Recording - December 2010 - 58

By Todd Gascon and Bruce Kaphan

Chapter 9: trademark basics
What do the Beach Boys, The Wailers and Black Sabbath have in common? They all have been involved in trademark disputes regarding the ownership rights to their bands’ names. In this article we will discuss some of the basic issues regarding trademark law and what you can do to ensure your band’s name is your own and won’t be the subject of a lawsuit. I will be using the names of fictional bands to illustrate some of the points in this article. Unlike the Grateful Dead, who selected their band name from the dictionary, I will use some of the names generated by www.bandnamemaker.com. Trademark vs. Service Mark One of the questions I’m asked most is, “What is a trademark and how does it differ from a service mark?” A trademark is a word, phrase, symbol or design, or any combination of words, phrases, symbols and designs, that identifies the source of goods and allows consumers to distinguish one source of goods from another. Think Fender vs. Gibson or Baldwin vs. Yamaha. A service mark is any word, name, symbol, device or any combination, used, or intended to be used, in commerce, to identify and distinguish the services of one provider from services provided by others, and to indicate the source of the services. In music, the same mark can act as both a trademark and a service mark. Let’s use the fictional band Nowhere of Goober. When they sell goods (e.g. compact discs) under that name, they are using Nowhere of Goober as a trademark. When they perform live at a show under that name they are using Nowhere of Goober as a service mark, the service being entertainment services. What is the function of a trademark? In general, trademarks perform four functions that are protected by the courts: (1) to identify one seller’s goods and distinguish them from goods sold by others; (2) to signify that all goods bearing the trademark come from or are controlled by a single (albeit anonymous) source; (3) to signify that all goods bearing the trademark are of an equal level of quality; and (4) as a tool in advertising and selling the goods. (These four functions apply equally to service marks.)
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It should also be remembered that, in addition to these functions, a trademark is also a symbol of good will that a business has built up over time. In today’s music industry, the band’s name and its brand can become very valuable. Think the Rolling Stones tongue, the Kiss faces or record company names like 4AD, Blue Note, Columbia, Merge and Stax. Without the identification function performed by service marks and trademarks, consumers would have no way of returning to buy services and products that they have used and liked. How do you obtain trademark rights? Trademark rights arise from actual use of a mark or the filing of an “Intent-to-Use” application with the U.S. Patent and Trademark Office (see more details in sidebar). The term “actual use” means that you are using your mark “in commerce”. For the majority of bands, like the fictional band Essence of Ferret, that will mean that they must use their mark outside of their home state. This can be done by touring, selling records and getting radio airplay on radio stations outside of their home state. It’s this type of activity that a court will consider when deciding whether a band has used its mark in commerce. Therefore, if you want to claim trademark rights in a name, the single most important thing you and your band can do is to continuously use the name in the public to identify yourselves. This use must be continuous as a longterm hiatus may lead a court to conclude that the mark has been “abandoned” and the band has thereby relinquished its rights to the name. If you think you might want to register your trademark, what should you do, if anything, before sending in the trademark or service mark application to the U.S. Patent and Trademark Office (“USPTO”)? Avoid a name conflict As an upcoming band, your band’s name and the goodwill that you’ve built up over the years with your fans is perhaps your single most valuable asset. As a result, you want to make sure you have the freedom to use the name as you see fit and that no one else has rights in the name that conflict with yours. The last thing you would want to

http://www.bandnamemaker.com

Recording - December 2010

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