Band Trademark Registration – A Band Name is a Brand Name.

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No substitute exists for a federally registered trademark. Some websites claim to protect your band’s name by listing you in a “band directory” or “band registry” and “establishing ‘prior use'”. You can get the same prior use from a free myspace or reverbnation page. However, neither is sufficient for trademark protection.

A band name is a brand name. Protect it. A band name is a word that identifies and distinguishes the source of service (live performances) or goods (sound recordings) of one party from another. As a result, a band name is registrable subject matter with the United States Patent and Trademark Office (USPTO). Trademark registration separates the kids from the adults. I’m not going to lecture about how you need to obtain trademark registration, because you know you do. There is a lot of material already on the internet detailing the importance of a trademark. I’m going to offer you some helpful hints and interesting facts regarding band name trademarks.

How to search for other band names
This is an important first step often overlooked. The USPTO offers a free basic search tool, which is just that, basic. You should never base your decision to proceed with a name using this tool alone. For example, let’s say you decide to use the name “the Lamineers” for your band. If you enter this in to the USPTO search bar you get zero results – “Yay!”. I’m sure the Lumineers won’t have an issue. Again, it is a basic tool not a comprehensive search. Attorneys have access to trademark databases that are not available to the general public through database subscription services. There is no trademark search equivalent to a legal opinion letter and search report from an attorney. However, when you don’t have the $299 for a trademark attorney search, you should at least search Google, Bing, Myspace, Reverbnation, Secretary of State websites for business filings and state trademarks, and any other place you’d expect to find a band.

Bands’ trademark disputes
One Direction (U.S.)
Their song “What Makes You Beautiful” was nominated for two MTV VMA awards. They acquired trademark registration for their name and then came to an “amicable agreement” to release the rights to their name to the British version of One Direction. The U.S. band now goes by “Uncharted Shores”.
The Postal Service
You may be familiar with their song, “Such Great Heights”. After applying for U.S. trademark registration this band received a cease and desist letter from the United States Postal Service. The two eventually came to an agreement where the USPS granted the band a free license to use the name as long as they provided a notice regarding the trademark in their future albums and the USPS agreed to sell the band’s CD on their website.
Linkin Park
Originally called Hybrid Theory, however, the band Hybrid forced them to change their name.
Led Zeppelin
Jimmy Page was initially in a band called The Yardbirds, when he splintered off to form his own band The New Yardbirds, his original band took issue. He changed the name to Led Zeppelin. A name inspired by a comment by two of the Who members that their band would go down like a “lead balloon”.
Pearl Jam
The Eddie Vedder lead group initially went by Mookie Blaylock (the name of the All-Star basketball player). Concerns with trademark issues forced them to change their name. Ever wonder why an album with 14 songs was named Ten? Well, it’s a jersey number they admire. They still hold Mookie Blaylock close to their hearts.
The Raconteurs
They go by the name The Saboteurs in Australia. In a bold move the Raconteurs adopted a new name after they received an unreasonable counter offer to acquire the rights to the name from the Queensland Australian group, The Raconteurs.

Trademark Ownership
Trademark ownership can be complicated for a band. Make sure you have an agreement detailing the owners of your intellectual property. Such agreements can be incorporated into the formation of an LLC. For example, the LLC can own your trademark, making each member of the LLC an owner. In your articles of incorporation (an agreement filed with the LLC) include what happens if a member disassociates herself from the group/LLC. Make it clear who owns the intellectual property (the current members). Also, include provisions to return the disassociated member’s share back to the LLC.

Bands should acquire trademark registration to protect their investment. After all, why would you want to pump money into marketing a name that isn’t owned by you. It’s like peddling a bike without a chain.

If you need trademark assistance OnlineTrademarkAttorneys.com provides attorney assistance at an affordable rate. Get a trademark registered for $475 plus Govt. fee. Lastly, one of my favorite sports talk shows always opens up the debate of who is the best drummer that ever existed – that’s why I’ve included a poll below (to settle this matter).


Published June 20, 2013 by Brent Sausser.

Intent to Use Applications – Trademark Reservations, Table for One

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So you’ve come up with the perfect name for your future goods or services. Now what?

