebar “Getting the Rights Right.”
Before going over the procedural aspects of obtaining a trademark, I want to underscore the importance of establishing ownership rights in your band name. One reason for you to do so is to give the public — your fans and consumers — a unique name to grab on to so that they don't confuse your band with another one using a similar, or even identical, name. A more subtle reason is to ensure that the name of your band is secure when you deal with third parties. Recording agreements will sometimes state that an act must transfer the trademark for its name to the label or allow the label to trademark the band's name if the band hasn't already done so. As a consequence, you could be forced to change the name of your band if your relationship with the third party ends. For example, if you do a trademark search for the name “Jackson 5,” you'll see that this valuable mark is owned by the label, Motown. Establishing ownership of your trademark before dealing with all of the other details involved in negotiating a record or management deal leaves one less legal loophole to close. In short, if you want to control as many aspects of your band's business as possible, getting your trademark is a good place to start.
A BAND BY ANY OTHER NAME
Obtaining a federal registration of your trademark demands that you spend a significant amount of time, effort, and expense. Therefore, you need to examine some initial business considerations before you set the process in motion. For example, will your band stay together long enough to justify protection of the name? Bands that play only occasional gigs probably do not require as much multiyear, long-range planning as does a band that has two indie CDs out, has already established a touring plan, and is seeking a major-label record deal. What is the anticipated territory of your band's business? You might not need national protection if the extent of your musical reach is the border of the next town.
Most important of all, however, is the name you choose for your band. Because musicians are by definition creative, they usually manage to pick band names that fulfill the legal requirements for a trademark. That is, the name must be unique and must not infringe on another trademark. Most bands, therefore, are able to choose a name without having to seek the legal opinion of a trademark lawyer.
The more distinctive your band name is, the better off you are when it comes to getting it trademarked. When you come up with a name that has had no prior existence, such as “Zorfwyx,” other bands — and the public — can easily see that the name is clearly intended to be a unique mark. Or you can incorporate a proper name into your band name; for example, “Graham Central Station” is a clever usage that combines band leader Larry Graham's name with a play on New York's Grand Central Station.
Using a word or phrase that is common in one context but is unique when attached to a band is yet another way to meet the requirements of a trademark. “No Doubt” alone as a phrase is not unusual, but when used to describe a certain group of musicians, it is. Taking into account the aforementioned trademark requirements, choose your name wisely, consider its longevity and potential strength in the marketplace, and proceed.
THE TRADEMARK SEARCH
The next step toward securing your trademark is to conduct a search to make sure that it is not currently being used. That is a crucial part of the process because regardless of how unique you think your band name is, if someone else has beaten you to the punch and established a strong trademark already, you will likely have to choose a different name.
A variety of sources are available to conduct your trademark search including the U.S. Patent and Trademark Office (PTO) Web site (www.uspto.gov), which publishes registered and pending federal trademarks, trademark registration listings for each particular state, compilations of yellow pages, electronic and hard-copy listings of business names, and listings of band names online. The Trademark Electronic Search Service (TESS), the PTO's online database, lists more than 3 million pending, registered, and expired trademarks. Any visitor to the PTO Web site may use TESS free of charge. In addition to TESS, the PTO has the same information available in a database called Cassis on CD-ROM, which is available to the public at no charge at any one of the several Patent and Trademark Depository libraries located around the country.
If you would rather not take care of the search yourself, you can also hire a trademark search firm to do it for you. MicroPatent (tel. 800-648-6787 or 203-466-5055; e-mail email@example.com; Web www.micropatent.com) offers an array of services pertaining to intellectual property. Of particular note here is its trademark database and search services. Other firms can be found in the yellow pages or by searching online. Fees range from less that $100 to around $300, depending upon the extent and detail of your search.
You can find a number of online databases of bands by surfing the Web, but my favorite site for researching band names is bandname.com. Additionally, because of the importance of your band's presence on the Internet, you should conduct a domain search of your proposed trademark. After you've conducted your search and found that your name has not yet been used, registered, or applied for with the PTO, you've cleared an important hurdle and can proceed in registering your trademark.
THE TRADEMARK APPLICATION
Once you have determined that your band name fulfills the requirements of being singular enough to trademark and that it does not encroach upon someone else's trademark, you need to obtain the forms from the PTO. You can do that in person by visiting a U.S. Government Printing Office in your town, requesting the forms be sent by mail from the PTO (tel. 703-308-HELP), or obtaining the forms online from the PTO Web site.
