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Posts Tagged ‘infringement concerns’

So it seems the gun world is up in arms (that’s right, I went there) about the fact that the Spearmint Rhino chain of strip clubs has sued gun manufacturer Chiappa Firearms for using a confusingly similar mark on its RHINO 40DS model .357 magnum (Spearmint Rhino Companies Worldwide Inc. v. Chiappa Firearms Ltd et al., 2:11-cv-05682-R–MAN, Central District of California).  I’ve seen no comment from the strip club community.  Apparently they have what they regard as better things to focus on.

Let me mention at the outset that a good friend and eminent member of the Michigan bar tipped me off to this, uh, tussle.  I appreciate it very much because a) it provides a great opportunity to talk about an enduring public misconception about trademark infringement, and b) nothing drives traffic to a blog like the phrase “strip club” in a post title.

The Spearmint Rhino and Chiappa trademarks at issue in the law suit.

Here’s a good photo showing a comparison of the marks, courtesy of this article on the GUNS.COM site.  (I couldn’t help smiling at the phrase “PLENTY of VIDEO” in the title – another savvy web marketer at work.  Touche, my friend.)

I don’t think it’s unreasonable to observe that, aside from the rhinos facing in different directions, the marks actually do look quite similar.  Spearmint Rhino has registered its rhino-outline-in-a-circle mark for “T-shirts and hats; lingerie, namely panties, g-strings, brassieres and corsets for semi-nude and erotic dancers; golf clothing, namely golf shirts, jackets, vests and caps.”  Chiappa has registered its rhino-outline-in-a-circle mark for firearms, but not clothing.

If you clicked over to the GUNS.COM article (and I hope you did), you’ll notice that both the article itself and the reader comments express some surprise and doubt that Spearmint Rhino’s suit has any merit.  I believe the phrase “snowball’s chance in hell” shows up prominently.  This line of thinking can perhaps be summed up as: no one would ever confuse pistols for panties.  Or maybe: how can you mix up guns and G-strings?  Or how about: one holds bullets, the other holds boobs – case closed!  (Sorry.  Traffic, you understand.)

So, would anyone really go out to buy a gun and come home with a G-string instead?  Okay, I’ll grant that one can imagine situations where that might happen.  But would it happen because of confusion caused by the trademarks involved?

The answer to that question is, probably not – but it doesn’t matter.  This is where the enduring public misperception comes into play.  Trademark infringement is not limited to situations where customers are confused into buying one party’s product thinking they’re buying another’s.  This is the important take-away from this article.

People often don’t realize that trademark infringement also exists when the nature of the marks and goods could cause the public to believe there is some connection (such as license, for instance) between the two companies, when in fact that connection doesn’t exist.  Again, not the undies.  This is the important part.

Looked at in that light, maybe Spearmint Rhino’s legal claims don’t seem so ridiculous after all. 

First of all, while the frilly underwear may be more fun to focus on, hopefully you noticed that Spearmint Rhino’s trademark registration also covers T-shirts, hats, golf shirts, jackets, vests and caps.  It’s not unusual at all for makers of outdoor lifestyle products to use their marks on that kind of clothing.

-          The famous GLOCK gun trademark is registered for firearms, but also for “clothing, namely, footwear; headgear, namely, caps, baseball caps, earmuffs, headbands, and headcloths; T-shirts; polo shirts; fleece sweaters; wind-resistant jackets; track suits; neckerchiefs; neckties.”  Perhaps it bears mentioning that T-shirts (at least the white ones) are also a type of underwear?

-          The famous REMINGTON mark is registered for guns, but also for similar clothing goods.

-          Heck, for that matter, the famous HARLEY-DAVIDSON MOTOR CYCLES trademark is registered for motorcycles, but also for hats and caps, and even for “T-Shirts, Tank Tops, Halters, [and] Panties.”

Second, how are these kinds of lifestyle trademarks commonly used on clothing?  By licensing the trademark to another company that’s already in the clothing business.  For some reason, people who spend all day boring out gun barrels don’t want to spend their evenings with straight pins in their mouths, basting seams. 

So, when we strip away (sorry) all the rhetoric, what do we have here?  Two marks that are pretty darn similar in appearance.  One is used on guns, and one is used on a line of products that often have famous gun trademarks on them, via trademark license. 

Could anyone see the Spearmint Rhino mark on, say, a baseball cap and mistakenly believe that the mark was licensed by the gun maker Chiappa?  You can draw your own conclusions, but hopefully I’ve given you a better legal framework to think the matter through.

