Making Your Mark In The Music Business
By: Michelle M. Wahl, Esq. – Image source: Shutterstock
Artists often wonder whether they can seek federal trademark protection on their band name and if so, the costs associated with the same. The simple answer is typically, yes. However, determining how complicated and costly the process is depends on a number of factors. Let us start at the beginning and take a very general approach. Keep in mind, however, that changes in federal trademark laws, as well as your individual circumstances may change the process and information outlined in this article. On that note, it is always helpful to seek counsel from an experienced intellectual property attorney when considering federal trademark protection for your mark(s).
Remember that a trademark serves to identify the source of particular goods and or services with the ultimate goal being to avoid consumer confusion. The idea is for the public to see your mark (e.g. band name) and associate the same with your goods (e.g. downloadable music) and/or services (e.g. live performances). You can start establishing common law rights in your mark by simply using the mark on or in connection with your goods and/or services. Just keep in mind that unless you have a federal trademark registration, your rights in the mark are limited to your geographic location.
This is why artists with the same name can exist in multiple states. Granted, there are other considerations in that instance, including the geographic location of each band and the use of the name by the second band being without knowledge of the first band using the same name. For purposes of this article, we will not get into much detail about that scenario, but keep in mind that dual usage of a band name can be highly problematic when one of the bands explodes and starts playing shows in other states, selling records nationally, etc. In other words, it is often helpful to pan out those types of issues sooner than later, especially for bands looking to make their craft their livelihood!
Thus, you will want to determine if your name is already taken and in use by a third party. A great deal of time and attention should be spent on this preliminary investigation and it goes beyond the United States Patent and Trademark Office’s (“USPTO”) online database. However, that database (the Trademark Electronic Search System or “TESS”) is a wonderful starting point. If you familiarize yourself with the ways in which the database can be searched, this can be an excellent tool in helping you determine potential roadblocks for your trademark application.
From there, you should also conduct a common law search (e.g. targeted Google searches) to determine if others are using a name identical or similar to yours on or in connection with similar goods and services. A preliminary trademark availability investigation and report by an experienced intellectual property attorney can help tremendously with this aspect of the process as it can provide insight as to potential problems in obtaining federal trademark registration on your mark.
There are a number of protectable forms of marks that can be in standard character form (no claim to font, color, etc.) and special drawing marks (also known as “design marks”), which include some design element. However, there are some limitations relating to geographic descriptions, surnames, etc. In the music space, bands generally cannot register trademark rights in the title of a single song or album or provide others from using it, unless they can establish consumers have come to know the title with the artist (also known as “secondary meaning”), it is being used in connection with ancillary merchandise (e.g. tee-shirts, hats, etc.) and/or it applies to a series of works (e.g. 2-album series).
Now that you have your mark and are ready to apply for federal trademark registration, the application process varies dependent on whether the mark is already in use in interstate commerce (e.g. across state lines) or upon a bona fide good faith intent to use the mark in interstate commerce in the near future. The type of application you file depends on which of these bases apply to you. In addition, the latter basis will require additional documentation and fees in the future when you actually start using your mark in interstate commerce. Information required in the application includes ownership information, drawing of mark, specimen of mark (for actual use applications), description of goods/services (by Class Number), fees ($225.00/class if you are able to use a description of goods/services from the USPTO’s Acceptable Identification of Goods and Services Manual). Thus, depending on the number of classes involved in your application, your fees can add up quickly (and there are no returns once the application is filed!)
Once the application is filed, it will be assigned to a USPTO trademark Examiner, who will review the application, ensure you met the federal filing requirements, investigate your marks against other marks, and then either approve the mark for publication in the Official Gazette (where third parties can oppose the application for a 30 day period, unless they request an extension to do so) or issue an Office Action (notifying the trademark owner of procedural/substantive issues with the application). If the latter occurs, there are strict deadlines to follow to ensure the application does not abandon. This might also be a good time to employ an intellectual property attorney to assist with responding to an Office Action, particularly if the application is being refused on certain bases (e.g. merely descriptive).
Because Office Actions and third-party oppositions can be complex, for purposes of this article, we will presume there was no issue with the application, it was published in the Official Gazette, and there was no opposition filed. From there, the mark will either proceed to registration (if application filed on “actual use in commerce” basis) or the Examiner will issue a Notice of Allowance (“intent to use” applications).
