By Justin M. Jacobson, Esq.
An artist, band or brand name is one of the most important, if not, the most important feature in an individual’s career. Therefore, ownership and prior proper clearance of a particular name is prudent; and, generally, the creator should apply for trademark or service mark in their artist, band or brand name as soon as possible.
While the cost may be prohibitive, the potential downfall for lack of a search or registration could be much more detrimental and costly. Remember everything you do is based on the “name” and making a change destroys what you have built. Therefore, it is prudent to conduct a trademark screening search to identify any potential bars to your name and to determine the availability or lack thereof, for a particular name chosen. This will ensure you are not infringing on someone else’s registered or protected mark.
Typically, an application can be filed for a mark currently in use or for one that the owner intends to use. An intent-to-use trademark or service mark application is filed prior to the actual use of a mark to “reserve” a particular name for a specific good or service. The trademark or service mark must actually be used in commerce within six months after a Notice Of Allowance is issued or an extension must be filed.
If an individual chooses not to register their name and/or logo, they risk others adopting and using similar marks and logos. They also risk losing the presumptions of ownership and validity a federal trademark registration provides as well as the nationwide rights that are acquired by marks used in interstate commerce. If an individual fails to register a band name and just begins utilizing it in a specific area, the individual may be later forced to only advertise and utilize the mark in this particular area. Federal registration would entitle the individual to utilize the mark throughout the nation.
There are many other benefits to registering a trademark or service mark, including a presumption of ownership and validity of the trademark or service mark after the first five (5) years of registration. Second, a registration can be used offensively to prevent others from adopting and using confusingly similar marks for the same or similar goods or services. Third, the (R) symbol is notice to third parties of your trademark or service mark rights. Fourth, a trademark or service mark registration records for the owner, nationwide rights in the trademark or service mark as of the date of filing the application. Fifth, after five (5) years of securing a trademark or service mark registration and continuous use of the trademark or service mark in commerce, the owner can file an affidavit of incontestability, and the registration can become conclusive evidence of ownership and validity of the mark in a lawsuit and potentially permit the owner to receive treble damages for any willful infringements. Finally, a registration is a valuable commodity, permitting the licensing of the mark by third parties and selling the associated “goodwill” in the mark and permitting the owner to stop counterfeit or gray market goods bearing the owner’s trademark from entering the United States.
A valid registration also permits the owner to file infringement claims with various Social Media platforms, including Facebook, Twitter, Instagram and Tumblr, to retrieve or block potentially infringing accounts. A band with a valid registration could also file an Anti-cybersquatting claim with ICANN to retrieve an infringing domain name. A trademark claim is facilitated with the registration when there are issues with Facebook. For instance the registration is beneficial in acquiring rights to a Facebook page that infringes or is for the mark owned by individual.
Consequently, there are many reasons an individual should protect their band, artist or brand name, because as they say, it’s all in the name.
This article is not intended as legal advice, as an attorney specializing in the field should be consulted.
© 2015 The Jacobson Firm, P.C.