Sound Advice
Your inside source to the world of entertainment law
with Peter Vaughn Shaver, Esq.
pvshaver@hotmail.com
Dear Sound Advice:
My band has been using a name locally for the last three years and we just discovered that another band in Austin, Texas is using the same name. Can we get them to stop using it? What should we do?
This is actually a pretty common occurrence in the music world. Band names are considered trademarks, or more properly, service marks, as they identify the source of a band's performance services or merchandise.
Trademark law allows separate users to use the same name in different territories, as long as the territories do not overlap. If they do overlap, the band that has been using the name longer in that territory has the right to that territory. Since performing and selling music is not usually limited to specific territories, it is very important to protect the rights to your band name early on.
In your case, it is unlikely that you will ever be able to use your band name in Austin or any other place that the Austin band has used the name before you. The same concept applies to the other band. They will be unable to use the name in any areas that where you were first to use the name. This creates a problem because as your band gets more popular, you don't want to be limited to only certain areas of the country (or world). The solution here is to either get the other party to stop using the name by legal means or to work out some sort of deal with them.
Generally, if you have been using the name longer than the other band, you can contact them and let them know that you claim the rights to the name. Another option is to offer the other band a buy-out of their rights to the name and pay them to stop their usage. If the other band has been using the name longer, or in a wider geographic area, you might want to work out a deal with them, or just adopt a new name using the suggested guidelines below. Having documentation that you have been using the name as of a certain date and in certain places is a good thing. Try to keep a record of where and when you played. Save flyers, contracts or invoices that provide evidence of your usage.
Tips for adopting and protecting band names:
1. You should check the availability of the name before you start using it. The best place to check to see if anyone is using a similar name is the www.uspto.gov trademark database. You can also do web searches (I prefer google.com) or check out various internet band name sites such as bandname.com (Note: this is a reference site only. "Registering" you name here does not give you or anybody else any rights to the name). You might also check the availability of website names to be sure that you can get the one you want, preferably with the name of the band in the address. Check out the WHOIS database at Network Solutions' www.nsi.com . Once you have "cleared" the name, you should consider registering it.
2. Registration is not required, as merely using the name within specific territories does give you firm rights to the name, but you can avoid a lot of hassles by registering your trademark. Register your band's name with the State of Oregon, if you are only playing local gigs or are not widely selling merchandise or CDs. When you start playing in other states and when your recordings become available nationally, you should consider registering your name with the U.S. Trademark Office.
3. Registering your trademark in Oregon is cheap and easy. Download the forms from the Secretary of State's website www.sos.state.or.us. Fill them out and send them to Salem with $30.00. This covers the first five years of protection. You can renew the name as many times as you want.
4. Federal filing is more expensive and time consuming. A $325.00 filing fee is required for each class. You can register your trademark in a variety of "classes" for different goods or services. The main class for band name registrations is Class 41 for Entertainment Services, namely live performances by a musical group. and you need to carefully put together your application. Forms and information are available online at www.uspto.gov.
Disclaimer: The advice and opinions offered in this column are meant to be educational only and should not be relied upon as legal advice. Every situation is different and you are cautioned to seek advice from qualified counsel regarding the specific facts of your matter. Neither the attorney nor Music Liberation Project accepts any responsibility for any reader's reliance on the contents of this article.
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