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There’s an old comedy bit where the comic offers to teach you “everything you’re going to remember from college, ten years after graduation.”  The crash course is offered at a hefty price, but much less than four years of actual college tuition.  There’s a little of that in what we’re going to discuss here today, except for the hefty price of course.

Once you absorb all the knowledge in this article, people will come from miles around to meet you and marvel at your Giant Trademark Brain. And the Law of Averages says that some percentage of them will buy your product, too.

In more than 20 years of advising business owners in the area of trademark law, I’ve noticed many little tidbits of knowledge that I find myself passing along to client after client.  These are things that most business owners and marketing people either don’t know at all or have enduring misunderstandings about. 

Each of these nuggets of information, standing by itself, is not very impressive – but knowing all of them will really increase your comprehension of the trademark process.  For that reason, I have decided to present them all in one place.  So gird your loins and get ready for a crash course in trademark knowledge.

Thing 1:  Trademark rights are created by use of the mark on your goods or services.  Registration of your mark is an important way to increase and extend those rights.

Thing 2:  There is no functional difference between “trademarks” and “service marks” – trademarks identify goods (for example, BUDWEISER® for beer) and service marks identify… that’s right, services (e.g., HOLIDAY INN® for hotel services.)  So for the rest of this post, let’s simplify things by calling them all trademarks, or just marks.

Thing 3:  You don’t register a trademark for “everything,” you register it for specifically identified goods and/or services that are spelled out in your application.  The more types of “things” you want to cover, the more you’ll pay in filing fees for the application.

Thing 4:  Give a lot of thought to what goods/services you want to cover before filing your trademark application, because once the application is filed you cannot broaden its coverage (you can only narrow it, by taking things out.)

Thing 5:  New trademark applications literally are filed every minute at the U.S. Patent and Trademark Office.  Once you decide on a mark and goods/services, file your application as soon as possible to minimize the chances that someone else will “beat you to the punch.”

Thing 6:  No, you cannot file a trademark application or keep alive a registration for a mark you have no current intention of using, just to “keep people away from it.”

Thing 7:  The designations TM and SM that you see everywhere really have no official significance.  They are used unofficially, to indicate that the user regards the name as proprietary.

Thing 8:  You may not use the ® symbol with your mark until your mark is actually registered (not just filed.)  After the registration issues, you should always use it at least once on every package, advertisement, marketing piece, etc.

Thing 9:  You should always search a new product name (the earlier the better) before committing to it or using it.  Not doing so is a dare to the Trademark Infringement Gods.

Thing 10:  Because trademark rights arise from use (see Thing 1 above), trademark searching is an art and not a science.  When searching for potential users of conflicting marks in the vast universe of information out there, you have to choose some logical place to stop.  Always remember that, for these reasons, no trademark search is perfect – just the best search reasonably feasible at the time it’s conducted.

Thing 11:  Minor differences in spelling and inventive spellings won’t make an otherwise infringing mark “safe” to use or register.

Thing 12:  In a similar vein, you probably attach a much greater significance to small product differences within your industry than the general public (or a judge) will.  This means that when comparing products to determine whether you infringe someone else’s mark, the judge is not going to be swayed by the argument that “no one could be confused because the products are totally different – theirs is a 6-pin device and ours is an 8-pin device!”

Thing 13:  When choosing a new name, remember that the more closely it describes the product (or some feature or function of it), the more likely you are to have problems with availability and/or protection.  I could give you a half hour on why, but just trust me on this.  You’re much better off picking a name that is not descriptive.

Thing 14:  Word mark registrations are inherently more flexible than logo/design marks, because use of a registered word mark as a part of your logo is covered by the registration.  The reverse is not true.

Thing 15:  Because of Thing 14, when first starting down the registration path (and anytime cost/budget is a large factor), it’s usually advisable to register the word form of your mark first and register the logo version when finances allow.

Thing 16:  It can take many months for an application to mature into a trademark registration, but there’s no reason to hold off on using the mark in the meantime.  Quite the opposite, in fact – usually you’re better off starting use as soon as possible.

Thing 17:  The time to think about whether your new name will actually be available for you to use is as soon as possible.  Yesterday, if possible.  A month ago, better yet.  Leaving that issue until the last minute invites bad decision-making and disaster.

Thing 18:  Most trademark infringement disputes are resolved through negotiation before any suit is filed, usually with the “junior user” being provided some time period to shift over to a new name.  But don’t take this as an excuse to go forward with a name you know is questionable, because the first sentence often doesn’t apply where the infringement appears intentional.  In those cases, the aggrieved party may go straight to court.

