When Two Bands Have the Same Name: A Legal Guide…

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It’s one of those situations that you hope never happens to you.  But let’s face it: with millions of bands online, there’s actually a decent chance another active group has exactly the same name as you.  And the likelihood increases if you are managing or working with several artists.

So what to do?  Before this conflict occurs, proper trademarking and registration can go a long way.  And, the band that understands these processes best has a better chance of keeping their identity – or choosing a better one from the start.  The following comes from music industry attorney Steve Gordon, author of The Future of the Music Business (3rd Edition).

How do I protect the name of my band or my label? Should I register the name and how much will it cost?

This interview answers the questions above and goes well beyond to present the best trademark law primer for musicians, bands and labels that I have seen. I want to express my thanks to James Trigg and Ashford Tucker. They spent a great deal of time and attention to address each of my questions which will be clearly evident once you read this section.   James is a partner with Kilpatrick Townsend & Stockton LLP whose practice focuses on copyright and trademark issues arising in the context of the Internet.  Additionally, he has advised a variety of entertainers and creators on domestic and international trademark and branding issues, and he is an adjunct professor of Trademark Law at the University of Georgia School of Law.  Ashford is an associate with Fross Zelnick Lehrman & Zissu, P.C. who provides domestic and international trademark portfolio counseling to clients in a variety of industries, including music. Ashford also used to write for Pitchfork, the online music publication.

SG: Can you run down the basics: what is a trademark, and why is it important artists and bands?

JT and AT: A trademark serves to identify the source of goods or services. When we see marks like COCA-COLA, MICROSOFT, BUDWEISER and BMW, we instantly associate them with the products sold in conjunction with them, and we rely on these names to assist us in distinguishing one product or service from another. Thus, generally, trademark law seeks to prevent consumer confusion by allowing trademark owners to control the use of their marks so that consumers can rely on a trademark as an indication of a product or service’s unique characteristics.

The law of trademarks applies to the fields of music, film, literature and art just as readily as it does to soda, software, beer and cars. Of course, most of us do not like to think of the arts as a “commodity,” something that merely is bought and sold. Similarly, artists themselves at times may be reluctant to view their names or their creations as commercial trademarks that identify them to the public in exactly the same way that BUDWEISER identifies Anheuser-Busch.   Nonetheless, by taking steps to protect their names, entertainers and artists can assume greater control of their identities and the way that those identities are perceived by the public.

Protectable Forms of Marks

Trademarks can assume innumerable forms, the only qualification being that they serve a source identifying function for their owners. Naturally, there are traditional word marks: R. E. M. , WEEZER, and NINE INCH NAILS all are trademarks that have been registered by their respective owners with the United States Patent and Trademark Office (“PTO”). Word marks can also take the form of personal names.   For example, Madonna, Paul McCartney and Faith Hill all have obtained trademark protection for their performing names.

Additionally, some artists and record labels (e. g. , Grateful Dead, Aerosmith, and Sub Pop) have developed and registered as trademarks distinctive logos and designs that serve to identify them to the public.

Quasi-Protectable Marks

Titles of literary and artistic works, while not completely unprotectable, receive limited benefits under trademark law. A band generally cannot register trademark rights in the title of a single album or song to prevent other artists from using it. A title of a single work, however, may be protectable, and indeed federally registrable, for use in connection with ancillary merchandise, such as toys or clothing. Also, a title may be protectable through litigation if the artist can show that it has achieved “secondary meaning” – in other words, show that consumers have come to exclusively associate that title with the artist or entity that originated the title. [1]

The general prohibition on registering titles does not apply where there is a series of works involved.   For example, singer Meat Loaf owns a federal trademark registration for the mark BAT OUT OF HELL, which he has used as the title of a three-album series.

SG: How does someone establish rights in a name?

JT and AT: Trademark rights in the United States can arise from use and from the trademark registration process. Trademark registration is discussed in Section 2. c. below. Under United States trademark law, a party can establish “common law” trademark rights simply by virtue of using the mark in commerce.   Generally, “use in commerce” for the purpose of establishing rights means displaying the trademark to prospective purchasers in a manner that associates the mark with the mark owner’s goods, services, or business.

