The most valuable assets of a successful musical group are the songs and recordings created by the performers. The second most valuable asset is usually the group name.
Trademarks (which are associated with the sale of goods) and service marks (which are associated with the offering or providing of services) are generally owned by the person or persons who use the mark "in commerce".
It is a common misconception that the filing of a fictitious business name (DBA) certificate or the incorporation of a business creates trademark rights. Furthermore, trademark rights are not created by federal registration with the U.S. Patent & Trademark Office.
On the contrary, as noted above, trademark rights are created by use, or as we shall see, by intent to use in commerce.
A band that is just starting out should make every effort to devise a distinctive name. Trademarks can be:
- words ("KISS"),
- nicknames ("The Dead"),
- letters or abbreviations ("CSN(Y)", "ELO"),
- number and letter combinations ("U2"),
- words appearing in a stylized form (the KISS logo) and
- pictures, designs and symbols.
- Trademarks can even be sounds (the sound of a Harley Davidson) or colors.
When selecting a trademark, the best choice is a made-up ("fanciful" in trademark law lingo) word or phrase such as "Devo" or "ABBA".
However, since most band names are derived from commonly used words or phrases ("Dire Straits", "Rolling Stones" or "Pearl Jam"), it is advisable to conduct a trademark search to determine whether any other band has established priority of use of the mark. (click here to read more about conducting a trademark search)
If you find another band already using your name, even if the other band is located on the other side of the country, it is probably best to come up with a different name.
While it is possible for two or more bands to establish trademark rights in geographically distinct regions, most bands are planning on national distribution and touring, so it would be unwise to establish goodwill and invest capital in a trademark that cannot be use nationally.
If you're wondering what "goodwill" means in this context, here's a quick definition: the expectation of repeat patronage/die hard fans based on the reputation of a company/band as solidified through the trademark.
Furthermore, even though it is permissible under U.S. law for a mark to be used separately for entertainment services, on the one hand, and dissimilar goods such as computer products, on the other hand, it is generally advisable to avoid doing so.
The band seeking to use the same mark as the computer company would have to be prepared to show that there is no likelihood of confusion with the public. Furthermore, with some well-established marks such as "NIKE", courts will tend to assume that any use of a similar mark is likely to confuse the marketplace.
The initial step in performing a trademark search can be accomplished cheaply by using any of the Internet search engines. Depending on the words you are searching for, you may be able to tailor your query to determine whether the proposed band name is being used by other companies or persons as a trademark.
Ultimately, however, it is advisable to conduct a full trademark search and to hire an experienced attorney to review the search results. The few hundred dollars spent doing so may later prevent the needless expenditure of legal costs and filing fees if there is a potential priority claim.
There are professional search companies which will search not only Federal and State files, but also such records as state-level corporate name filings, trade directories and periodic archives.
After a determination has been made from the search results, the application should be prepared for filing with the U.S. Patent and Trademark Office. You may wonder why this is necessary since I pointed out above that trademark rights are established by use rather than by registration.
Although this is true, the benefit of getting a federal registration is to provide nationwide constructive notice of your exclusive right to use the mark against all junior users, thus eliminating any such user's ability to use a "good faith" defense against a claim of infringement.
In plain English, this means that if you register your trademark with the federal government, it gets put in a database of all federally registered marks (now a database searchable online). If it is there for all to see, we call this putting people on "constructive notice" of your use of your trademark, because you didn't actually notify them directly ("actual notice"). If others have constructive notice of your trademark use, then they can't claim ignorance of your mark if you sue them for trademark infringement. This is why you should register your trademark with the USPTO.
Furthermore the holder of a federal registration is eligible for injunctive relief to enjoin junior users. "Junior users" are those users who come after you, the "senior user" aka the one who used the mark in commerce first.
In addition, if you are establishing a website for your band and wish to use the band name as the domain name, a federal registration is necessary to protect your domain name and to avail yourself of the Dispute Resolution Procedures promulgated by Network Solutions, Inc./ InterNIC.
When it comes time to fill out the trademark application, you will have a two main choices - a "use" based application and an "intent to use" (ITU) application. Obviously, fill out a use based application if you are actually using the mark in commerce. And fill out an ITU application if you intend to use the mark in commerce in the next few months.
So what goes on the application?
The application must set forth the date of first use in commerce (for use based applications) and the goods or services in connection with which the mark has been/will be used. The use alleged must be use "in the ordinary course of trade."
The applicant will be asked to verify that, to the best of the applicant's knowledge, no other party has the right to use the mark, either in identical form or in such near resemblance as to be likely, when used in connection with the goods and services of the other, to cause confusion or mistake or to deceive.
In addition to the application, the applicant must submit "specimens of use". For a trademark, the specimens are samples of actual product labels or packaging materials displaying the mark. For a service mark, it is acceptable to submit stationery, advertisements and/or marketing brochures, since, obviously, one cannot affix a mark to intangible services.
As I already mentioned, an "intent to use" (ITU) application may also be filed. Instead of getting a "Notice of Approval" from the PTO as you would for an approved use based application, for an ITU application you get a "Notice of Allowance". This means you have 6 months from the issuance of that notice to start using your mark in commerce. Before the 6 months is up, you must file a "Statement of Use" unless you file for an extension.
In addition, your attorney will make a determination as to the appropriate "class" of goods or services for which registration is sought. The United States has adopted the international classification (IC) of goods and services, a schedule which sets forth 42 categories of goods and services. A separate filing fee and specimens must be submitted for each class in which registration is sought.
fee is $325, per class, for each registration for a use based application. If you file an ITU application, in addition to the $325 per class, you also have to pay $100 per class when you file your Statement of Use 6 months after getting the Notice of Allowance from the PTO.