Thing 19:  Using or registering your new name as a domain name does not create trademark rights, unless you use that domain name in a trademark-like way on your website. 

Thing 20:  Similarly, merely registering your corporate name with your state’s secretary of state does not create any trademark rights or constitute any type of government approval for you to use the name as a trademark.

Thing 21:  In the trademark world, as elsewhere, what goes around comes around.  Don’t try to nestle up to a competitor by using a similar mark.  You wouldn’t want anyone doing that to you.  Don’t make me be your mom on this – Golden Rule, and all that.

This is not, of course, intended as a complete list.  Hopefully it is helpful, though.  If I get good response on this article, I’ll think up some more bits of important knowledge.  And then, dear reader, together we can venture down the uncertain path of the sequel.

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The alleged infringing "Hell's Four Finger" Ring marketed by Alexander McQueen Trading Limited.

Someone didn’t do their homework, and it’s going to be a costly and embarrassing lesson.

The Hells Angels Motorcycle Club has sued the Alexander McQueen fashion house for trademark infringement.  The suit was filed October 25, 2010 in U.S. District Court in Los Angeles.  The club also named the Saks retail chain and Internet retailer Zappos.com as defendants for their roles in selling the allegedly infringing products. 

In its complaint, the Hells Angels club requests findings that the defendants infringed its trademarks and committed unfair competition and trademark dilution.  The club seeks an injunction preventing additional sales of the alleged infringing products as well as a recall of the alleged infringing inventory.  The Hells Angels ask that the inventory be delivered to a third party for destruction.  Finally, the club seeks money damages which it asks be multiplied because of the blatant and “exemplary” nature of the infringement, along with the club’s attorney fees for the action.

The alleged infringing "Hell's Knuckle Duster" Clutch marketed by Alexander McQueen Trading Limited.

The motorcycle club claims that Alexander McQueen Trading Limited, the fashion house founded by designer Alexander McQueen (who committed suicide earlier this year), infringed its winged skull design mark by using it in a multi-finger “Hell’s Four Finger” ring and “Hell’s Knuckle Duster” clutch handbag (see pictures.)  The suit also claims that the defendants infringed by marketing a jacquard dress and a pashmina scarf using the word mark HELLS ANGELS, without authorization by the club.

The Hells Angels club registered a winged skull design (which the club calls the “HAMC Death Head design”) in 2009 as U.S. Trademark Registration No. 3666916 for goods including “jewelry, jewelry pins, clocks and watches, earrings, key rings made of precious metal, badges made of precious metal, and chains made of precious metal.”  An image of the registered design appears at right, below.  In its complaint, the club claims use of the design since 1948.

An image of the "HAMC Death Head design" mark registered for various goods, including jewelry, by the Hells Angels Motorcycle Club.

The same design is registered separately (U.S. Reg. No. 3311550, issued in 2007) for “clocks; pins being jewelry; rings being jewelry.” In that registration the Hells Angels claim use of the mark on those goods since 1966.

What Happened Here?

This is, by all appearances, a tremendous blunder by Alexander McQueen Trading Limited, as well as Saks and Zappos.com.  You’re welcome to judge for yourself, of course, but to this observer the designs used by the defendants unquestionably are confusingly similar with the design registered by the Hells Angels.  The use of the words “HELL’S” and “HELL’S ANGELS” merely completed the effect, making it a virtual certainty that consumers would perceive some connection with the infamous motorcycle club.

Here, boys and girls, we have a perfect example of why marketers should always consult an experienced trademark practitioner well in advance of introducing a new product line.  It frankly seems hard to believe that marketers as savvy as those at the House of McQueen, Saks and Zappos.com could have failed to recognize the potential trademark implications of their actions here.  Perhaps they did. 

In any event, it’s highly unlikely that these product ideas would have survived a review by an attorney experienced in trademark law.  Right about now, it probably seems to the good people at the House of McQueen, Saks and Zappos that a review by their trademark attorneys would have been money well spent.

RING AND HANDBAG IMAGES COURTESY OF STYLITE.COM.

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Copyright infringement is an elusive concept for some.  The matter is complicated further by some enduring popular myths about what steps can be taken to avoid infringement.

I should point out that my intent here is to discuss “good old-fashioned” copyright infringement – there are exemptions and “safe harbors” against infringement created by things like the Digital Millennium Copyright Act that are beyond the scope of this discussion.  Watch this space for a discussion of the DMCA at some point in the future. 

"DON'T think about 'He's So Fine,' DON'T think about 'He's So Fine,' DON'T think about 'He's So Fine'..."

What Rights Come from Copyright?