Absent a federal registration, the trademark owner’s rights in a mark are limited geographically to the scope of the owner’s reputation. Therefore, absent a federal registration, it is entirely possible for two different entities to share rights in an identical mark for identical services if:
(1) The second party to adopt the mark offers its products or services in a geographic area so remote from that of the prior user that it is unlikely the public will be confused or deceived; and,

(2) The second party’s adoption is in good faith (without knowledge of the prior user’s use) and outside of the prior user’s area of market penetration and “zone of protection. ”

In these circumstances, each user is entitled to prevent the other from entering into its “zone of protection” and both parties have the right to expand into “unoccupied territory” so long as their areas of operation remain remote. Thus, for example, a band in Atlanta, Georgia, with only a regional reputation in the southeastern United States can peacefully coexist with a band in Seattle, Washington, using the identical name. As long as each group stays within its zone of recognition, no confusion is likely. However, problems can begin to emerge if the Atlanta band signs a major label recording contract that provides opportunities for nationwide touring and record distribution.   In this event, the Atlanta group will need to resolve the potential trademark dispute with its Seattle counterpart, or else face the possibility of committing trademark infringement when it sells records and tours in the Pacific Northwest.

For any band beginning to enjoy a taste of success in the music business, it is worthwhile to check the PTO website’s registration database (available at www.uspto.gov) and to do some targeted Google searches to ensure that their name is available for wider use.

The Benefits of a Federal Registration

SG: What is the benefit of a federal trademark registration, and how much does it cost? Is it necessary to hire a lawyer to do it?

JT and AT: Today, most artists and labels achieve recognition beyond mere regional exposure simply by posting music to the Internet. Online uses (offering streaming or downloads via MySpace or Bandcamp), online sales (selling mp3s via iTunes or Amazon MP3), and far-reaching concert events/tours are all common ways for musicians and labels to promote themselves. Accordingly, artists and labels may seek to avoid potential territorial squabbles like the above-described Atlanta/Seattle example by acquiring a federal trademark registration. Among other things, filing an application to register a mark constitutes nationwide constructive notice of the applicant’s claimed rights in the mark. Although a federal trademark registration does not defeat the rights of a remote geographical trademark user who began using the mark prior to the application filing date, the registration provides its owner with superior rights as against any parties who begin using the mark after the filing date of the application.

The case of Stuart vs. Collins [2] demonstrates the benefits of a federal trademark registration in the music context. The Stuart case involved a little-known rock musician named Thomas Stuart who performed in a group called THE RUBBERBAND. Although the group’s primary area of operation was in the southeastern United States, Stuart procured a federal trademark registration for the band’s name.   Subsequent to the registration date of Stuart’s mark, well-known funk bassist Bootsy Collins began to tour and release records under the name BOOTSY’S RUBBER BAND. Stuart filed suit, and ultimately was awarded $250,000 after prevailing on his infringement claim. There is no question that Stuart’s case was enhanced by his federal registration. Absent this registration, Stuart’s rights would have been limited to his immediate zone of reputation, and the value of his claim would have been diminished accordingly.

The Stuart case may be contrasted with the case of Sunenblick vs. Harrell. [3] In Sunenblick, a small jazz record label using the mark UPTOWN RECORDS without a federal registration brought suit against a larger R&B/rap label employing the same mark. The court found no likelihood of confusion between these uses, relying in part upon the small size of the plaintiff’s label and upon the fact that the parties catered to different musical genres. It is worth querying whether the result of this case would have been different if the plaintiff had the benefit of a federal registration.   Indeed, had the plaintiff’s mark been registered, it is possible that the plaintiff’s claim to the mark would have been brought to the defendant’s attention at an earlier time, and the defendant may have been deterred from adopting the identical mark in the first place.

The Application Process

JT and AT: A federal trademark application may be based upon the applicant’s preexisting use of the mark in interstate commerce, or upon a bona fide intent to use the mark in interstate commerce at a future time. Effectively, the intent-to-use basis allows an artist to reserve an unused name for future use by filing a trademark application based on the artist’s genuine intent to use the name in the future.

