Before a band can seek registration and protection of either a trademark or servicemark, the band members need to first understand what each entails and ensure that the protection they are seeking is provided by the type of mark they are registering. For purposes of this brief introduction, I will primarily focus on Illinois state registration and protection, rather than on federal registration (which will be addressed more thoroughly in future articles).
Illinois Law – Illinois trademark and servicemark registration and protection can generally attach to any word, symbol, device, name or combination thereof used or intended to be used in commerce. However, the former (also referred to as a “brand name”) is used to identify and distinguish an entity’s (or person’s) goods from those manufactured or sold by others, and to indicate the source of the goods, while the latter identifies and distinguishes the services of the entity from the services of other entities, and indicates the source of the services, even if the entity is currently unknown. Generally, musicians (e.g. bands) register their marks as servicemarks, even though their service (namely recorded and live musical performances) might be rendered in connection with the sale or distribution of the band’s goods (e.g. merchandise). Hence, the name of a band may function as a servicemark for entertainment services in the nature of performances as a musical group if the band’s name is used to distinguish its services of providing live performances. However, the band name may be registered as a trademark for a series of musical recordings.
The Application Process – Any individual, firm, partnership, limited partnership, limited liability partnership, limited liability company, corporation, association or other organization owning a mark can register and obtain protection for same. However, the mark must refrain from utilizing immoral, deceptive or scandalous matter; it must not disparage or falsely suggest a connection with persons, beliefs, or national symbols; it must not consist of or compromise the flag or any other insignia of the US (or any state or municipality, etc.); it must not include the name, signature or portrait of any living person without written consent; it must not be merely descriptive or deceptively misdescriptive; it must not be primarily a surname; and most importantly, it must not consist of or compromise a mark that is confusingly similar (“resembles”) a mark already registered in Illinois. Assuming your mark doesn’t employ any of these hurdles to registration, you must actually use the mark in Illinois before seeking registration. Upon doing so, you can submit the Application form provided by the Secretary of State along with the $10 filing fee (per mark) payable to the Illinois Secretary of State and three specimens (“copies”) showing the mark as it is actually being used. The Secretary of State then retains the application and specimens on record for public examination. Registration is active for a period of five years, and then the trademark owner must renew in accordance with Illinois’ Requirements for Registration Renewal. Registration allows the owner to use the ™ or SM symbol, but you may not use the federal trademark symbol, ®, unless and until you receive federal trademark registration.
Although trademark and servicemark registration is not compulsory, it definitely has its advantages. For example, registration provides for adequate protection by placing the public on notice of your claimed right to a mark. It also allows the public to begin equating a mark with either your goods or services (e.g. trademark or servicemark, respectively). Illinois trademark protection is relatively simple to attain and the cost is worth every penny. Federal trademark protection becomes more complicated and is governed by several laws, in particular the Lanham Act (which I will discuss in the future). However, here’s a few tidbits relating to Federal registration and protection: gives notice to the public of a registrant’s claim to ownership of the mark; provides a legal presumption of ownership nationwide (rather than just statewide); and it provides the exclusive right to use the mark on or in connection with the goods or services set forth in the applicant’s registration materials. In addition, you get the luxury of filing suit in federal court should someone infringe on your rights in the mark). The downfall to Federal registration is that it is relatively expensive and involves a host of additional steps (and research) that must occur before registration is approved and protection is therefore provided.
For more information relating to Illinois trademark or servicemark protection, visit the Illinois Secretary of State website at: www.cyberdriveillinois.com. If you would like to begin researching what is involved in Federal registration, you can do so at the United States Patent & Trademark Office website: www.uspto.gov/main/trademarks.htm or call the Trademark Assistance Center at (800) 786-9199. For additional information relating to trademarks, check out these resources:
Basic Facts About Trademarks: www.uspto.gov/web/offices/tac/doc/basic/
Trademark Acceptable Identification of Goods and Services Manual: http://tess2.uspto.gov/netahtml.tidm.html
Official Gazette of the U.S. Patent and Trademark Office: www.uspto.gov/web/trademarks/tmog/
In sum, trademark registration and protection is an essential element for a band who intends to take their act outside of the band’s practice space. If you are sharing your musical work and stage performance with others, you should begin conducting research with regard to protecting same. Similar to copyright protection, trademark or servicemark registration and protection can become fairly complicated and it is imperative that you fully understand what is required of you. Be sure to research your mark to ensure that no one else has claimed rights to it and if you are able to, speak with an intellectual property attorney to provide guidance as to which route (state vs. federal, and trademark vs. servicemark) is most fitting for what you are looking to accomplish. Also, intellectual property law provides several terms of art that may not be defined as the average layperson would believe. Hence, words such as “actual use,” “use in commerce,” “confusingly similar,” etc., all have a very particular meaning (with some grey area of course) that you are expected to understand and appreciate. DO YOUR HOMEWORK! No matter which route you choose, you have created a mark or symbol that is representative of your members and your message….protect it before it’s too late.
By: Michelle M. Wahl, Esq.
Image courtesy of Stuart Miles at http://FreeDigitalPhotos.net
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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: firstname.lastname@example.org.