What’s in a Band Name
A band’s name can be one of it’s most important assets, but often times bands are unaware of this when they choose the name. One of the reasons for this is that a band name’s value, from an intellectual property standpoint, grows with the band as they build a brand, generate public good will and listeners start to associate the name with the band’s music. It is important that a band choose wisely. If the band chooses a unique name, and takes the proper steps to protect it as they grow, they can ensure that they benefit from the good will associated with their brand. If the band chooses poorly by selecting a name already in use they may expose themselves to costly litigation and/or have to rebuild the good will they’ve acquired under another name. Furthermore, if the band fails to take steps to protect their name they may find themselves restricted in their use of the name to the point where changing the name is the better of two bad options. Trademark law offers protection for band names as it does for names and logos in other markets.
A Very Brief Trademark Law Overview
Trademark law helps consumers identify the source of goods and services. By ensuring that only one party has rights to a particular name or logo the system reduces selection costs for consumers. They know exactly what they are getting when they select a Beatles album without having to worry about it being some young upstart selling an inferior product under the Beatles famous name. The right of trademark holders to exclude others from using their name or logo allows them to build, and profit from, the good will associated with their products. The Beatles have the right to prevent that young upstart from free riding off of their good will. US trademark law distinguishes between goods and services by designating marks for goods as trademarks and marks for services as service marks. Since music is considered a service band names are protected as service marks.
Common Law Trademark: Limited Protection Without Registration
Of course, even the Beatles weren’t the Beatles when they started out. By that I mean the name holds far more value now then it did at their inception. So what’s a young broke upstart band to do about protecting their name if they can’t afford to navigate the complicated world of the United States Patent and Trademark Office (USPTO)?
Absent federal registration a band may still have limited rights in their name if they are actively using it on a commercial basis. The extent of those rights depends on how long and in what geographical region they’ve been using the name. While these rights are better than nothing they are restricted to the region in which the band has been operating and allow for another band with the same name to maintain rights in a different region. On top of that if a new band, or “junior user”, registers the same name with the USPTO the “senior user” is restricted to the common law rights they’ve acquired in their region. For bands that want to become nationally or globally recognized this situation is untenable. They must change their name and start building their brand again from scratch or face the likely risk of an expensive infringement suit from the junior federal service mark holder.
The Requirements and Benefits of Federal Registration
To qualify for a federal service mark the USPTO requires that bands have a name, symbol, or combination thereof, which identifies and distinguishes their music from the music of other bands. Additionally, the band must be using their name in commerce (i.e., selling records or performing live at music venues under their name.) The USPTO also permits “intent to use” registration, which allows a person or entity to register a name in advance of their commercial use of a name. In order for an intent to use application to ripen into a registered mark the user must file it in good faith, actually use the mark in commerce within 6 months of the intent to use application, and file a statement of use with the USPTO. Thereafter, the registrant must go through the standard procedures required by the USPTO.
(Note – Applying for a federal service mark seems straight forward, but the USPTO procedures for trademark registration are complex. Its important that the process is entered into with an understanding of trademark law or the experience can become lengthy and expensive. I recommend you consult a lawyer before filing an application.)
The Benefits of Federal Registration
A federally registered service mark entitles the holder to exclude others from using the mark throughout the United States by allowing them to sue in federal court for infringement. The power to sue often gives the mark holder enough leverage to force settlement, making band name registration an incredibly useful asset to avoid a long drawn out, and potentially expensive, dispute.
The Consequences of Infringement
If you are on the other side of the coin, using a name that is already registered by another band, you are inviting potentially expensive litigation. The registered user can recover the profits you’ve made under the name, money damages they’ve suffered from your use, and their attorney’s fees and costs for suing you. It adds up fast. The point is, be sure to choose a name that’s neither the same nor confusingly similar to a registered service mark.
Break-Ups and Ownership
You’ve formed a band, picked a unique name, generated a substantial following, and registered your federal service mark. Nicely done! But your fame and fortune has gone to your head. Now your band is breaking up over creative differences and everyone is going their separate ways. These things happen. The problem is that both your lead singer and your lead guitarist want to continue on under your original band name and only one of them can do so. This problem is as old as the music business. To find famous cases, of which there are many, go ahead and do some Google-ing.
Who owns the band name in this scenario? The answer is that it is a fact based determination. Is the service mark registered under the name of an individual band member? Is the mark registered under a business entity such as an LLC? Does the operating agreement address what to do in this situation? Is there an otherwise enforceable contract that governs ownership of the bands intellectual property in the event of a break up? Did one band member write the majority of the songs, choose the name, and hire the other band members? The answer to all of these questions matters when determining who gets the name, but there may not be a simple solution.
Bigger Than Law
Trademark law, if properly navigated, is a powerful tool to help bands build, protect, and profit from the good will they generate. Corporate law and contract law can help ensure that you have an exit plan if one is needed. The rest is up to you, your manager, your label, your accountant, and your fans. Go get em.