While not legally required, it is generally worthwhile to consult a trademark attorney to navigate the somewhat complicated federal trademark application process. A proper federal trademark application must be signed by the applicant, and must include (1) a description of the goods and/or services the applicant seeks to protect, separated according to their proper class(es); (2) a filing fee of $325 per class of goods or services (assuming electronic filing); (3) a depiction of the mark; and, in the case of use-based applications, (4) specimens that evidence the mark’s usage. Generally, musical artists applying for registration should seek to protect their sound recordings (Class 9) and entertainment services including concert performances (Class 41), at minimum. Additionally, they may consider protecting ancillary merchandise such as printed goods (Class 16) and clothing (Class 25).  More sophisticated music retailers, be they artists, labels, or others, may seek to protect other services such as retail store services (Class 35) or online streaming services (Class 38).  Accordingly, PTO filing fees for a trademark application may vary from several hundred dollars to thousands of dollars, depending on the variety of uses for which the applicant seeks to register the mark. Many trademark attorneys offer flat fee per-class services that include PTO filing fees. Hiring an attorney to handle a two-class, use-based trademark application that encounters no serious complications in the review process generally will cost a band between $1,500 and $2,500, including PTO fees. Intent-to-use applications typically cost more because there are additional PTO fees involved. Also, conducting proper trademark searches can add to the cost of the process, but can be well worth the expense.

Once on file, applications are reviewed by examining attorneys at the PTO, who compare the mark against prior registrations and applications to ensure that it is not confusingly similar to any previous marks. Examining attorneys also review the applications to make sure they do not consist of “merely descriptive” or “generic” terms, which are generally unregist  rable. If the examining attorney deems the mark to be fit for registration, the application will be “published for opposition” in the PTO’s Official Gazette.   Interested parties then have 30 days from the publication date to oppose the application. Provided that the application survives the publication process, the mark will then become registered, if it is a use-based application, or it will be “allowed,” if the application is based on intent to use.   In the case of an intent-to-use application, the registration will not issue until the applicant has provided the PTO with proof that the mark is being used in commerce.

SG: Is it worth it? At what point should an artist or label think of registering a name?

JT and AT: Once an artist or label begins using a trademark in interstate commerce, theoretically there is no point too soon to apply for a federal registration. Practically speaking, however, paying rent and covering basic necessities (e. g. , eating, maintaining a tour van) are major concerns for struggling musicians or small label owners, so a trademark registration understandably may rank low on the priority list. But, on the other hand, if an artist or label achieves some measure of success and can afford to apply for a federal registration, the cost of doing so is money well-spent.

Practically assessing the ongoing general decline in music sales, any performing artist hoping to make a living in the music business likely will sell ancillary merchandise such as clothing and posters. At first these sales may yield only gas money, but eventually they can create a substantial income stream for an artist. As described above, a federal trademark registration puts the nation on notice of the rights the owner asserts in the trademark, thereby avoiding potential territorial squabbles over a mark going forward. The sooner a band or label does this, the better. In the end, a successful artist or label’s trademark becomes an extremely valuable piece of property, and owning a registration serves to streamline enforcement procedures and provide a serious deterrent to counterfeiters. Artists who achieve widespread notoriety often have the opportunity to enter into lucrative merchandise licensing contracts, and a party on the other side of such a deal will expect an artist to protect its trademark from counterfeiters.   The most effective first step to protecting a mark is applying for a federal registration.

If a trademark owner fails to take protective measures, competing uses of similar marks can weaken the mark by diluting the distinctiveness of the owner’s designations, thereby reducing the public’s association between a particular mark and its owner. Large corporate trademark owners annually spend tens (sometimes hundreds) of thousands of dollars to register their marks, to police them in the marketplace, and, where necessary, to bring lawsuits to enforce their rights when other parties tread too closely. While most artists and labels typically do not spend this level of money to police their marks in the marketplace, they should note that with the use and ownership of a trademark comes an obligation to protect the trademark. Even though a fledgling artist or label likely cannot afford the significant costs of litigation often associated with an aggressive trademark enforcement strategy, registering a trademark is still a good idea because it grants a nationwide “zone of protection”and puts all other potential users of the mark on notice of the artist’s or label’s use of the trademark. It is advisable to consult an attorney about a proper enforcement strategy, and in many cases a registration combined with a simple demand letter (crafted by or with the advice of an attorney) can be sufficient to deter infringing activity.

SG: How do courts analyze cases of trademark infringement?

