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Sound Advice Your inside source to the world of entertainment law with Peter Vaughn Shaver, Esq. I am using my band’s name and our logo design on our CD’s and T-shirts. What can we to do to protect them? Your band name and the logo are each separate trademarks. Trademarks are words, symbols, designs, slogans, or combination of these elements that identify the source of your goods and services. Generally, trademark rights begin when the mark is used for particular products, like your CDs and T-shirts; or services, like your live performances. These rights last as long as your marks are actively used. As long as your marks are not identical or confusingly similar to those that have been adopted earlier by other bands, you have some protected rights - even without registering your trademarks. However, you can gain some excellent benefits by registering your marks. To start with, be careful about choosing a band name. Research possible choices carefully and don’t use names that are easily confused with other bands or entertainers. Remember “R.E.O. Speeddealer”? They are now just “Speeddealer” because they were allegedly creating “consumer confusion” with “R.E.O. Speedwagon.” Also, the band “Squeeze” used to call themselves “U.K. Squeeze” until they heard about another band called “U.K.” who had established their trademark earlier. Properly researching your chosen band name can save you a lot of headaches and you can avoid wasting time and money. Research existing names on bandname.com and bandreg.com and do general web searches for names that you are considering. Note that these sites are for reference only and have nothing to do with registering your trademarks, even if you “register” on their websites. You can search for band names in the federal Trademark office website database and the State of Oregon business registration database. For more general information on registrations, check out the U.S. Trademark Office website at www.uspto.gov or the State of Oregon’s / Corporations Division webpages at sos.state.or.us. Ok, so you have found a cool name that nobody else is using - why register? Registration gives you the exclusive right to use your trademarks within certain categories and territories. However, your rights may be limited to a specific state or the entire country, depending on where you are actually using the trademarks. Registration provides evidence that you were the first to adopt and use a specific trademark and will help establish priority rights against later attempted users. Registration also enables you to recover money from infringers, including heavy penalties, and attorney fees. Federal registration in the U. S. also helps provide you with rights in other countries. Filing a state trademark registration can be fast and fairly inexpensive. State filing requires you to fill out a single page form and submit a fee ($20.00 in Oregon, $50.00 in Washington) for an initial five-year term. You also send in samples of your use of your trademarks. Actual use is generally required prior to registration and you can renew your mark for unlimited five-year periods. Federal filing is more expensive and complicated, but your rights have potentially broader scope. The application cost is $335.00 per trademark, per class. Classes are separately numbered listings for the use of your trademark for different products or services. Some common federal classes for registering band related trademarks are: Class 41: Entertainment services, namely, live performances by a musical group; Class 25 for Clothing, such as T-shirts; Class 9 for sound recordings; and Class 16 for printed matter and paper goods, such as stickers and posters. Federal trademark applications are more complicated to complete and may take over a year for the Trademark Office to issue a final decision. However, your registration rights date back to your initial filing date. There are also two types of federal trademark filings based on usage. Generally, actual use of the mark is required before a trademark can be registered. However, one form of federal registration allows you to reserve the future use of a trademark by filing an “Intent to Use” (ITU) application. The initial registration term is for 10 years and is renewable for additional 10-year periods. Federally registered marks can also be renewed for unlimited amounts of time, as long as they remain in active use for the classes you have claimed. Here’s a few more concepts to keep in mind regarding trademarks: After you start using a band name or logo you should document your use of your trademarks: keep dated copies of show posters and flyers, printers’ bills, photographs of the marks being used, etc. This will provide crucial evidence if there is ever a dispute over where and when you began using a specific trademark. Also consider registering your album artwork and logo designs with the Copyright Office. Copyrights give you additional power and control over valuable images related to your band. You can’t copyright band names, that’s why you must protect the names with trademarks. Use the “®” symbol only for federally registered marks. Use “TM” (Trademark) or “SM” (Service Mark) for state registered marks or unregistered marks. Check out how these are used on recordings and merchandise for well-known bands. Generally, you should always try to keep your merchandising rights for both trademarks and copyrights. Avoid transferring your these rights to recording companies, and try to retain all your rights for use in later independent merchandising or licensing deals. While it is standard to give record companies the limited rights to use your band name and logos on your recordings and promotional materials, they should not get the right to use the name on any merchandise without additional payments. It is also important to decide who will “own” the name and logos if band breaks up or a member leaves. Put this in your band’s written partnership agreement. Register your band’s domain name as soon as possible. Check carefully to see if anyone else is using your name or any similar names that might cause conflicts later on. Avoid registering domain names with other companies’ trademarks in them. Check out availability in the domain database at nsi.com. You can also research owners of domains there in the WHOIS database. The Bottom Line: Registering your band’s trademarks is an important part of protecting your image and the valuable rights related to performance and merchandising income. You should carefully research band names and domain names before you start using them. SEND YOUR QUESTIONS TO: pvshaver@aol.com Disclaimer: The advice and opinions offered in this column are meant to be educational only and should not be relied upon as personal legal advice. The reader is cautioned to seek advice from qualified counsel regarding the specific facts of any legal matter. Neither the writer nor Music Liberation Project accepts any responsibility for the reader's reliance on, or use of, the contents of this article. |