Your band name may already be a trademark. I don’t mean that someone else may have already trademarked your band name (though that could be the case); I mean that, just by using your band name — for example, on the sleeve of a single or to advertise a show — you may have already created a trademark. If so, you should value that trademark and protect it as best you can. One band is even taking their trademark issue to the Supreme Court, in Lee v. Tam.
Common Law Trademarks
Let me back up a bit. The underlying purpose of trademarks, if you ask a lawmaker, is to prevent consumer confusion. Because of this, if you are using a band name, trade name or company name to offer goods or services, the law doesn’t want someone else to come along offering the same goods and services under the same (or “confusingly similar”) band, trade or company name, thus making customers think you and that other party are related. So the law allows for common law trademark rights: if you are the first user of your band, trade or company name for your goods or services, then the name is your trademark (also known as a service mark or just “mark”), and you may legally have priority over any “junior users” of that mark.
Side note: if you are using your personal name as your stage/business name, things get a little trickier. That is a whole separate article.
Some important things to remember about common law trademark rights:
Your rights begin the first day you use your mark to offer goods or services. If you play your first show on January 1, even if only three people come to see you, you can most likely count January 1 as your “date of first use.”
Your rights are limited to the goods and services you are actually using. If someone uses a trademark identical to your band name to sell couches, for example, they are not infringing your mark (unless they are using the mark in some way that suggests your band is affiliated – for example, “Come buy our new U2 couch! Bono sat on one just like this!”).
Your rights are limited to the geographical area in which you are using your mark. If you only tour in the southeastern US, for example, or you live in Georgia and only tour in the Southeast and don’t have anything for sale online, you probably can’t stop someone from using your mark in California.
Your rights are limited to enforcing against identical or confusingly similar marks that were not in use until after your date of first use. “Confusingly similar” is a subjective standard that also applies to infringement of registered trademarks. Generally, if someone is using a nearly identical trademark for nearly identical goods and services, and you believe consumers are likely to confuse the other trademark with yours, then the second mark is confusingly similar.
Things that do not give you common law trademark rights by themselves (that is, without actual use of the mark): buying the domain name, registering the Twitter handle, reserving a business name. Even though these things alone do not give you trademark rights, once you do have trademark rights, you can stop other people who don’t have trademark rights in your mark from registering confusingly similar domain names and handles.
What if you want national protection without touring the entire United States? You can get a federal trademark registration. Yes, it’s possible to do these on your own, and it’s possible to use LegalZoom, but you’re much better off finding a lawyer who can do a clearance search for you (a clearance search is vital so that you don’t waste your money filing an application for a mark someone already owns), and who can craft the application to fit your needs. This may actually save you money in the long run.
Who Owns the Trademark?
So, let’s say you are using the mark and you’ve established common-law trademark rights, but your drummer leaves the band and starts a new band with the same name. Can she do that? Who specifically owns your trademark? The answer, unfortunately, is that it depends. The law looks at who was actually using the mark, and this is not always a simple question. See, for example, the Black Flag dispute. Without a formal agreement in place, the law is likely to view your band as a legal partnership, where every member owns an equal share in your collective intellectual property.
What to do if someone, your former drummer or some unrelated person, starts a band with your same name? Reach out and try to be civil – they may honestly not know they can’t use the name. If that doesn’t work, and even if it gets ugly, you don’t have to go straight to an expensive lawyer: instead, see if your state has a Volunteer Lawyers for the Arts organization (VLA). Georgia has Georgia Lawyers for the Arts, for example. Usually a VLA will listen to your situation and, depending on your income, try to help you find a pro bono or low-cost attorney who will work to resolve your situation.
On a happier note, often you own and enjoy your trademark rights free of disputes. You may even be able to monetize your trademark rights through a license. Trademark licenses are rarer than copyright licenses in the music world, but they do happen. For example, say your programming buddy wants to include your band in his latest video game, and wants to put your band name all over the marketing to draw attention to the game. You can ask your buddy to enter into a licensing agreement for the right to use your mark. Even if it’s a royalty-free license, it would help to maintain the integrity of the trademark by showing that you don’t let just anyone use your mark without any oversight or permission. Trademark owners can and should exercise quality control over any uses of their trademarks to maintain the reputation they have built.
So what? If your band name is important to you, protect it. If you’re not sure how, and you don’t want to shell out money for a lawyer, reach out to a VLA or even to your local law school’s intellectual property professors. Either way, it’s good to start thinking about your trademark rights now: document everything that shows use of the mark (flyers, articles, reviews, album artwork), and keep track of dates and locations where you have used the trademark. If you’re in a band, have a talk about who owns the mark and how you want to use it (and preferably, put it in writing so you’re not arguing about it in court 20 years later).
By Becki C. Lee, Esq, distributed under a Creative Commons CC-BY license.
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