Using trademarks, bands, artists, and record labels have the ability to distinguish their unique goods and services from their competitors in the marketplace. The test for determining whether a junior user’s trademark infringes a senior user’s rights is whether the junior party’s mark is likely to cause confusion. This test applies regardless of whether the plaintiff’s mark is registered. Courts examine a variety of factors in order to assess whether two marks are confusingly similar, including: (1) the strength or weakness of the plaintiff’s mark [4]; (2) the similarity of the two marks in terms of sound, appearance and meaning; (3) the similarity of the parties’ products or services; (4) the similarity of purchasers and the channels of trade for the products or services; (5) the similarity of advertising media; (6) the degree of care that purchasers are likely to exercise; (7) the defendant’s bad faith (or lack thereof); and (8) evidence of actual confusion among purchasers.   (These factors vary slightly based on jurisdiction, but the differences are not significant. )A party who loses a trademark infringement suit can be forced to stop using the trademark at issue and to pay money to the other side, sometimes including the other side’s attorneys’ fees. The amount of money awarded in trademark damages may be significantly increased where the infringer acted willfully and/or used a counterfeit mark.   Monetary damages are typically measured in terms of actual damages suffered by the plaintiff and/or in terms of the profits enjoyed by the defendant as a result of the infringing use.

Potential for a dispute exists especially where there is a possibility of confusion stemming from two bands using an identical or highly similar trademark/band name to offer identical or highly similar goods and services (e. g. , recorded music and concert performances). For example, if we (James and Ashford) began selling our own original recorded rock music under the name GRATEFUL DEAD, there is a significant chance that any consumer purchasing our music would do so with the belief that we were the “real” Grateful Dead and would doubtless be disappointed to hear whatever we recorded instead of the original band. This likelihood of confusion would be increased if we also used the Grateful Dead’s famous “steal your face” logo (shown above). And if we marketed our rock band’s concerts under the name AEROSMITH, concertgoers probably would feel cheated when James and Ashford took the stage.   For further illustration, note that if we used the name AIRSWIFT, standing alone, it might not infringe the AEROSMITH mark; but, if we used the AIRSWIFT name in conjunction with a “wing” motif and Aerosmith’s unique typeface (shown above), there could be an infringement problem. Trademark law should and generally would provide the Grateful Dead and Aerosmith with the ability to stop us from using their names or logos, or from using confusingly similar names and logos.

Accordingly, prior to investing time or money in developing a trademark, it is worthwhile to do a thorough online search for others in the industry using that trademark, to make sure to avoid the current or future possibility of a trademark dispute. And a trademark attorney can provide a more detailed domestic or international trademark search service, as well as a legal opinion on any potential trademark issues, for a party concerned about investing in a particular trademark.

SG: How can you protect your name in foreign countries and why?

Unlike copyright law, trademark law is territorial. The Berne Convention copyright treaty allows a U. S. -based artist to enforce her copyright in a song in over 160 countries, including almost every market of general significance. By contrast, even if a party establishes trademark rights in the U. S. through widespread use and/or federal registration, that party’s rights in the trademark end at the U. S. border. Other nations regulate trademarks according to their own laws.   Some countries – most notably, the U. S. , the U. K. , Canada, and Australia – allow a party to establish common law rights based on use of a trademark.   Many international trademark regimes are first-to-file regimes, so an artist seeking to protect her use of a trademark in these countries should apply for a trademark registration. We recommend meeting with an attorney to discuss international trademark protection options whenever international trademark issues arise.

Domain Names

SG: Let’s start with basics: How does one register a domain name?

JT and AT: Domain name registrars like GoDaddy (www. godaddy. com) and Network Solutions (www. networksolutions. com) offer domain name registration services, generally for between ten and fifteen dollars per domain name. The straightforward registration process involves filling out online forms and paying for the domain name registration.

SG: What protection does registering give?

JT and AT: Registration of a domain name alone does not provide any kind of legal protection.   Registering the domain name simply reserves it for use by the owner, effectively planting a flag in a piece of cyberspace ground. Practically speaking, registering and then using a domain name may establish common law rights in a trademark incorporated within the domain name. But it bears noting that registering and using a domain name incorporating another’s trademark can in some situations subject one to legal liability – just as planting a flag and building a tent in someone else’s front yard could create trouble offline.

SG: What if someone else has already registered the domain name an artist or label seeks?

JT and AT: The answer to this question depends in large part on whether the domain name includes a trademark in which the domain name owner has legitimate rights. In such a case, there is generally little an artist or label can do to acquire the domain name, aside from making an offer to purchase the name. This option may be expensive, and it may be cheaper to come up with a creative variation on the desired domain name. Because of the many domain name extensions now available, registering a “. net” or “. biz” or “. tv” domain name may provide the best solution. Or, adding the term “band” or “music” or “rocks” to the name may solve the problem.

