Back to Basics: The Importance Of Trademark
This post comes from San Francisco based entertainment attorney Dan Turner. Contact: firstname.lastname@example.org
The music industry is in the midst of a radical transformation. The speed with which distribution and streaming technologies, D.I.Y. marketing platforms, and innovative publishing trends are emerging and dying off is enough to overwhelm even the most seasoned artist.
And yet, there remain a few legal essentials that every artist, old or new, must not overlook if they plan to take full advantage of the opportunities present in today’s music business. With this post, I hope to refocus some artist energy on one of those legal essentials: The trademark.
I. WHAT IS A TRADEMARK?
A trademark is a source identifier. In short, a trademark provides a mental shortcut for the consumer – instead of researching a product each time they want to make a purchase, they simply choose a brand that they already know and trust. Further, a single mark can serve to identify and distinguish more than one good or service.
This is particularly relevant to bands whose trademark may identify multiple goods and services. For example, “The Black Keys” identifies the service of live entertainment. A concert poster with “The Black Keys” on it tells potential customers that they can expect a show with the band members they know playing the songs they love. “The Black Keys” trademark also identifies a good, namely merchandise (t-shirts, sweatshirts, hats, etc).
Finally, trademarks can be words, symbols/logos, and/or slogans. Think of the word “NIKE,” the Nike Swoosh, and the slogan “Just Do It.” All three of these types of marks are protectable and can be registered with the United States Patent And Trademark Office (USPTO).
II. TRADEMARK BASICS
A band does not have to register its trademark with the USPTO in order to own the mark. United States common law holds that the first person or business to use the mark in commerce owns the mark. Federal registration can, however, secure certain benefits beyond the rights acquired by mere use. By registering the mark, you create a presumption of validity, ownership, and the exclusive right to use the mark.
In short, federal registration makes it much easier to enforce your rights against infringers. When you own a trademark, you can take action to prevent others from using the same mark, or a confusingly similar mark, to identify the same goods and/or services.
Note that trademark is not the same as copyright. Copyright protects original creations that are fixed in a tangible form, for instance a particular song or particular piece of art.
III. THE REGISTRATION PROCESS
Federal trademark registration can get very complicated, but the basic process is relatively simple.
You can register a trademark online through the USPTO’s Trademark Electronic Application System (TEAS). To register a trademark, you must tell the USPTO what good or service your trademark is used to identify and distinguish. There are 45 trademark classes (1-34 covers goods, and 35-45 covers services).
It is not uncommon for bands to register their trademark under 4 or 5 different classes. In no particular order, the 5 most common classes for bands to register under are:
- Live Entertainment Services: Class #41
- Clothing Bearing the Band’s Name and/or Logo: Class #25
- Recorded Music in Various Formats: Class #09
- Printed Goods Such As Posters, Stickers and Event Programs: Class #16
- Streaming Audio: Class #38
For the cash-strapped band, the most important class to register under will generally be Class #41, Live Entertainment Services.
The USPTO currently charges a non-refundable application fee of $325 for each class that you apply under. When applying, you must provide a drawing of the mark, as well as a “specimen.” The specimen must show how the mark identifies that particular good or service in commerce.
An example of a specimen for class #25, clothing, is a hangtag with the word and/or logo on it. Within each registration class, you must list out each particular item that you intend to sell. For example, if registering under class #25, clothing, you must list whether you are selling hats, t-shirts, sweatshirts, pants, shorts, etc.
After you submit the application materials to the USPTO, your case is assigned to a USPTO attorney. The attorney will engage in an exhaustive search to make sure that there are no registered or unregistered marks that conflict with yours. If the same or similar mark already exists in the same class, it is likely that your application will be denied and you will lose the $325 application fee.
Because you do not want to be sued for trademark infringement, and because the USPTO application fee is non-refundable, it is important to diligently research whether conflicting marks exist prior to choosing a trademark. You can cover most of your bases by doing a Google search and a basic word search on the USPTO website. These searches, however, are never 100% full proof. Due to this uncertainty, it is advisable to pay a professional trademark research service to do an exhaustive search prior to settling on and investing in a trademark.
In the new music business, where diverse revenue streams are the name of the game for all D.I.Y.ers, making sure your mark is protected is a necessity well worth the time and money.
Next time, I'll discuss the importance of protecting your copyright through federal registration.
DISCLAIMER – The information presented in here is purely for educational purposes and should not be relied upon as legal advice. Legal information is not the same as legal advice. Legal advice involves an examination of the particular facts of your case and an analysis of how the relevant law applies to those unique facts. In no case should a general informational blog be used as a substitute for the advice of a competent attorney, licensed in your state, conducting a thorough legal analysis.