Before we can discuss what constitutes copyright infringement, it’s probably a good idea to lay out what specifically are the rights that are granted by the U.S. copyright laws.  Stated briefly, U.S. copyright law provides a copyright owner with a bundle of rights in a work: he/she has the exclusive right to reproduce, distribute, perform, display, or license his or her work, and to authorize others to do any or all of these things.  The copyright owner also has the exclusive right to create or authorize the creation of derivatives of that work.

So, since the copyright owner has the exclusive right to do all of those things (or to permit others to do them), infringement can happen when someone does any of them without the copyright owner’s permission.  From a practical standpoint, however, the majority of copyright infringement suits involve reproduction (as in copying a work) and/or distributing (as in unauthorized copies of the work). 

Substantial Similarity + Access = Copyright Infringement

Courts find copyright infringement when an accused work is “substantially similar” to a preexisting work, as a result of copying by an infringer.  Often it is difficult for a plaintiff to prove actual copying, since there often are no witnesses to the actual act of copying.  In those cases, in order to show copying the plaintiff must be able to demonstrate that the accused party had “access” to the earlier work – in other words, an opportunity to see, hear or otherwise experience the infringed work. 

So a finding of copyright infringement requires both of these elements: substantial similarity and access/copying.  It stands to reason that mere access, without any substantial similarity, is not infringement.  After all, you certainly are exposed to many copyrighted works every day, and you probably create potentially copyrightable works of your own every day – provided none of “yours” are substantially similar to the any of “theirs,” there is no infringement.  They’re just your own works.

Likewise, the defendant’s access to the prior work is a critical element, and without it there will be no infringement.  This means that (at least theoretically) it is possible for two people to create identical works without infringement.  For example, two photographers could take identical photographs and, if the second photographer created the work solely from his own artistic sense and had never seen the first photographer’s image, there would be no copyright infringement despite the substantial similarity of the works.

There are times when “substantial similarity” is not an issue.  Think, for example, of a case involving the reproduction of a digital image or a recording in digital format.  A digital copy is about as identical as something can get, so in those cases the only real issue is whether the defendant had access to the original work so that copying could occur.

Perhaps a more familiar example would be two songwriters who have written the same melody.  Some may remember that a court found ex-Beatle George Harrison had infringed the copyright in the song “He’s So Fine” with his song “My Sweet Lord.”  The melodies in the two songs are indeed substantially similar, and the court found access based on the fact that that “He’s So Fine” was a popular hit in Britain in 1963, a time when George Harrison was quite active in the music business (in fact, “He’s So Fine” was number 12 on the English charts at a time when a Beatles song was at number 1.)  So, reasoned the court, “Harrison was aware of ‘He’s So Fine.’” 

Don’t Buy Into the “Some Little Change” Myth

One of the most common and enduring popular misunderstandings about copyright infringement goes along these lines:  “As long as I make some little change in the work, I can avoid copyright infringement.”  Some versions of the myth even apply numeric criteria to the formula:  “As long as I don’t use more than X% of the original work, I’m fine.”  The numbers vary according to the version.

These beliefs about how one can avoid committing copyright infringement are completely incorrect and probably result from a misunderstanding of the “substantially similar” requirement.  The courts have developed a number of tests for substantial similarity, but none of them are as simplistic as “Did the defendant make some little change in the original work?” or “Did the defendant use more than X% of the plaintiff’s work?”

In fact, in both of those versions of what we’ll call the “some little change test,” the defendant started with a work owned by another party and sought to create new work free of infringement risk by adding some elements of his/her own creativity.  What the defendant actually has done is to create an unauthorized derivative work – which is in itself another form of copyright infringement.

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This series discusses trademark issues that arise in the context of band names.  My previous posts in the series have covered finding a name, registering that name, and avoiding problems when selling so-called “merch” goods, especially clothing, bearing the name.  To close out this series, I’d like to take a few moments to discuss exactly how it is that bands own their names, from a legal perspective.

"Hello and welcome to our partnership meeting! Sing along if you know the words!"

So, you’ve got yourself a band and things are going well.  The band’s name is becoming more and more well known, and the future looks bright.  Bands differ in many ways – they may play different music, using different instruments, in different venues, to different audiences, to different audiences.

Then again, anyone with any experience playing music will tell you that all bands have one thing in common:  they tend to break up, sooner or later.  When that happens, who owns the name?