If the domain name incorporates a trademark in which the artist or label already has established trademark rights, the artist or label may be able to take legal action to have the domain name transferred to it, especially in cases of where the domain name owner is merely squatting on the domain name and the artist or label has strong rights in the mark. One potential course of action is filing a suit in federal court under the Anticybersquatting Consumer Protection Act (“ACPA”). Notably, a party suing under ACPA may seek monetary damages. But litigation is expensive and generally not advisable for a party simply seeking transfer of a domain name.

A faster, cheaper option for recovery of a domain name is an arbitration mechanism created by the Internet Corporation for Assigned Names and Numbers called the Uniform Domain-Name Dispute Resolution Policy (the “UDRP”). An action brought under the UDRP allows a complaining party to secure the transfer of a domain name registration where she can establish: (1) that the domain name in question is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (2) that the registrant has no rights or legitimate interests in the domain name; and (3) that the domain name has been registered and used in bad faith. It bears noting that the party bringing a UDRP action cannot seek monetary damages. But, while the amount of legal fees associated with a UDRP action varies based on a number of factors, filing a UDRP generally costs a mere fraction of what litigation in federal court typically costs. The crucial element in a UDRP proceeding is to establish that the registrant is a bad faith “cybersquatter. ”  This often involves convincing an arbitrator that the registrant has procured the name with the intent to sell it to the rightful owner, or with the intent to improperly profit from it, such as through online advertising or affiliate marketing programs.

SG: If they are available, should an artist or label acquire all the top-level domain names (“TLDs”) for its name, that is, <name. com>, <name. biz>, <name. net>, etc. ?

JT and AT: Generally, yes.   If they are available, an artist or label can probably purchase all of the major ones mentioned above for less than a hundred dollars, and easily should be able to redirect them all to its website. Note that it may be worthwhile to acquire country-specific TLDs in some scenarios.   For instance, if an artist or label does a great deal of business in Japan, it is worthwhile to purchase the <name. jp> domain name. The relatively small costs of these domain name registrations would seem extremely cheap in hindsight if, after an artist or label achieved great notoriety, a cybersquatter began using one or more of these domain names and forced the artist or label to take legal action.

SG: Obviously people can register a domain name without a lawyer’s help. When is it necessary to consult with a lawyer about domain names?

JT and AT: It is highly advisable to consult an attorney about a domain name dispute. If someone has registered or is using an infringing domain name, or if an artist receives notice that its use of a domain name infringes another’s trademark, an attorney should be consulted. Notably, an experienced attorney may be able to file one of the above-described UDRP proceedings on an artist’s behalf for as little as a few thousand dollars.

Band names

SG: Suppose you are in a band and someone leaves and continues using the band’s name.

JT and AT: The answer to this question depends first on whether the band has a contract that governs this situation. If a band agreement states that the exiting member has the right to use the name, then the remaining members likely have no claim against the exiting member. If the agreement states that the exiting member has no right to use the name, then the remaining members likely may bring a breach of contract claim and potentially a trademark infringement claim against the departing member. Generally, remaining band members in such a scenario who feel they may have claims to bring against the leaving member should consult an attorney to determine the extent of their rights in the band name under the band agreement.

If there is no band agreement in place, these situations become far thornier. If the band’s name is valuable, it is likely that the parties will hire attorneys to litigate over use of the band’s name.

SG: Are there any notable cases about this issue?

JT and AT: The cases in this area demonstrate the default rule that trademark law will not prevent a former band member from making a truthful representation of former affiliation with her former band, so long as the former band member (1) does so in a manner that is not confusing and (2) has not agreed to refrain from such representations. In Kassbaum vs. Steppenwolf Productions, Inc. , [5] the Ninth Circuit held that the former bassist from Steppenwolf was not barred by contract law or trademark law from using the phrases “Formerly of Steppenwolf,” an “Original Member of Steppenwolf,” and an “Original Founding Member of Steppenwolf” in promotional materials for a new band, provided that these phrases were less prominent than references to the new band.

