What is a Trademark and what are Trademark Rights?!
(c) Wallace Collins, Esq.


A trademark is a name, slogan or logo which identifies someone's goods or services and indicates source or quality. The purpose of a trademark is to identify and distinguish one's products or services from those of another. A trademark functions as a symbol of quality and goodwill. Trademark rights accrue to the owner or owners of a mark based on the "use" of a mark and these rights vest in the first user of a mark when the mark is used in connection with the trademark owner's goods or services. In other words, the artist or band owns rights in its name as a trademark from the moment they start using it to identify their products or services In the entertainment business, these rights are important not only for the names used by rock groups, DJs, and rappers but for managers, production companies and record labels as well.

Just how protectable the name an artist chooses as a trademark will be can vary depending on what category it falls into. The most protectable category of mark is known as "arbitrary and fanciful" which connotes a word that is made up or a name given to a thing that has no real relation to it. Some of the strongest trademarks are words that were invented just for the purpose so that they fall into the first "arbitrary and fanciful" category. Such invented names include "Nike", "Rolex", "Exxon", and "Microsoft". When it comes to rock bands, names such as "Smashing Pumpkins", "Foo Fighters" and "Brooklyn Funk Essentials" would obviously fall into this distinctive arbitrary and fanciful category.

A lesser but still strong category of mark is known as a "suggestive" mark. This is a word that suggests but does not specifically describe the item is applied to and usually requires some imagination. A few examples of this suggestive category of trademarks are "Meow Mix", "Miracle Gro" and "Pet Rock".

The next category of marks is descriptive marks. These words or slogans usually describe the item or some quality of the item and are only protectable if "secondary meaning" can be established. Secondary meaning most simply means that certain words cause a consumer to think of a product or service notwithstanding that the plain meaning of the words is not in any way connected to the product or service. For example, the simple phrase "you deserve a break today" causes many people to think of McDonalds just as the phrase "just do it" makes many of us think of Nike. It is the secondary meaning that those words have acquired due to extensive advertising that causes that reaction, not the plain meaning of the words themselves. Although secondary meaning can be difficult and expensive to prove in the abstract (usually established by survey's etc.), the law also allows presumed secondary meaning where a person claims that they have been using a mark exclusively for at least five (5) years.

The final category is for generic terms which are given little or no protection. Simply put, you cannot register a trademark on the word "chair" for a chair and prevent others from calling a chair a chair. As a matter of law, the more unique your name is the more protectable it is as a trademark.

The first person to use a trademark has superior rights over a subsequent user of a similar trademark. The criterion for determining infringement of a trademark is the "likelihood of confusion" test. Under the Lanham Act (which is U.S. Federal Law governing trademarks), use of a trademark likely to cause confusion, mistake or deception by the public is prohibited. If your name or mark is deemed to be confusingly similar to a previously existing trademark, the prior user will have grounds for a trademark infringement action against you.

Therefore, before investing too much time, effort and money in establishing your prospective trademark it is a good idea to order a trademark search to make sure noone else has been using the same or a confusingly similar name before you. Keep in mind that a mere search of current Federal trademark registrations may not be sufficient. It is best to order a full nationwide search from one of the companies that specializes in doing such searches. This is important because trademark rights are based on "first use." Therefore, even if someone does not file for or procure a Federal trademark registration, certain rights vest in that person under state law from the moment they start using the name. If they were using a particular name similar to yours prior to when you first started using your name then, under state law, even if you file a Federal trademark registration before that prior user files, he or she could still prevent you from using your name (and prevent or limit the release of your records under your name). The usual solution to such a problem is to buy out that person's rights, but this can be costly. However, the last thing you want to do is find out of the eve of your first big record release that someone else was using the name you have printed on all of the CD covers before you were using it, and you now have to scrap all of your records.

Once you are sure that the name you want to use is clear, the best way to protect your rights is to file an application for Federal trademark registration. Although certain ownership rights accrue to you in your trademark from the time you first start using it as a source identifier for yourself or your band, Federal registration will give you, among other things, a legal presumption of first use and ownership of the name nationwide. It will allow you to commence legal action in Federal court and may entitle you to injunctive relief (which is an order by the court that the infringer cease using the name until the case is resolved), treble damages and legal fees.

Therefore, having determined that noone else is using your name, the next step is to file an application for trademark registration in the Patent and Trademark Office. Currently, the filing fee is still only $325. You can order Federal trademark application forms and for additional information on trademark registration, call (703) 557-4636. Although the time between filing the application and actually receiving your trademark registration certificate could be six months to a year, the effectiveness of the registration is retroactive to the date of first use. Therefore, once you start using a name is it best to continue. In fact, in order to maintain your trademark rights you must continue to use the name and you must police your trademark and beware of others who may use a confusingly similar name to yours.

The best way for a new artist or group to proceed is to choose as unique a name as you can think of, do a comprehensive search to be sure that it is uniquely your own, and then file an application for Federal trademark registration. Most importantly, remember that trademark rights are based on use so once you choose a name - use it or loose it!

One final trademark issue: what happens when the band breaks up or someone leaves the band. Who owns the name?! Can each of the ex-members use it?! Unfortunately, unless there was a band partnership agreement which dealt with this issue, there could be serious problems. Clearly if each ex-member of the "Pocket Lions" was calling his band by the same name there would be confusion in the marketplace. If one or more of the members had started the band and been first users of the name they might have superior rights as

against subsequent members who later departed. However, in a situation where the band forms somewhat simultaneously and no particular member can establish that he created the name and was using it prior to the other members, chaos of a sort (and the litigation that usually follows such situations) will surely ensue.
 

 
Wallace Collins is an entertainment lawyer . He was a recording artist for Epic Records before attending Fordham Law School. 

Specializing in Entertainment Law & Intellectual Property Matters


Wallace E. J. Collins III, Esq.
250 East 39th St. (Suite 9K)
New York, New York 10016
Tel: 212 661-3656

Email: Wallace Collins

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