To answer that question, which is after all a legal conclusion, you have to consider what exactly the band was…  From a legal standpoint, that is.  (And here’s a hint:  it’s even better to think about this issue before your band breaks up…)

Partnership Is the Default Status

The law of Illinois and Indiana, where I am admitted to practice (and also the law of many other states), presumes that when a group of individuals act together for a common purpose and when they share the profits and losses of those actions, they have created what is generally referred to as a “common law partnership.”  This includes people working together as a band since, when you stop to think about it, a band’s activities fit that general definition quite well. 

Without a written agreement to the contrary, the law in most states will assume a number of things about a band’s partnership.  One of those assumptions the law makes is that all members of the partnership have equal ownership of, and an equal right to use, all the assets of the partnership.  In the case of a band, those assets include the band’s name. 

Problems Under Partnership Law

So under general partnership law, unless there is a written partnership agreement to the contrary, all band members/common law partners would be equal owners of the band name and any associated logos.  In addition, any current or former member would be permitted to use the name.  Because trademark rights are determined by who uses a mark and not who created it, each of the members of the Band would be an equal co-owner of the group name under trademark law.

Given the propensity of musicians to join and quit bands, the prospect of former band members having some ownership interest in the name tends to be a little disturbing to the remaining band members.

Solution:  A Written Partnership Agreement

Obviously, you can own and use a band name trademark as a common law partnership – most bands never even consider the issue, and as a result that’s how they own and use their names.  You can even register the name as a trademark, listing the common law partnership as the entity that owns the mark.  But absent a written partnership agreement to govern ownership of the name in the event a band member/partner leaves or the partnership dissolves (i.e., the band breaks up), figuring out who owns the rights in the name could get very messy. 

Obviously, in the case of most music groups, a written partnership agreement is preferable to general partnership law.  Once a band partnership agreement is created, it can function like a prenuptial agreement and, if need be, help make the break-up process less painful. 

Other Alternatives: LLC or Corporation

It’s also possible to form a limited liability company (also known as an LLC) or a corporation for the band.  These more formal forms of organization may work better for your band, depending on the sophistication of the band’s operations. 

In either event, it’s a good idea to work with an attorney who knows the ins and outs of each form of organization, as it relates to music groups.  As with many areas, spending a little money now on legal assistance may avoid much greater costs and headaches later.

PICTURE COURTESY OF PUBLICDOMAINPICTURES.NET.

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Gwen Stefani isn't going to screw up and step on someone's toes in the rag trade. You, on the other hand, might.

In the preceding post in this series, I mentioned some reasons why it’s a good idea to hire an attorney with experience in trademark law to handle the application to register your band name.  There are other reasons why hiring an attorney for this process is a good idea, though.  For instance, your attorney will have the experience to know whether existing trademarks covering peripheral “merch” goods categories are problematic.

What do I mean by that?  Well, when you put your band name/trademark on goods like clothing, you are wading into an industry not directly related to music or entertainment.  The apparel industry has its own brands and, unless you’re Gwen Stefani, as a musician you may be unaware of another identical or highly similar brand name in that industry. 

Music and fashion tend to track similar trends, attitudes and tastes, however.  Both emphasize youth, rebellion and counterculture style.  This makes it understandable that similar or identical names might arise in both the music and fashion industries.  So, as an example, it would’t be surprising for a band named “RAGE OF ANGELS” to bump into an existing clothing brand also called “RAGE OF ANGELS.”

Is this a problem?  Well, if the brands are identical as in the above example, and if you hope to use and register your band name for clothing, the answer is almost certainly yes.  That’s a relatively easy call for anyone to make.  But what if the names are not identical but merely similar to a greater or lesser extent?  Now it becomes a judgment call.  And this is by far the more common occurrence, by the way.

This is no small issue.  Many bands rely heavily on the money they make from sales of “merch” goods, and tee shirts and other clothing items form a dominant part of those sales.  All the more reason to have an experienced attorney search the name for these goods at the outset, in order to avoid these problems.

An attorney with experience in trademark law is better equipped to make that judgment call.  It probably would be more than worth the cost of a bit of attorney’s time to avoid wasting $275 – $325 in filing fees (for a clothing category), not to mention whatever problems and costs may come with a challenge or opposition by the clothing brand.

You want to focus on rockin’ the joint up, not on cease and desist letters from fashionistas.  Save yourself the headaches and work with an attorney who knows how to spot a potential issue in this arena and can help you avoid problems.

PHOTO COURTESY OF FLICKR USER BRAYAN E., UNDER THIS CREATIVE COMMONS LICENSE.

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The first post in this series discussed issues related to finding a band name that is available for your use.  Now we can talk about protecting your band’s name against encroachment by other acts.

