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do is to have to choose a new name after you’ve secured your first recording contract. This is unfortunate and has happened to a number of bands including Dinosaur Jr. (formerly “Dinosaur”) and The Verve (formerly “Verve”) who had to change their names shortly after being signed. In addition, some bands that were popular in Europe had to change their names when they wanted to come to the United States due to the prior use of the same names here in the U.S. (e.g., Wham! became Wham! UK, The Charlatans had to change their name to Charlatans UK, and Suede had to change to The London Suede). Before you file your trademark registration you should make sure that your trademark does not infringe the rights of another person or band. There are several factors that the USPTO and courts look at to determine if there is a conflict (i.e., a consumer may be confused as to the source of the goods or services). The most important factors are (a) the similarity of the two marks, and (b) the commercial relationship between the goods and services identified by the marks. Search search search You should conduct a thorough search of your proposed mark and review the results of your search with an attorney. If you can’t afford an attorney, you may want to reach out to an arts organization that offers a low-cost lawyer referral program. In California, that organization is called California Lawyers for the Arts and they have offices in Sacramento, San Francisco and Santa Monica. Similar organizations are located in New York City (Volunteer Lawyers for the Arts) and Chicago (Lawyers for Creative Arts). A list of organizations in other states can be found at www.artistresource.org/artorgs.htm. Whether you have an attorney or have decided to register your mark on your own, there are a number of things you can do for yourself. First, do a search on the U.S. Patent and Trademark Office website: www.uspto.gov. You’ll want to go to the trademark home page and click on “search marks”. The USPTO database contains information on marks that are registered, applications that have been filed and awaiting registration, as well as marks that have been cancelled or abandoned for one reason or another. If you don’t have access to a computer, there are a number of public libraries where you can go to access the USPTO database. In addition, I would search the ASCAP, BMI and SESAC databases to find out what bands have performed songs in the catalogues represented by these performing rights societies. Finally, I would review music magazines (e.g., Billboard, Mojo, Spin and Rolling Stone) and search social media sites, like MySpace, Internet sites (e.g., All Music Guide, Pitchfork, Pollstar) to find out what bands are performing and releasing music under a name that may be the same as or similar to your band’s name. Unfortunately, the USPTO database is limited to marks registered with the Federal government and does not include information regarding service marks or trademarks that are registered in any of the 50 states, or those that are being used by someone who has decided, for one reason or another, not to register their mark (i.e., common law marks). For that reason, a number of trademark lawyers use a search service that will use a number of trademark databases to do a trademark search, including the USPTO database. When a
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client asks me to do a trademark search I use a company that’s called Thomson Reuters (www.thomsonreuters.com) that will perform a comprehensive search and will send me a report within a week that I can review to determine if my client’s proposed mark might infringe a registered mark. Remember the TV reality show Rock Star: Supernova where the winner of the reality-show would be the lead singer for members of a supergroup comprised of Tommy Lee (Mötley Crüe), Jason Newsted (Metallica) and Gilby Clarke (Guns N’ Roses) who called their band “Supernova”? A southern California band called Supernova filed a lawsuit for trademark infringement. They were able to obtain a preliminary injunction despite the fact they had not performed live in several years. Shortly after the Tommy-Lee led Supernova changed their name to “Rock Star Supernova” the lawsuit was dropped. Submit your trademark application Once you’ve decided you have the rights to a name, you can move forward and submit your trademark application. The filing of a Federal trademark application can be done online at the USPTO website. Unlike the fee to register your copyright, the trademark application filing fee is quite expensive and can cost you anywhere from $275 to $325 depending upon the application form you select. As mentioned earlier, a trademark will protect your name in a particular class. Under U.S. trademark law, there are different classes of goods and services in which a mark must be registered. In the music industry, there are a few classes that are commonly used by artists and bands. For example, Class 9 covers compact discs, cassette tapes and vinyl LPs, Class 16 covers such things as calendars and posters, Class 25 clothing and Class 41 covers entertainment services. To protect your trademark for compact discs, posters and T-shirts, you will have to file a separate application for each class of goods. Please note that if you’ve come up with a name that you think is perfect and that you know you’ll be using, but you have not played yet or recorded any songs, you can file an intent-to-use (“ITU”) application with the USPTO. Once your ITU application has been accepted by the USPTO, you have 6 months in which to use the mark in commerce and fulfill the other requirements of trademark registration. If you don’t use your mark within this 6-month period, you can ask for an additional 6-month extension. If you don’t use the mark within this period, your registration will be cancelled and then anyone can use the name for their band. Wait—don’t hold your breath As an aside, I want to let you know that, as of the date of this article, it can take approximately 12 to 18 months to get your registration. This is so, in part, because your application is reviewed by a trademark examiner who reviews your application and determines whether there are any marks that are confusingly similar to your proposed mark. Given the numerous service mark and trademark applications they receive and need to review, you can appreciate that it may take some time before your registration comes through. Before you receive your registration, you can use the ™ which puts the public on notice that you are claiming trademark rights in the mark. Once you do receive your

http://www.thomsonreuters.com http://www.vlany.org/resources/vladirectory.php http://www.uspto.gov

Recording - December 2010

Table of Contents for the Digital Edition of Recording - December 2010