The Search
You should first conduct a comprehensive trademark search to identify whether other uses of your mark exist. Some key entrepreneur friendly websites offer misguided advice: Entrepreneurship.com suggests that research is key, then states, “do a basic trademark search”. Forbes and SBA.gov offer the sound advice, “check for trademarks”, however, they both follow that with a link to the USPTO trademark search tool. The USPTO provides this search as a basic “knock out” tool. However, you should never base your decision to proceed with a name using this tool alone. For example, let’s say you decide to use the name NIE KEY for shoes. If you enter this in to the USPTO search bar you get zero results – “Yay!”. Again, it is a basic tool not a comprehensive search. The median price for trademark litigation in 2011 excluding damages was $384,000. A basic trademark search is treacherous waters, conduct the real thing if you truly intend to use the mark.

The Application
The two most common types of applications filed with the Trademark Office are based on Section 1(a)(actual use) or 1(b)(intent to use). If you have not used the name but plan on using the name in the future you should file an intent to use application. This application costs the same as an actual use application at the time of filing. However, it will cost you an additional $100 to file an Amendment to Allege Use or a Statement of Use once you begin using the name in association with your goods or services. In addition, you can file five six month extensions for $150 each after the Notice of Allowance issues. In other words, you can possibly reserve the name for three years after you receive a Notice of Allowance. You have to show “good cause” for extensions 2-5. For example, good cause would be building a plant for product manufacturing, working through research and development for a product, eccetera.

Reserving Your Trademark
No one calls it a trademark reservation, but that is exactly what you are doing. In order to rightfully file an intent to use application you have to have a “bona fide intention…to use” the mark in commerce. If you do not, your application is void ab initio (from the beginning). That means that you can’t think of some really cool name, file the trademark application, and sit on the name waiting for a potential buyer. This is why trademark trolls do not exist. After you have obtained registration you can claim the filing date as your date of first use even though you didn’t use the mark until after you filed. That’s the benefit of an intent to use application, you reserve the name. For example, let’s say you file an intent to use application January 1st and Company B files an actual use application January 2nd. We also have to assume here Company B’s date of first use is also January 2nd. You start using the trademark in July, file a statement of use, and successfully acquire a registered mark. Even though you started using the trademark in July, you have superior rights to Company B who started using the trademark in January. As a result Company B will be refused federal registration on a likelihood of confusion basis.

Filing an Amendment to Allege Use or a Statement of Use
An Amendment to Allege Use or a Statement of Use always accompanies an intent to use application. You file the Amendment to Allege Use before publication or you file the Statement of Use after Notice of Allowance. Do not file between these notices, because this is the “black out period“. The filing of either of the above will require a declaration (stating you’re using the mark) as well as a specimen (an image of your trademark in use in commerce). Once these are filed, and the application is approved, you are on your way to registration.

Our Plug: If you need trademark assistance you should seek trademark attorney help from OnlineTrademarkAttorneys.com. We offer a comprehensive trademark search for $299 and both a search and trademark registration for $475 plus government fee.

Published June 6, 2013 by Brent Sausser.

Cease and Desist – What are your options?

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So you have just received a trademark cease and desist letter. Like most trademark cease and desist letters, the person contacting you has probably given you one of two options: 1) stop using the name to identify your goods and/or services; or 2) be sued.  If you are like most business owners neither of these choices is ideal.  This is because you have spent a great deal of time and money getting your name out to the public and the thought of changing your name is difficult to accept.  At the same time, in 2011 it was estimated the average cost to litigate a trademark infringement case through trial starts at $384,000 excluding any judgments and damages awarded.  So what do you do?

Unfortunately, without knowing the circumstances of your case it is difficult to determine what options you have.  For example, depending upon when you first started using the business name in commerce you may have certain rights to the trademark that are grounded in common law.  Another important consideration is how similar is your business name to the other trademark in relation to the goods and/or services you both offer.  Where it is an exact match, unless you can show common law trademark rights chances are you may be infringing on their trademark.  What about the notoriety of the other mark?  If the other mark constitutes a famous mark this will act as an absolute ban on your using the mark regardless of the dissimilar nature of the goods or services you are offering unless, of course, you can show common law trademark rights.

To know what options you have it is essential that you contact an attorney knowledgeable in trademark law.  Receiving a cease and desist letter is a serious matter that should not be ignored, as intentional trademark infringement will subject you to the potential of increased damages.  Even if you are willing to completely walk away from the business name, it is still recommended you seek advice from a trademark attorney.  This is because you would hate to find yourself in the same predicament again and an attorney can help ensure that you choose the right (non-infringing) name for your business.

For more information about your options, please visit our website: Online Trademark Attorneys. Online Trademark Attorney Google+ Profile

Published June 5, 2013 by Alex Spurr.