So now you’ve found a band name that everyone in and out of the band loves, and it has passed the availability searching test I discussed in the previous post.  How do you create and strengthen your rights in the name, so no one else takes it? 

Rehearsing is great guys, but maybe you should take five and get started on that trademark application for THE EEL RIVER BOYZ.

First, you use the name.  You use it in the band’s promotion and performance.  You create the same types of sites you were searching for earlier, using the band name prominently on your website, on a Facebook page, a Myspace page, and so on.

Next, you register your band name.  You register it as a domain name; you register it on the band name databases; you set up a presence on Sonicbids.  And, most importantly, you register your band name as a trademark and service mark for the goods and services you sell under the name.

Trademark Registration

Before starting down the path towards registration of your band name as a trademark, it’s important to understand that trademarks are not registered for all possible goods and services.  Instead, your trademark wil be registered to cover the specific goods and/or services you identify in your application.

So what do you sell, as a band?  Live entertainment services?  Recorded music?  What about the “merch” you’ll sell bearing the band’s name – shirts, hats, posters, stickers, buttons, jewelry, key chains, shot glasses/beer glasses/coffee mugs?  All of the above?  Depending on your budget, you’ll want to cover as many of these goods and services as possible in your trademark application. 

Coverage for Your Application Means USPTO Filing Fees

I mention your budget because the U.S. Patent and Trademark Office charges filing fees when you file a trademark application.  Those USPTO filing fees are based on how many International Classes of goods and services your claimed goods and services fall into.  The International Classification system categorizes all conceivable goods and services into 45 separate Classes – a very general breakout of what falls within each Class can be found HERE.

USPTO filing fees vary depending upon how idiosyncratic your descriptions of the goods and services need to be.  If you are willing to use fairly generic pre-approved wording for the descriptions (and meet other requirements for your application), you can limit your filing fees to $275 for each International Class your goods and services fall into.  If for some reason accurately describing your goods or services requires more customized wording, the USPTO will charge $325 per Class in filing fees.

In my experience, for most bands the most important services to cover in a trademark application (in order of decreasing importance) are: 

Ÿ  Live entertainment services (which fall into International Class 41);

Ÿ  Recorded music in various formats (which falls into International Class 9); 

Ÿ  Clothing bearing the band’s name and/or logo (which falls into International Class 25); and

Ÿ  Printed goods such as posters, stickers and event programs (which fall into International Class 16).

As you can see, filing fees can add up quickly.  Covering just the above four Classes in your application will amount to $1,100 in filing fees charged by the USPTO.  This means that you’ll want to think carefully about what’s most important to cover in light of your band’s finances.  Perhaps your budget only allows for one or two Classes, in which case I would opt for the first one or two categories above. 

Do You Need an Attorney?

If you hire an attorney to file and prosecute your trademark application, that attorney also will charge separate professional fees for those services.  Why go to that expense, you may ask yourself.

Hiring an attorney who is experienced in the practice of trademark law is not an absolute necessity for the registration of your mark with the USPTO.  But an experienced practitioner knows how to prepare an application and deal with the USPTO examiner in a way that helps ensure that the resulting registration will give you with the broadest rights possible.  Is it worth the money?  You bet it is.

File Right Away

The USPTO will accept your application right away, you don’t need to begin using the band name before you file your application as long as you can assert that you have a bona fide intent to use the name.  In fact, it’s best to file sooner rather than later.  Every day that goes by is a day someone else could file an application that blocks your registration.

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Names are a touchy subject with bands.  Finding a good band name that everyone can agree on, and that is available for your use, is no picnic.  Bands have broken up over lesser issues.  That provides all the more reason to do things the right way when choosing your band name, and to take the steps to keep your name proprietary, once you finally find it. 

After much discussion and consideration, this band settled on the name - wait for it - "Amazing Grace."

Finding a Good Name Is More Difficult Than Ever

It has been widely reported that “all the good band names are taken.”   No less an authority than John Paul Jones (formerly the bassist and keyboardist for Led Zeppelin, now with the supergroup Them Crooked Vultures) has lamented in print, “Think of a great band name and Google it, and you’ll find a French-Canadian jam band with a MySpace page.”

It used to be easier to find a good band name, assuming you were a local act with no superstar ambitions.  If a name you liked was already being used by another small act in some distant location, there was no problem.  This is because the chances were good that the two bands would never encounter one another, nor one another’s fan base.

You really cannot depend on that kind of coexistence any longer, however.  When virtually every band has a MySpace page, a Facebook page or a website (or all three), it becomes more difficult to argue that such a thing as “separate territories” exists.  Anyone can access those sites from anywhere and be exposed to the band and its music. 