The application form has a series of questions about your trademark. If you are applying for just the name of your band, you type the name in block letters on the application. If, however, you are applying for the name in connection with graphics (for example, if your name is always displayed in a certain font or if there is a distinctive logo that always appears with the name), you submit a drawing of the graphics. The guidelines are very specific for submitting a drawing, so pay close attention to the instructions on the application. I prefer to apply only for the name; that way, you make the protection for the trademark as broad as possible.
You then need to provide contact information and describe what kind of entity will own the trademark. For example, is it owned by one person, your band as a partnership, or a corporation? You also have to describe the type of service you will be providing. Be sure to give a detailed description that includes the services you anticipate providing. For example, even if you do not have a recording contract yet, your description of services could read as follows: “Musical and entertainment services and goods in the form of live performances, audio recordings, video recordings, and clothing.”
This brings us to the next question: what types of trademark classes do you want to register in? The PTO provides a number system of classes under which trademarks are categorized. The two most common classes for bands are Class 41-Education and Entertainment to cover musical services and Class 25-Clothing to cover merchandise sales. You have to pay a separate fee for each class you apply for.
The application then asks you to provide a basis for your registration. You will base it either on the trademark being used in commerce or on the intent to use the trademark within six months of application. If you are already using your band name over state lines — a Web site for your band, gigs across state lines, or CD sales in another state will qualify — you can base your application on use in commerce. If based on an intent to use, you must pay an additional fee and you will have to prove the use of the trademark to the PTO down the road. You then need to state how the trademark will be used in connection with your services and sign a declaration under oath that you are making truthful statements about your trademark.
Send to the PTO your application, a block-letter printout or drawing of the mark, fees, and three examples for each class of how you have used the mark. Include a stamped, self-addressed postcard so that the PTO can send back your serial number and notify you of the date on which your application was received. (Your serial number is your lifeline to the PTO, so don't lose it once the postcard is returned to you.) The PTO Web site also provides an online application that is convenient and easy to follow.
An examiner with the PTO will be assigned to your trademark. The process of researching and granting you the trademark begins upon the receipt of your application. Be patient though — obtaining your trademark can take months, and sometimes more than a year, to complete. Once your process has begun, if you discover someone else trying to use your name during this period, you at least can claim to have a pending trademark. If any questions should arise during that time about your trademark application, the PTO will contact you in writing. It is wise to keep a correspondence file in a safe place with copies of all letters that you and the PTO exchange. If you filed an “Intent to Use” application and you require an extension of time to use your trademark in commerce, you should make that request in writing. Note that additional fees will be required to do so and that there is a time limit for you to “reserve” a mark.
After you have clarified any issues for the PTO, amended your application, and responded to any preliminary rejections of the trademark, your trademark is then published in the Trademark Official Gazette, a PTO publication that is designed to publicize your trademark application in case others want to challenge it. And, as stated previously, circumventing a challenge is the main reason that doing your trademark research early on is so important. (A hard-copy version of the Trademark Official Gazette may be ordered directly from the PTO by phone or over their Web site. You can also download it in PDF format from the PTO Web site.)
If you have done your search thoroughly, it is highly unlikely that you will have to deal with anyone opposing your trademark. On rare occasion, however, that can happen and you may have to defend your claim to the trademark.
A few weeks after you have cleared all of these obstacles, the PTO will send you a Certificate of Registration officially granting you the exclusive right to use your trademark in the course of doing business in the music and entertainment trade. The trademark is signified by the distinctive “circle R” warning others not to infringe on your trademark.
Trademarks are a “use it or lose it” right, and you should make two mental notes about that. The first is that after five years you need to file an affidavit with the PTO letting them know that you are still using the trademark. The second is that you need to vigorously defend your trademark — in federal court if necessary — against potential infringement.
Granted, securing a trademark isn't as glamorous as picking up a new synth or some other piece of gear, but the time and dollar investment made in obtaining it will pay dividends repeatedly as your band's name gets known. Once a procedure reserved for high-priced lawyers, the PTO and other services have turned the application process for trademarks into yet another task that you can add to your DIY skill set.
Music-business educator and entertainment lawyerMichael A. Aczonrecently took his act on the road by completing the San Francisco Half Marathon and living to tell about it.