The In-Laws: Trademarks and Your Band’s Name

by Ron Bienstock
Posted Feb 1, 2013 at 7:55am

As an artist, your most valuable asset is your brand. Your professional name, your logo and your likeness make up several of the facets of that branding — the most important element being the registration of a trademark.

Recently, when speaking at a music school, I was asked why a band should seek to register a trademark for its name (Actually, the questioner incorrectly said “copyright”) when it seemed to be a “frivolous expense.”

I replied: “How much would it cost to withdraw your CDs from distribution, change your digital sales information, change your website, change your domain, change your Facebook page, your Twitter account, alert all of venues at which you are scheduled to perform, order new merchandise, withdraw your merchandise from CafePress.com and re-establish your presence in the music business under a new name?”

There was a substantial silence in the hall (That could also have been out of boredom, but that sounds less dramatic).

Owning your brand is crucial to the long-term success of your career. Please keep in mind that if your music business has international aspects to it (if you are distributing digitally, it already does), you should consider, if your budget allows, filing in key foreign territories.

Trademarks are not like copyrights. A copyright attaches to a recorded work when it is in fixed form — which can just mean that you have it on a disc or hard drive. You then register your copyright in an administrative fashion called “registration,” where your form is stamped and dated. It is not checked or reviewed for actual claimed authorship or ownership. There is no analogous process for trademark as there is for copyright.

Here is how the federal trademark process works: You must file your trademark application and filing fee with the United States Patent and Trademark Office (the “USPTO”). That application, after being filed, is eventually reviewed by an examiner, an attorney working for the USPTO. The examiner then tells you if you are proceeding on to “publication” (the next step in the process) OR if the application is subject to an “office action.”

An office action is a notice from the examiner telling you that you cannot go to the next step in the trademark registration process without either making an administrative change to your application or, more seriously, litigating over the examiner’s refusal. Refusals can be varied and even grouped together. In a refusal, an examiner will often cite cases and rules and regulations to support the examiner’s position. One has to refute this successfully to move on in the process. Two possible grounds for refusal might be that your mark is merely descriptive (e.g., “The Loudest Band”) or that your mark contains someone’s actual name (e.g., “John Jones Band”) without having submitted a consent agreement with that person as part of the application process.

The trademark application process should first start with a search to make sure that the mark you have chosen is not already registered with the USPTO. A professionally conducted search will often prevent the surprises that accompany a mere “let’s see what happens” filing. Many bands have usage in the marketplace but fail to formally register their marks. These bands may still have “common law rights” to their names, and a thorough search let you know of these other bands.

Trademarks must be filed in a specific class. For example, trademarks for musical instruments are filed in international class 15; the most common class for band names would be international class 41 (for live entertainment services). The concept of an “international class” means that the filing classes are the same around the world, BUT you still have to pay to file separately in those territories.

Now go out there and make a name for yourself!

Prior to forming Bienstock & Michael, P.C. 25 years ago, Ronald S. Bienstock was editor-in-chief and publisher of International Musician & Recording World and served as General Counsel to Hoshino, U.S.A. (manufacturer of Ibanez Guitars, electronics and Tama drums). In 1991, Ron was voted one of the top 100 "Most Influential People In The Music Business" by BAM Magazine. Bienstock & Michael’s practice serves a broad spectrum of clients throughout the entertainment and musical instrument industries, specializing in the fields of intellectual property, business matters and litigation. Ron teaches Entertainment Law as an adjunct professor at New York University and is a frequent guest lecturer for graduate and undergraduate schools at NYU. Ron has been a music business commentator for NPR, WBAI, Barely Legal Radio, Tech TV and CNN. He has been a guest lecturer, instructor and panel moderator for BMI, ASCAP, CMJ, NEMO, SXSW, NAMM, PMA, RPMDA, the Florida Music Conference, Miami Music Conference, Atlantic Records’ A&R University, the New York State Bar Association (NYSBA), the New Jersey State Bar Association, The Benjamin Cardozo School of Law, St. John’s School of Law, Rutgers School of Law, Seton Hall Law School, Ithaca College and other organizations and universities.

Photo: Nique Prokop