Verily, as the Internet giveth, so the Internet taketh away. 

Search Your Band Name

For this reason, when you are choosing a new band name, it’s important to search the name to ensure no one else is using it in a way that might result in an infringement challenge.  This doesn’t mean it has to be a name that no one else is using for any goods or services – merely that the public won’t mistakenly believe there is some connection between your use and the use anyone else is making.

So, how do you search names?  First, you should be doing your own online checks as you go along with the name consideration process.  Like John Paul Jones, you should be checking potential names through Google, Facebook, MySpace, Sonicbids.com, Pitchfork.com, AllMusic.com, and any other music site you can think of.  There also are dedicated band name databases that are worth checking.

When searching, focus on the key words in your proposed name.  Ignore any differences created by generic buzz words like “the” and “band.”  Are there a number of bands coexisting with the same key word but combining it with other distinctive words?  Calling yourself “The Kiss” isn’t going to keep Gene Simmons from suing you, but “Kiss My Grits” might.

If you find a potentially conflicting band name on any of these sites, investigate further.  Mere difference in types of music is not a good basis to assume it’s safe to go ahead with use of the name, but it may be another story if the other band is defunct.  So is the band still in existence, or did it release one album in 1989 and then disappear?  Or was it last heard from a year ago?  All of these may mean different things in terms of the assessed risk level.

It’s Worth Talking To An Attorney

Once you find a name that passes your own search test, it’s a good idea to share and discuss your results with an attorney experienced in trademark law.  It’s also a very good idea to have him or her conduct a more detailed search that includes registered marks. 

There are many reasons why an attorney search is highly recommended.  Among them is this: your trademark counsel will have a better sense of what’s a problem in non-musical goods and services.  For reasons that will be more apparent in the next installment, that insight can be very important.

PHOTO COURTESY OF FLICKR USER CONNER395, UNDER THIS CREATIVE COMMONS LICENSE.

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All businesses have trademark issues that should be buttoned-down.  Family-owned businesses, though, tend to have more trademark issues – and potentially thornier ones – than many other types. 

Okay, MAYBE this family business can get by without addressing trademark issues, but YOURS CAN'T!

Long-standing and thriving family businesses can implode for many reasons when the patriarch or matriarch who started the business retires or dies.  Sometimes family members in succeeding generations lack the business skill or drive of the original generation.  Sometimes they disagree as to the best way to run or expand the business.  There are plenty of reasons for such businesses to run aground.

Trademark Issues are Different in Family Businesses

Often family members from one or more later generations have worked hard to develop and expand the business, and feel a sense of ownership.  Each member of each generation tends to develop the expectation that someday he or she will inherit ownership of at least some part of the business.  For these reasons, family businesses that fail to deal with succession planning in advance are even more likely to fail when succeeding generations take over. 

And what asset of a family business is more valuable than the trademark?  The trademark literally symbolizes all of the good will that each family member has worked to build for the business.  And making matters more sensitive, the primary trademark for many family businesses is the family name – something that all family members naturally feel entitled to use. 

Complicating things even further, it’s not unusual for different family members – brothers, sisters, uncles, aunts, cousins, and so on – to take over the independent management (even ownership) of different stores.  This is quite common in family restaurant businesses, for instance.

How Problems Arise

While the original generation is still in place, such arrangements usually can hang together.  But when that original generation leaves the business the succeeding generations can end up pulling the business to pieces, and the disputes often boil down to who owns and controls the right to use of the trademark.

I am aware of one family restaurant business where the business was started by a group of five brothers.  Eventually, the brothers opened up their own separate restaurants using the same name.  Later, some of their children opened up restaurants of their own, using variations on the name.  After many years had passed, a potential dispute arose over who controlled rights in the name.  Obviously, such a twisted skein of interlocking rights would be a nightmare to unravel.

I should point out also that trademark disputes in a family business not only can hobble or completely cripple the business, they also can make the business unsalable.  No purchaser wants to buy a business where the right to use and control the business’s primary brand name is in question.

Another problem that can arise where multiple family members claim rights in a family business trademark:  it is unclear who, if anyone, can enforce the trademark against an ouside infringer.  Where more than one party claims rights in the same trademark, the ability for one of those parties to enforce the mark is greatly compromised.

Solutions for Family Businesses

For all of these reasons, it should be obvious that trademark ownership is one of the succession planning details a family business absolutely must attend to, if family members want to ensure long-term survival of the business across generations.  How is this accomplished?

