Band Name Trademark Issues, Part 4 – Band Partnerships and Name Issues

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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Band Names as Trademarks, Part 3 – Problems With “Merch” Goods?

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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Band Names as Trademarks, Part 2 – Registering Your Band Name

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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Band Names As Trademarks, Part 1 – Finding a Name

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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