[Editors Note: This is a guest blog written by Justin M. Jacobson, Esq. Justin is an entertainment and media attorney for The Jacobson Firm, P.C. in New York City. He also runs Label 55 and teaches music business at the Institute of Audio Research.]
Continuing from our prior installment where we discussed copyright law and how it relates to the music industry, we should now briefly explore how trademark law is related to the music business.
As they say on Madison Avenue, “it’s all about the name;” and, trademark law provides protection for a particular name for a specific good or service.
Trademark registration grants the owner of a mark the exclusive right to utilize the brand in commerce to differentiate the goods or services provided by that individual or business from those provided by another. A service mark is a mark used in connection with providing a particular service (i.e. live performance services, talent management services). Trademark protection can apply to a particular word, phrase, slogan, logo, design, smell, sound or a combination of these, which are used in relation to specific goods. The general principle behind trademark law is that the mark acts as an identifier to the public of the source of a good or service. It is actually a consumer protection law based on the origin of goods and services.
There are two distinct trademark systems for acquiring rights in a name. There is a “first-to-file” system, which exists in countries such as Mainland China and France. This system provides protection to the first entity to file for a registration for a particular name for the good or service listed in the registration. Conversely, the United States follows a “first-to-use” system. This system provides trademark protection to the first entity to file an application and who actually utilizes the mark in commerce for the listed goods or services.
In order to protect a name, a federal or state trademark application should be filed with the appropriate state department or the United States Patent and Trademark Office (“U.S.P.T.O.”). In America, an application can be filed for a mark that is currently in use (an “actual use” application) or for one that the owner intends to use (an “intent-to-use” application). An intent-to-use application is filed prior to the actual use of the mark in commerce in an effort to “reserve” a particular name for a specific good or service. The applicant must then actually use the mark in commerce within six months after a “Notice Of Allowance” is issued by the U.S.P.T.O. or an extension must be filed to keep extending the deadline to file a “Notice of Use” to obtain the registration.
In the United States, a mark can only be registered if it is distinctive and not generic for the goods or services provided. A distinctive mark is one that is capable of distinguishing the goods or services provided by one from those provided by others. A mark can be described as fanciful, arbitrary, suggestive, descriptive or generic. Fanciful marks are those that have no meaning other than acting as an indicator of the source such as “Exxon” for gasoline. An arbitrary mark is one that has no relation to the goods being provided such as “Apple” for computers. A suggestive mark is one that suggests a quality or a particular characteristic of the goods provided such as “Jaguar” for automobiles. A descriptive mark merely describes the goods or services provided without requiring any additional imagination or thought on the part of the consumer.
Generally, a descriptive mark cannot be registered unless it has acquired secondary meaning. This can be demonstrated by providing evidence that the relevant consumer marketplace has come to associate this particular mark with the goods provided with the mark. Additionally, use of a mark in commerce for over five years can create a presumption of secondary meaning that an owner can use to its advantage. Finally, a generic mark is one that is incapable of acting as a trademark as it is a common word or term that identifies the products and services without specifying a particular source for the goods or services.
Since, an artist or band’s name is one of the most important, if not, the most important feature in a musician’s career, proper ownership and prior clearance of a particular name is essential. Generally, one should apply for protection in their artist or band name as soon as possible. While the cost may be perceived as prohibitive, the potential downfall due to a lack of a search or registration could be much more detrimental and costly. Since everything a musician does is based on the name, including associated social media platforms, websites, and merchandise; it is prudent to conduct a trademark screening search prior to establishing and developing these outlets to identify any potential barriers to your name and to determine the availability or lack thereof. This will ensure you are not infringing on someone else’s registered or protected mark.
Needless to say, this is a situation that should clearly be avoided as having to change a band’s name after they have begun utilizing it due to another’s mark will end up destroying the good will and notoriety that the artist has built under that particular brand.
Additionally, if an individual fails to register a band name and just begins utilizing it in a specific area or state, the individual may be later forced to only advertise and utilize that mark only in that particular area or state rather than being able to utilize the mark throughout the nation as a federal registration would permit. For example, a band who operates as “The Owls” in one area of the country may apply for a federal trademark registration if they are in interstate commerce, to protect their band name throughout the country.
It is therefore prudent for an artist or band to ensure their chosen name is “clear” prior to utilizing it in commerce, as even if one artist is bigger and more established than an already registered one, the prior registration typically trumps the non-registered entity and could prevent the artist from utilizing this name.
There are also many other benefits to registering a trademark or service mark, including a presumption of ownership and validity of the mark after the first five (5) years of registration. Second, a registration can be used offensively to prevent others from using confusingly similar marks for the same or similar goods or services as those provided by the owner (dilution). Third, the (R) symbol acts as constructive notice to third parties of the owner’s trademark or service mark rights in the particular mark. Fourth, a registration can provide the owner with exclusive nationwide rights in the mark as of the date of filing the application. Fifth, a registration certificate can also provide priority for international registration of the same name in other countries, which is extremely important to an artist in today’s global music industry.
Finally, a registration is a valuable commodity, permitting the licensing of the mark by third parties, such a record label or other merchandise manufacturer. It also permits the owner with the ability to stop counterfeit or gray market goods bearing the owner’s trademark from entering the United
States. Again, the trademark registration can be owned by the business entity created by the artist that permits the entity to easily enter into licensing agreements to license the inclusion of the name on recordings as well as on any other merchandise. (For more information, review our prior installments about business entities/taxes & loan-out companies.)
A valid trademark registration also facilitates the owner in filing infringement claims with various social media platforms, including Facebook, Twitter, Instagram and Tumblr, to retrieve or block potentially infringing accounts. A band with a valid registration could also potentially file an Anti- cybersquatting claim with ICANN to retrieve an infringing domain name.
Since a trademark protects a specific phrase or name for a particular type of goods, a solo artist or band should be aware of the various possible classes that they can obtain registration for a particular name in. A few of the more relevant classes include registration in Class 009: “Audio and video recordings featuring music and artistic performances,” “Musical sound recordings,” “Compact discs featuring music,” “Downloadable music files,” and “Downloadable MP3 files and MP3 recordings. Protection can also be extended to Class 041, which includes: “Audio recording and production,” “recording, production and post-production services in the field of music,” “Production of sound and music video recordings,” “live performances by a musical group.” Protection should also be considered in Class 025, which includes various types of clothing and apparel such as shirts, pants, hats, ties and bandanas (merchandise).
In addition to providing the required information in the trademark application, the Applicant (person who submits an application) must provide a suitable specimen depicting the mark being used in commerce for the particular listed good(s). For example, if a mark is for “live performances” in Class 041, copies of live performance flyers or advertisements containing the artist’s name would be appropriate specimens.
As we’ve discussed, trademark law is utilized for protecting an individual or business’s name and is an essential component to succeed in entertainment. Therefore, it is essential to ensure that all the aspects related to it are proper or the lack thereof, could lead to some devastating results.
You should always consult an experienced attorney in the field to understand the requirements and available options.