In HEC Enterprises, Ltd. vs. Deep Purple, Inc. , [6] the management company for the rock group Deep Purple brought suit to enjoin a former member of the band from using the names DEEP PURPLE and NEW DEEP PURPLE in connection with live musical performances. Notwithstanding the fact that the “original” Deep Purple had ceased performing several years prior to the former member’s resurrection of the name, the court found that the mark DEEP PURPLE was still in use given that the group’s recordings remained in distribution. Having established that the original group’s management owned valid rights in the name, the court enjoined the defendants from making further use of the names DEEP PURPLE and NEW DEEP PURPLE, and awarded damages and attorneys fees to the plaintiffs.

In Brother Records, Inc. vs. Jardine, [7] a corporation (BRI) formed by members of the Beach Boys and which owned the rights to the THE BEACH BOYS trademark sued Beach Boy Al Jardine to stop him from using the following names: Al Jardine of the Beach Boys and Family & Friends; The Beach Boys “Family and Friends”; Beach Boys Family & Friends; The Beach Boys, Family & Friends; Beach Boys and Family; as well as, simply, The Beach Boys. This case provides an example of a situation where a band used an agreement to create a corporation, the corporation owned and licensed the rights in the band’s name, and the corporation was able to stop an unlicensed band member from using the band’s name.

Most notably, the Brother Records court addressed the issue of nominative fair use, which Jardine raised as a defense. This doctrine allows a defendant to use a plaintiff’s trademark to refer back to the plaintiff’s goods and services in situations where (1) the product or service at issue is not readily recognizable without use of the trademark; (2) only so much of the trademark is used as is reasonably necessary to identify the product or service; and (3) the user does nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder. [8]  The court held that Jardine’s use of his former band’s name infringed BRI’s trademark because Jardine’s use indicated that the Beach Boys sponsored or endorsed his concerts. For example, some of Jardine’s promotional materials displayed “The Beach Boys” more prominently than “Family and Friends,” and Jardine’s management testified that they recommended using the THE BEACH BOYS name to create or enhance the value of the concert tour. Finally, the fact that some promoters and concertgoers were actually confused – they could not differentiate between a Jardine concert and Beach Boy Mike Love’s nearby, licensed “The Beach Boys” concert – worked strongly against Jardine’s case.

SG: Would you recommend a band contract, and if so what do you recommend the contract say about the band’s name?

JT and AT: For any band that has attained commercial success, or that is on the brink of such success, a band contract is advisable, and such a document should provide an explanation of who owns the band’s trademarks as well as making provisions for ownership in the event one or more members should leave the band. Often these agreements allow former band members to promote themselves as “formerly of [band’s name],” although typically there are limitations placed on how this can be done. For example, there may be a time restriction to how long this representation can be made, and there also may be limits placed upon the type size and font in which the band name appears.

SG: Without going into too much detail, because we could write a book on just this question alone, what other provisions should be in a band agreement?

JT and AT: Most crucially, a band agreement should provide how any conceivable band property or streams of income will be split among the band’s members. Property includes tangible items like a van, a tour bus or instruments and recording gear. And property includes intangible items like copyrights in the band’s songs or in any visual designs used by the band, and trademarks in any band names or logos.   Streams of income include record and publishing royalties, touring income, merchandising income, among many potential others. Band agreements may also, among other things, establish the band as a particular type of business entity and delineate between actual members of the band and mere touring musicians. Much of the substance of a band agreement will depend on the negotiating leverage the different members bring to the table – e. g. , Johnny who writes all the songs for a successful band likely can dictate more terms than Jimmy who just joined and can barely play his bass.

SG: Would you recommend hiring a lawyer for this?If so, do the other people in the band need their own lawyer or can one lawyer be used for all the band members? And, if using just one lawyer, how does the lawyer avoid conflicts of interest?

JT and AT: Bands should consult an attorney to create any kind of band agreement. And, if they can afford them, band members certainly can hire their own individual attorneys. While hiring multiple attorneys maximizes each member’s ability to protect herself in the agreement, it will be costly and it may not be conducive to reaching an agreement in a timely fashion. Generally speaking, a band can consult a single attorney about a band agreement as long as the attorney makes the band aware of the potential conflicts of interest in that situation. A conscientious attorney may require the band to sign a waiver stating, among other things, that the lawyer has explained the conflicts of interest at stake and the band agrees to proceed with the lawyer acting effectively as the band’s clerk, memorializing the band’s wishes and not intervening on behalf of any member’s individual interests. In thornier band agreement situations, such as when a band has had several members come and go, a band’s every-day attorney may prefer to refer the band agreement to another attorney rather than being forced to help the band with an agreement that potentially could favor one member over another.