With the latter, the applicant then has six months to either use the mark on or in connection with the goods/services identified in the application or seek an extension to do so. Additional time periods and fees apply to “intent to use” applications that applicants must consider to avoid the application abandoning (requiring the applicant to start the process over, and lose its priority). Remember, an actual registration will not issue until the mark is being used in commerce on/in connection with the goods/services identified in the application.
So why go through all this work and expense? First, it provides nationwide notice to the public that you are claiming rights in the use of the mark with your goods and/or services and makes your rights superior to any third party who begins using the mark after you file your application. Federal registration also affords additional remedies that would otherwise be unavailable to you had you not federally registered the mark (e.g. statutory damages, attorney’s fees). Moreover, if you fail to take protective measures with your mark, you open yourself to others using similar marks that weaken or dilute your mark’s distinctiveness.
Last, keep in mind as the trademark owner, the burden falls on you to police your mark to ensure others are not infringing on it. Luckily, cease and desist letters and a copy of your mark’s registration certificate will help to enforce and protect your rights. In cases where that does not suffice, however, speak to an intellectual property attorney about the proper course of action to ensure the greatest protection of your trademark rights.
Michelle is a Partner at Swanson, Martin & Bell, LLP and is licensed in Illinois and Indiana state and federal courts. With a Masters of Law in Intellectual Property, Michelle is the Vice Chair of the firm’s Entertainment and Media Practice Group and a member of the firm’s Intellectual Property Litigation and Transactional Services Practice Group. Her copyright and trademark practice focuses on intellectual property prosecution and related transactions, including performing trademark availability searches and providing advisory opinions, as well as preparing and filing trademark applications with the United States Patent and Trademark Office, and copyright registrations with the United States Copyright Office. Michelle also assists with the oversight of the firm’s extensive trademark docket and conducts required monitoring and maintenance of clients’ trademark portfolios, as well as provides clients with corporate counseling and innovative corporate solutions to address their respective needs.
Michelle further provides comprehensive representation in the drafting, negotiating and executing of various entertainment-related contracts and licenses, including but not limited to band member agreements, artist management agreements, session player agreements, performance agreements, sound engineer agreements, recording and personal services agreements, publishing agreements and licensing agreements. As a former artist manager, she has implemented many facets of national and regional tours, assembled benefit and charity concerts, communicated with various industry personnel, facilitated radio and internet publicity campaigns, arranged radio, print and internet interviews, and assisted in the development of press kits and websites promoting local talent.
Michelle has also guest lectured on entertainment and intellectual property-related topics at The John Marshall Law School, DePaul University College of Law, Chicago-Kent College of Law and Azusa Pacific University (CA), as well as served as a panelist on various other entertainment-related continuing legal education courses. Michelle is an author and editor of the Litigation and Industry Updates Column of the ABA’s Entertainment & Sports Lawyers Journal and has also had numerous articles published by the Chicago Music Guide.
In addition, Michelle serves as Chair of Swanson Martin & Bell, LLP’s Community Service/Pro Bono Committee and proudly volunteers her time as President of the Associate Board and as a pro bono attorney to Lawyers for the Creative Arts, a non-profit organization that provides free legal services to eligible clients in all areas of the arts. She also currently serves as Events Chair for the Chicago Chapter of Women in Music, a non-for-profit organization dedicated to fostering equality in the music industry through the support and advancement of women. She recently served as Chair of the Young Lawyers Division for the Illinois Association of Defense Trial Counsel, where she was recognized as the Rising Star recipient and received a Meritorious Service Award and President’s Commendation.
DISCLAIMER: The information contained in these articles constitutes general information and guidance and shall not be construed as legal advice applicable to or provided for any particular person or entity, and shall not be deemed to create an attorney-client relationship between Ms. Wahl and anyone who elects to read and/or rely, to any extent, on the material provided herein. In that respect, Ms. Wahl hereby expressly and specifically disclaims any such legal relationship, but encourages any person or entity seeking a legal advocate pertaining to the issues addressed and discussed herein to contact her directly for further information. Ms. Wahl may be reached at Swanson, Martin & Bell, LLP (330 N. Wabash, Suite 3300, Chicago, IL 60611 or via telephone at her direct line: (312) 222-8585 or e-mail at: [email protected].
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