Will NOT Trademarking Cut Your Throat? In Short, Yes!

mosc

Will Not Trademarking Cut Your Throat? In Short, Yes!
By Kenny Love

**Kenny Love**

Copyright © 2005 MuBiz.com All Rights Reserved

"My lawyer says that if I fail to trademark my band name, another band with the same name could trademark it and stop me from using it. Then, I would have to repackage all of my CDs, and change the band name my fans are already familiar with. What's more, the other band could even sue me for punitive damages.

The cost to do a formal search is $500, the cost to trademark is $335, and my lawyer's fees would be $1000. That's a lot! However, the potential risk of using the name without a trademark is significant. What are your thoughts?"

Trevor Levine
http://www.acousticsongwriters.com
____________________________________________

Your attorney is correct. However, I must add that, a band that co-exists with the same name must prove, legally or otherwise, that it was utilizing the same name *prior* to your doing so.

And, this is where the "otherwise" comes in, as proving such does not necessarily dictate that the competing band have its name formally registered in order to present you with a "cease and desist" order. In fact, it can be as simple as the competing band having utilized its name for some time before yours and, as such, has achieved a certain level of name recognition and notoriety, whether on a regional, national or international level.

This is a major determining factor in a band preventing your use of its name. Through the years, I have actually watched this unfortunate situation occur with several bands.

Also, many bands elect to wait until they have (hopefully) achieved some career milestones before registering and trademarking their band names. This is not smart, particularly, if you are in this business for the "long haul," so to speak, and plan to have a long career with your act in the Music industry.

Just as you would not (hopefully) operate a business selling your CDs without a business license and (hopefully) would not forego filing your annual federal and state taxes, you should treat the trademarking of your band's name with equal seriousness.

Therefore, the best time to begin strongly considering protecting your band's name through trademark is as soon as you decide to definitely make Music your career.

Because, the absolute worst nightmare would be for you to become a national, or worse, worldwide success, selling thousands and, possibly, millions of units of your music, only to receive a legal notice that you must now change your band's name and all of its related content, as well as your possibly being sued for having used the name.

As for the cost to do a formal search being $500, the cost to trademark being $335, and your attorney's fees being $1000, would you rather take a chance on confusing and losing your fans five years from now with a forced name change and being sued for millions of dollars, or is paying the lesser amount of $1,835 now to eliminate the possibility of this nightmare starting to look a lot better?

Consider taking the time and money to trademark your band name as an investment and a bonafide security cost that protects you and your career for life. And, after going through your trademark process successfully, and if you are, indeed, planning on a serious career in the Music industry, you may also wish to strongly consider incorporating your business as well.

What incorporation does, is take the burden off your personal assets as a possible loss, and limits the burden to only your business assets should you ever encounter and, unfortunately, lose a lawsuit. For $2,500 (or less), you can sleep well every night knowing that you and your career are completely protected legally through your trademark and incorporation.

Trademarking your band name is just as serious as your copyrighting your songs. And, I cannot conceive of any serious songwriter, musician or recording artist who has not invested the small $30 in order to protect his written or sound works, yet, has released a CD to the general public.

In short, trademark and incorporation are two areas in the Music industry, whereby, the old axioms, "an ounce of prevention is worth a pound of cure," and "better safe than sorry," truly apply, and in full force.

The alternative is as aforementioned...to lie awake and worry if, somewhere in the world, a band with your name that was utilizing it only one week prior to your using it, has had now discovered your use of it and has asked its attorney to turn your life upside down and make it a living hell.

To begin researching your band name for trademark purposes, try the following:

* http://www.google.com
* http://www.uspto.gov
* http://www.bandregister.com
* http://www.bandname.com

Also, to listen to our January 19, 2005 radio show ("Think About It") that includes guest Danica Mathes, an entertainment attorney discussing trademarks, please visit the website link at: http://www.MuBiz.com/radioshow.html, then click on the "Listen to Our Shows" link.