Ÿ  To begin with, the business’s trademark should be registered if possible.  I say “if possible” because family names are regarded by the law as a form of descriptive mark, and as a result they are inherently difficult to register as trademarks.

Ÿ  It is preferable that, if at all possible, the entity that owns the trademark registration should be a corporation or LLC – a formal legal entity in which the rights can be vested.  The governing documents for that entity should specify very carefully how ownership and control of the trademark will be handled when one shareholder or member dies or retires. 

Ÿ  In my opinion partnerships are less desirable for the purpose of trademark ownership (especially common law partnerships with no partnership agreement in place) because often partners hold an equal share in all partnership assets – that doesn’t solve the “who controls the name” problem, does it?  Whatever the entity, however, trademark ownership and succession should be specifically set forth, in writing and in a form that is binding upon all involved.

Ÿ  Further, starting as early as possible in the life of the family business, great care should be taken that all uses of the trademark by any “branch” locations or businesses are controlled through a written trademark license. 

Ÿ  These measures should be handled (or at least overseen) by an attorney skilled in the practice of trademark law.  Each member of the family business should have separate counsel looking after his or her interests, to avoid any potential conflicts of interest.

Family businesses face enough challenges in generational succession, there is no reason to create more problems by ignoring important issues like trademark ownership.  These precautions won’t guarantee that no issues will arise when a family business changes hands, but they certainly will help to minimize that risk.

PHOTO COURTESY OF FLICKR USER HANSOL, UNDER THIS CREATIVE COMMONS LICENSE.

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Choosing and implementing a new brand name is not as simple as “Do I like it? Okay, let’s go with it!”  Whether it is to be your flagship brand or just a new product or service in your line, there are many factors to consider in choosing a new brand name.  In this post and the others in this series, I’ll walk you through the most important of those steps.

My earlier posts in this series discussed the importance of getting good legal advice, of understanding the function of trademarks, and of deciding whether your marketing plans require exclusivity on the name.   I also have discussed the strategic value of coming up with a list of potential name candidates and of having your name candidates consumer tested and searched for potential conflicts. 

My most recent posts discussed the value of filing trademark applications and registering appropriate domain names to reserve your narrowed list of name candidates.  The next steps are big ones, and they go hand-in-hand with one another. 

...And away we go!!! Brand rollout is an exciting event, no?

Step 9:  Rollout Your New Brand

The last thing you want is a last-minute snag related to your brand name that delays or prevents your scheduled roll out of the new product or service.  But if you have followed the steps recommended in the preceding posts in this series, and paid close attention to your attorney’s advice and recommendations, the way should now be clear for your rollout!

Brand rollout can be within the narrower confines of a test market, or as often occurs, an introduction of your brand to the consumer world at large.  Either way, rollout is a science in itself, and I am not an expert in the planning, preparations, tactical decisions, timing and related issues that form the process.   Those are the realm of the marketer.  There are resources and firms available, however, if you want to educate yourself or engage assistance.

One trademark-related point here:  if you have filed your trademark applications on an “intent-to-use” basis, you need not wait for the registrations to issue before rolling out your product.  In fact, you’ll need to demonstrate that you’ve begun actual use in real-life commerce before your registrations CAN issue.

 Brand rollout is an exhilarating moment.  You are unleashing your creation at last, upon a waiting world!  Of course, there are responsibilities that flow from this exciting prospect. 

Careful policing leaves your brand as sturdy as a brick.. uh, whatever.

Step 10:  Monitor the Marketplace and Police Against Infringements

Just getting your product or service to the marketplace is not the end of the road.  You’ll need to monitor the marketplace on an ongoing basis, watching for the use of confusingly similar names by your competitors.  Brand rollout is a particularly sensitive time in this regard, but the obligation extends throughout the life of your brand.

When an infringement appears, you must be diligent about taking action to enforce your rights and stop the infringing use.  If you fail to do so, you run the risk of losing your exclusive rights in the brand.

Here again is a place where your experienced trademark practitioner can be of great assistance.  If you would prefer to focus your time and efforts on actually doing business, your attorney can connect you with firms that will monitor the marketplace, the Internet and the U.S. Patent and Trademark Office on your behalf, watching for potentially infringing marks. 

It’s also been my experience that as a brand’s following grows, loyal purchasers can be a useful source of marketplace intelligence.  I’ve often learned about a previously-unknown infringement from an indignant brand loyalist.

Your attorney also can and should prepare any challenge or “cease and desist” letters you send out to infringers.  An ill-considered or badly written challenge letter can whip around on you and actually create legal issues for your own brand.  Such letters require careful investigation and preparation, in order to maximize their effect and minimize your own risk.

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