By Paul M. Quin, Esq.
The running of a successful band should be considered no different than running a more traditional business. As a business must protect its intellectual property so must a band, including the right to use its own name exclusively. A Trademark is used when a company, business, or in this case a band, seeks to obtain protection for its name and/or logo, as used on its goods and/or services. That “mark” identifies to the consumer that the goods or services come from a particular source. Should you decide to protect your band’s name through registering it as a Trademark, there are certain steps you need to take. To be registerable, your name must not create a “likelihood of confusion” between your name and one already registered, or one which exists in a prior-filed, pending application. Once submitted, the Trademark office might find that the likelihood of confusion exists when your name or “mark” is similar to another and when the goods and/or services are related such that consumers might believe they come from the same source. If, for example, you decide to name your band name “The Blak Keyes” fans of The Black Keys may be confused and disappointed if they turn up at your show! Accordingly, such a Trademark would not be accepted. Even though the spelling is different, remember that potential consumer “confusion” exists when the pronunciation of the two names are “phonetic equivalents”.
When addressing trademarks the mark itself must be dissimilar from others. For band names this is the essential test as it is usually accepted that bands, in selling music, regardless of genre, seek attention from the same consumers. Since there are so many bands, finding an original and protectable name can be a challenge. Significantly, “fanciful” names (invented words with no dictionary meaning), are more likely to be registered than descriptive marks. Also “arbitrary” marks (recognized words used in an unusual or unexpected situation) are also more likely to be protectable. Remember that registration is often refused for names which could be considered disparaging or offensive. To make sure that your band name is available for trademark registration, make sure you search the federal database. You can do so through the United States Patent and Trademark Office (“USPTO”) free search system known as “TESS” (Trademark Electronic Search System) which is available at http://www.USPTO.gov/trademarks. Please remember though, that TESS will only search federally registered marks and trademark rights also frequently exist through state “common law”. Such common law rights protect the use of the mark in commerce within a particular geographic region and in most states, registration is unnecessary. You must search, using Google or other search engines for businesses or brand name which share your name and conduct business with a similar group of consumers within the same geographic area to be sure that you have not chosen a name being used by someone else.
Prior to registering the Trademark, issues related to ownership of the intellectual property rights must be addressed. Most bands, in the absence of an agreement to the contrary, are considered partnerships under state law. Accordingly, each member of the partnership may own an equal share of the assets including the intellectual property. As a result, ownership of the name – and the rights associated with using the name in commerce – may not reside in a formal business entity but jointly among the individual partners or members. Because this can cause problems when band members leave, an agreement between the members, and a clear and unambiguous transfer of the intellectual property into a business entity owned by the members, is recommended. This agreement is also important because it can act to overcome copyright presumptions that ownership of an original work belongs to the creator.
In conclusion, when seeking to obtain protection for your band name make sure that it is appropriately and exhaustively researched, both in federal databases and in your own geographic region, to make sure that the name is not taken. Second, make sure that ownership of the name is held within a business entity owned by you! Good luck.
Mr. Quin has spent many years as a professional drummer and remains active in the music industry. He represents a variety of entertainers, mostly within the music business, specializing in representing drummers and other sidemen in all aspects of their professional careers including band agreements, endorsements, contract drafting, negotiation and review, business plans, business formations, management, and publishing. Mr. Quin can be reached at 813.314.4523 or via email at firstname.lastname@example.org.
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