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?
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.
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:
Live entertainment services (which fall into International Class 41);
Recorded music in various formats (which falls into International Class 9);
Clothing bearing the band’s name and/or logo (which falls into International Class 25); and
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.