The Lawgirl Files
October 6, 2000
Trademark Troubles, Part 1
What do your band and the NBC peacock have in common?
by Jodi Sax
One of the most common questions I hear from musicians is: "How can I protect my band's name?" The answer, dear friends, is that your band's name may already be protected under the doctrine of trademark law -- not under copyright, as is a common misconception amongst musicians. Here's a brief introduction to the concept of trademark and how it impacts your band's interest in one of its most valuable, though intangible assets: its name.
“Trademarks allow a consumer to be sure that they are getting the goods or services associated with a certain seller. A name of a band is no different.”
What is a trademark?
Trademarks are images, symbols, words, or even an overall "look" that identify the holder's goods or services from those of another. Trademarks are distinct from copyrights, which protect original works of authorship, and patents, which protect inventions. They're the brand names -- like "IBM" or "Volkswagen" -- that we associate with a particular product, and they are symbols -- like the NBC peacock or the "Coca-Cola" script -- that we associate with a provider of goods or services. Trademarks are significant in that they allow a consumer to be sure that they are getting the goods or services associated with a certain seller. Clearly, trademarks are valuable commodities, and infringement is a serious issue. A name of a band is no different. It is the word and/or symbol that identifies your group and distinguishes it from all others.
How does my band acquire trademark rights to our name?
Contrary to what many people believe, trademark rights are gained by actual use of a mark rather than by registration. Generally the first party who uses a mark in commerce has the right to use the mark in that geographic area, and that area's natural zone of expansion. Thus, if you have a band using the name "the Bugs" in the New York area, and you are the first person to use that name, you hold the superior right for that mark in the New York area (where you are actually using the mark) and any surrounding areas in which the use of the mark would naturally extend. (The Internet has made this "actual area of geographic use" distinction somewhat less significant, in that if a band has an Internet presence it can be argued that their use is presumptively nationwide.)
If you are not actually using a mark but you have the "bona fide intent" to do so in the future, you can secure use of that mark by filing what is known as an "Intent to Use" Application with the United States Patent and Trademark Office ("USPTO") -- http://www.uspto.gov -- which will essentially reserve the mark for you in incremental periods of six months. If you are not thereafter able to satisfy the USPTO that you are using the mark, you will lose your right. I will go into this process in greater detail with my trademark registration how-to column next month.
What is trademark registration?
I've noted that registration is not required to establish rights in a mark or to begin use of a mark. However, federal (as distinct from state) registration with the USPTO can secure benefits beyond the rights acquired by merely using a mark. For example, the owner of a federal registration is presumed to be the owner of the mark for the goods and services specified in the registration, and to be entitled to use the mark nationwide, as opposed to just in the area of actual use and the natural zone of expansion therefrom, as is the case without registration. For these reasons, a federal registration can provide significant advantages to a party involved in a court proceeding. We'll talk more about registering a trademark in my next column as well.
(Some people who are using a mark locally will choose to file for state trademark registration. This really gives you nothing beyond what you gain by actually using the mark in commerce, but will serve to put the world on notice of your use of the mark.)
The "TM," "SM" and "®" Symbols
Anyone who claims rights in a mark may use the TM (trademark) or SM (service mark) designation with the mark to alert the public to the claim. It is not necessary to have a registration, or even a pending application, to use these designations. The claim may or may not be valid. The registration symbol, ®, may only be used when the mark is registered in the PTO. It is improper to use this symbol at any point before the registration issues.
The trademark office website is an excellent resource for information. You can email me at help@lawgirl.com with questions. See you next time!
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Jodi Sax is an entertainment and new media attorney and Internet consultant in Los Angeles. Her clients range from small indie labels and Web startups to Fortune 500 companies. Sax's website (www.lawgirl.com) provides interactive legal information for musicians and other artists. She is at work on a book about entertainment law in a "world gone wired." |
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