Protecting your Band Name or Singer Name
with Trademark or Service Mark
by Sue Basko, esq.
See a related article: Picking a Name for Your Rock Band: 7 Rules
A band or musical performer can often protect their name by registering the name as a trademark or service mark.
Here, I will give a basic explanation. If you want advice on how this pertains to your situation exactly, please contact me. This article is not meant as legal advice for any given person.
NOTE: I strongly advise that no one try to register trademark without the help of a lawyer that knows how to do this. The laws and the process are very complex. Registering a trademark is a process that takes about a year and a half, and each phase of the process is highly technical. My observation has been that most people doing this on their own do it wrong.
Trademark is the U.S. and international system of registering names or marks that someone uses in commerce. These are registered with the U.S. Patent and Trademark Office (USPTO).
Trademark belongs to the first person or company to use a given mark or to the first one to register it, whichever came first. That is the general rule, but there are exceptions to that. For example, someone might claim the trademark on the basis of dominating the field.
To hold onto a trademark, you have to keep it in continual use, as well as continue to register it.
A trademark can be for words that will be in any script, or it can be for an actual mark that uses the words, or for a mark that is purely design.
For most bands or performers, I suggest registering simply the name with no particular design or font or mark. This gives broad protection and you can use the name in any font or style or design that you desire.
Trademark is for goods. Service mark is for services. In applying to a rock band, performing a show is a service. CDs that are sold are goods.
When any trademark or service mark is being registered, you must carefully choose the category of goods or services. Your trademark or service mark is only for the category or categories you have chosen. For example, there might a rock band called The Stompers with a registered service mark, and at the same time there might be shoes called The Stompers, registered with the same name as a trademark.
You will file an application and pay a registration fee for each category. Right now, the fee per category is about $300. In addition are lawyer fees. While, theoretically, you could file this on your own, it is very complex process that takes about a year and a half, and I have noticed that even many lawyers get it wrong. So you are best having it done by someone who knows what they are doing. If you have it done by someone that does not know what they are doing, the fees and length of time for processing can expand greatly. I have noticed some registrations that have been pending for 10 years! If it's a rock band, well, let's face it, very few rock bands last 10 years.
For rock bands or performers on a budget, I suggest registering a service mark in the name, with no design. That, I think, provides the broadest protection for the money. The name (called the mark) can then be used in any typeface or design or color.
If you have more money or become more famous and are earning more money, you may want or need to register trademarks of various logos or designs, and register your name as a trademark for different categories, such as sale of CDs, DVDs, T-shirts, etc.
The USPTO trademark or service mark registration application process is complex and takes a minimum of about 18 months to be completed – and that is if it is simple and done totally correctly and goes unchallenged . First, a preliminary search is done by your lawyer. Then, many factors must be considered to see if you and your band name seem likely to qualify for registration.
Then, the actual application for registration takes place. The application involves filling out forms with complex information that must be accurate. You must choose a correct category of goods or services from the lists of acceptable categories. This is complex and you need to know quite a bit of trademark law to get this right. You also have to provide specimens, usually jpegs of the design, if it is a logo and not just plain typeface and a jpeg of a picture showing the mark in use in commerce. You must pay the application fee, but the USPTO does not guarantee they will allow the registration. If it is disallowed, you do not get a refund. And of course, you will also be out the lawyer fees.
After you apply, a case number is assigned. Next, a government lawyer from the USPTO is assigned to the case. This happens about 3 to 6 months after the application is filed. That lawyer checks the application and does another search. The lawyer may request revisions in the application or may need further information. Next, the proposed trademark is published in a gazette so that anyone can object and claim they already have that trademark in use. There is a 3 to 6 month wait for this publishing. The public then has 30 days to object. If there is no objection, the trademark certificate will be issued.
The USPTO lawyer may refuse to register a trademark for various reasons. Some reasons may be if it causes confusion, or is deceptive, or is merely a last or surname.
For example, if a product is being called Fresh Florida Orange Juice, but is not actually from Florida, the USPTO may refuse to register the trademark.
I laugh to think how rock band names might be treated. Would the name of the band, Philadelphia Grand Jury, cause confusion, since it is neither from Philadelphia nor a Grand Jury? Would the name Manchester Orchestra confuse, since it is neither from Manchester nor an orchestra? I write these mostly as a joke, since of course people going to see a crazy Australian rock band do not think they are serving on a Grand Jury.
I recall reading that the electronic pop composer, Jimmy Tamborello, who goes by the name, Postal Service, asked permission of the actual U.S. Postal Service to use the name. I don't know if he got a service mark on his band name - but if he had used the name without permission, the U.S. Postal Service could have stopped him from using the name.
Once you have your band or performer name registered, you are required to patrol its usage by others in the same or a similar category. So, if you have the registered service mark The Stompers, as a musical band, then if you see a different musical band using the same name, you are required to take action to make them stop. That is called enforcing your trademark or service mark.
Trademark and service mark registration are a lot more complex than just this, but this provides a glance at the topic.
See a related article: Picking a Name for Your Rock Band: 7 Rules
Feel free to email me at: SueBaskoMusic@gmail.com