MY BAND IS SELECTING A NAME. WHAT CAN WE DO TO SEE IF THE NAME IS ALREADY BEING USED BY ANOTHER BAND?
This is, undoubtedly, one of the questions I am asked most often. Before investing money and effort in your band name, put some effort into researching whether the name is in use elsewhere. If someone has established use of the name, they have priority in that territory. Worse yet, the name could be federally trademarked and you could be served with a Cease and Desist letter, which could prohibit your use anywhere in the United States.
A trademark is a word, name, symbol or device that indicates the source of goods and services. As a band, your goods and services are your merchandise, recordings and live performances. Do not confuse trademark with copyright. You trademark a name, not copyright it.
The first step in selecting a name is to choose one that is distinctive, such that it identifies your band and avoids deception, mistake and confusion with another band. Do a preliminary search by using google and the ASCAP/BMI sites. I also advise searching the websites of both the California and New York secretaries of state, the two largest entertainment states. They can be found at www.ss.ca.gov and www.dos.state.ny.us, respectively. Next, you can search the U.S. Patent and Trademark Office at www.uspto.gov. Click on “search” underneath the “trademark” heading at the menu on the left. The search is free and will display all similar sounding names as well as the owner’s name and address. It will also tell you if the trademark is still in use or if it has been abandoned.
If you do the above searches and find a name that is similar in spelling or sound to your potential name, find another name. The test for infringement is whether there is a likelihood of confusion among names. If you’ve yet to record or perform under a name, or performed only a few shows, it won’t hurt to change names. If you do the above searches and your potential name does not appear, it is still no guarantee that your name is not in use elsewhere. There could be a band in San Diego that has been performing for years but hasn’t bothered to pursue federal registration or BMI/ASCAP affiliation.
But if you do decide to move forward with your band name, begin by performing under the name. Trademark ownership is acquired through use, not by merely printing the name on a flyer. Keep records of dates and locations where you’ve performed under the name and keep copies of show flyers. An infringement action ultimately boils down to which band can prove first use. Get the name out there in the flow of commerce through shirts, stickers and a website. Also, use the ™ symbol next to your name. Federal registration is not a prerequisite for the ™ symbol and it puts others on notice that you are actively using the mark.
After you’ve performed a show in another state, you qualify for federal registration. The registration fee is $335.00 and provides significant advantages. It allows use of the ® symbol, provides absolute proof of ownership, the right to sue in federal court in an infringement action and provides for special statutory damages that would otherwise be unavailable. The registration process takes one-year minimum and ownership lasts ten years before it has to be renewed. You can also file for federal registration under an Intent to Use (ITU). This allows you to basically reserve the name for six months until you use the name across state lines.
Most bands will go through their careers without ever having to deal with a trademark infringement claim. But it is more common than you think. Unfortunately, it happens most to newer bands without the financial resources to handle an infringement suit. Taking the above steps can lessen the chances that you will ever have to deal with one in your career.
The information in this column is for general information purposes only. It is not intended to provide advice regarding a specific legal situation. Legal advice can only be provided after consultation with a specific attorney.