Paramount Pictures Corp. vs. Dorney Park Coaster Co. , 698 F. Supp. 1274 (E. D. Pa. 1988) (owners of rights in the film Top Gun were able to shut down the operators of a TOP GUN amusement park ride where the ride invoked elements of the film).

489 F. Supp. 827 (S. D. N. Y. 1980).

895 F. Supp. 616 (S. D. N. Y. 1995).

The strongest trademarks are those that are arbitrary or fanciful in relationship (bear no relation) to the products or services with which they are used. On the other hand, marks that describe the products or services with which they are sold are weaker and may be register only with a showing of “secondary meaning,” or that consumers associate the mark with the goods or services. Generic marks are unprotectable. For example, the APPLE mark is a strong trademark when used to sell computers, because the mark bears no relation to the goods. By contrast, an APPLE mark cannot be protected as a trademark to sell actual apples, because in this context the mark is the generic term for the goods.

236 F. 3d 487 (9th Cir. 2000).

213 U. S. P. Q. 991 (C. D. Cal. 1980).

318 F. 3d 900 (9th Cir. 2003), rev’d on other grounds, KP Permanent Make-Up, Inc. vs. Lasting Impression I, Inc. , 543 U. S. 111 (U. S. 2004).

Id. at 908. By contrast, the doctrine of statutory or “classic” fair use allows a defendant to use a plaintiff’s trademark to describe the defendant’s goods where the defendant uses the plaintiff’s trademark in a descriptive manner and thus the use is not fairly characterized as trademark use.

 

 

Image: Tryston Carrithers, licensed under Creative Commons Attribution 2.0 (CC by 2.0).

15 Responses

  1. Harsh Vibes

    Thanks for publishing this. Almost four years ago, some friends and I started a band and, having looked around online to ensure the name was available, decided to call it Harsh Vibes. Then, several months ago, we noticed that another artist was using the the same name.

    Clearly recognizing that we had already registered the username with Facebook, Twitter, Bandcamp, SoundCloud, etc. this new band tacked ‘666’ onto the “harshvibes” username and launched a bunch of online profiles. It has been frustrating, to say the least. His data crosses over with ours on Last.fm. Next Big Sound thinks he’s “Harsh Vibes.” Worst of all, he turns up in Facebook search (sometimes above us) so venues, other bands and promoters will accidentally tag his project in pages and posts on Facebook promoting our shows.

    Even worse, we’ve heard that the guy behind the project has been known to make racially-charged political comments on Facebook, which we’re afraid could wind up harming our reputation should we ever tour on his turf (he’s in CA, we’re in Philadelphia).

    It’s a massive headache.

    Reply
    • Visitor

      “we had already registered the username with Facebook, Twitter, Bandcamp, SoundCloud, etc. this new band tacked ‘666’ onto the “harshvibes” username and launched a bunch of online profiles”

      Name registration on websites doesn’t mean anything at all.

      You don’t own a name unless you can prove that you have used it in commerce (iTunes records or concert posters, for instance).

      Reply
  2. Jesse

    Our band is currently in the process of changing our name on account of a 60’s national hit group “The Critters”, who are still registered. We are a growing regional act based in North Carolina who hope to spread on the East coast. How would changing our name to “Critters!” stand in any future battles? Does eliminating “the” and adding an exclamation suffice?

    Reply
    • Yves Villeneuve

      Do you think it would be okay if a band called themselves, Beatles! .

      Reply
    • Yves Villeneuve

      Personally, something like “The Ghost Crits” or “Carolina Critters” would not infringe their trademark, in my layman’s opinion.

      Reply
  3. Adam Smith

    It may not even be worth fighting over the name if you come up with several good optional names or variations on the name. Even if it’s kind of a crappy or silly name, it won’t matter if the music is great. If you have to change your name, you may even have to go through a “formerly known as” stage for a year or two until your new identity is firmly established. Thanks DMN for posting this though. Really useful stuff!

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  4. 17 Ways to Kill a Music Career | Pyragraph

    […] The costs of picking a name that is already being used include fan confusion, extreme difficulty growing your brand, and lawsuits. So before you pick a name, Google it, check ReverbNation, even check on MySpace. After that, do a trademark search. (See When Two Bands Have the Same Name: A Legal Guide.) […]

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