As always, I welcome your comments regarding the content and subject matter of this particular article. Please feel free to send them to me at kennylove@MuBiz.com If you, too, have questions regarding any aspect of the Music industry and its related business, please feel free to forward them to me for consideration of publication in an upcoming B# Newsletter issue.

Additionally, I will post your website link in both the newsletter, as well as to approximately 100 music promotional lists, message boards and forums.

[Editor's Note: Kenny Love is president of MuBiz.com, a radio promotion and media publicity service that also provides business and career services for musicians. See the company's corresponding website at http://www.MuBiz.com. Thanks for Bill Fox for forwarding this to me. --mosc]

Ponk · Posted: Wed Apr 13, 2005 9:15 am Post subject:

How about trademarking artist's names? If someone had a band called Tuomas Kärkkäinen that would have been around from the 1970s, could they sue me if I used my own name for artistic purposes? Shocked

That would be amusing...

mosc · Posted: Wed Apr 13, 2005 9:32 am Post subject:

I have heard of it happening many times. Embarassed

Ponk · Posted: Wed Apr 13, 2005 9:45 am Post subject:

Hmmm... Somehow I think there's something wrong here...

...Nah, it's probably just me.

dmosc · Joined: Jun 23, 2003 Posts: 298

zynthetix · Posted: Wed Apr 13, 2005 7:47 pm Post subject:

What if a name conflicts with some non-musical corporation, organization, or entity? One name I once wanted to use was taken by a software company, so I abandoned it (and unfortunetly haven't found an equally likeable replacement since).

mosc · Posted: Wed Apr 13, 2005 8:33 pm Post subject:

Generally speaking a trademark is only good in a specific area of commerce. The software mark may not apply to retail music, but if they have good lawyers and lots of money, they can muscle you out of the name and out of your money. Just my guess, of course - I'm not an attorney.

Ponk · Posted: Wed Apr 13, 2005 10:02 pm Post subject:

Panasonic had to change their name to Pan Sonic and Opel Bastards changed to Op:l Bastards, so it might be best not to have a name of an already existing company, if you don't want to be forced to change it.

deknow · Posted: Thu Apr 14, 2005 6:05 am Post subject:

....hughey louis and the news was "american express" until they got their record deal, not to mention the "chemical brothers" "dust brothers" thing. our band, "the lothars" was originally called "lothars". an attorney representing "lothar and the hand people" sent a letter, and we changed it to "the lothars" (this was all before i joined the band).

mostly, however, you need to prove that you started using the name first. having a trademark does nothing but give you something to sue someone for (infringing on your trademark)....and if you don't "protect your trademark" agressively, you can loose it.

larry's adviced (imho) isn't terrible, but not perfect either. if you can prove you were using the name first (published cd, review in a magazine, flier for an event...a cdr marked with a sharpie probably would not do the trick), then you are in good shape. any piece of music (or text) you produce is automatically copyrighted (this is a change from the past). it isn't a bad idea to spend the $30 to send it to the library of congress if you are pressing 1000 copies (and if you have a "score" it's worth sending that in as well....learn the james newton lesson and be a "composer" as well as an "improvisor"), but spending $1000 to do a search and trademark your name seems a little excessive (unless you are investing a lot of money in the name with tshirts, thousands of cds, tour posters, etc....in that case it makes sense to throw a little money at protecting your investment).

deknow

gravehill · Joined: Apr 12, 2005 Posts: 49 Location: Berlin, Germany

The guy who wrote the answer to the original question is probably a lawyer himself. At least he sounds like one. Rolling Eyes

Anyway, a couple of thoughts did arise from reading the post. Does anyone have any up to date info on how registering your band name would work within EU? Have any of you Europeans done it? Is it expensive?

At least I have got the impression that it should be enough that you can show that you have used the name first in musical context (cd would do fine). Any further info on this would be greatly appreciated.

seraph · Posted: Thu Apr 14, 2005 2:53 pm Post subject: