BAND NAMES AND TRADEMARK LAW — AN OVERVIEW
WHAT IS A TRADEMARK?
A common misunderstanding is the idea that one can “copyright” a band name. While it is possible to copyright the design of a band logo, the band name itself is not copyrightable. Band names are protectable under trademark law, because like “brand names” they allow us to distinguish one band’s music and identity from another. They are what enable us to distinguish between a “Beatles” record on the one hand, and a “Chipmunks” or “Wiggles” record on the other.
Technically speaking, a “trademark” is a word, symbol or device (such as a brand name or logo) that distinguishes one set of goods from another. Band names are actually considered “service marks” because they help distinguish between providers of entertainment services. If they are used in interstate commerce, trademarks and service marks can both be registered with the U.S. Office of Patents and Trademarks. Besides obtaining registration of a service mark, a band may also register its name as a trademark if it is associated with specific merchandise, such as record albums, t-shirts or school lunch boxes.
In addition to Federal registration, trademarks and service marks may also be registered on on a State-by-State basis. While Federal registration is the best way to protect your rights to a band name, even State registration of your mark is better than no registration at all.
WHAT IS A COMMON LAW TRADEMARK?
Even without registration, your band may have some rights to your band’s name if the name is been actively being used on a commercial basis. The extent of “common law” rights your band name may have acquired will depend on how long, and in what regions, the name has been used. If your band name has been established in a particular region, it is possible to prevent subsequent bands from using the same name in that region. By the same token, two bands with the same name may each acquire common-law rights to the name in their respective territories. While this arrangement may not bother a small band performing in only in one geographic area, it can lead to serious problems if that band later becomes more ambitious. For instance, if band #1 from the Northeast scores a big record deal or attempts a national tour, it may be necessary to purchase any common law rights band #2 may have acquired in the same name in California. If band #2 doesn’t want to give up its name, or their price is too high, then band #1 may have no choice but to change its name.
WHAT BENEFITS ARE THERE TO TRADEMARK REGISTRATION?
To avoid the above scenario, it is advisable to register your band’s name with the U.S. Patent and Trademark Office. Besides giving “constructive notice" to subsequent bands that you have pre-existing rights to a name, U.S. registration allows you to sue in Federal Court for trademark infringement. The actual threat of a federal lawsuit for trademark infringement is usually enough to deter other bands from using your name.
To receive any protection under state or federal trademark law you must first establish that your band name has been “used in commerce." It is not enough merely to think of a clever name — you need to show that you have publicly used the name in a commercial manner. For Federal registration, you must also establish proof that the name was used in “interstate” commerce, i.e., that your band name has been commercially used in more than one state, whether through sale of records, advertisements for shows, etc. Once you succeed in registering your band name as a Federal service mark, you are presumed to be the owner of that name throughout the United States, except for any rights which preexisting users may have acquired earlier under common law.
CAN TRADEMARKS AND SERVICE MARKS BE RESERVED?
Although trademark rights are generally granted to whoever can establish prior commercial use, it is now possible to reserve a name with the U.S. Office of Patents and Trademarks by filing an “intent to use” (ITU) registration. For instance, say you want to register your band name, but you’ve only performed twice in Seattle and the record company won’t release your record for another five months. If you think this is a great name for your band, you can reserve it with the trademark office by showing a bona fide intent to use your “mark” on specific goods or services (such as records or a concert tour) in the near future. For the registration to be granted, you must also file subsequent proof that you in fact used the name on a commercial basis. If your ITU registration is granted, you can acquire superior rights to the name, even if another band actually uses the name before the registration was granted.
A band name is one of the most valuable assets a group can own. It can be extremely difficult to relinquish a band name and start all over again under a new moniker. Unfortunately, the loss of a band name can sometimes occur if a band fails to take the necessary precautions. Registration of your band name as a service mark is one of the best ways to retain your rights to a great name.