September 2018 - Trademark 101 and VOTE for ME!!!
In this newsletter:
Vote for Me! - Please take a moment to vote for me as Best Attorney in The Nashville Scene's "Best of 2018" (click here to do so). Deadline is September 6th!!!
Whiskey Ghost Entertainment teams with Nashville nonprofit, Music Neighbors;
Trademark 101: Do you own you artist/band name?;
I'm sorry for taking so long to send out another newsletter, but I hope this has some useful information everyone can use. First, I'd like to announce that Whiskey Ghost Entertainment (WGE) has teamed up with Music Neighbors to provide correlating educational content for members of the organization. Music Neighbors is an excellent nonprofit here in Nashville, providing education to those in the music industry while providing support for local music. Please head over to musicneighbors.org to see how you can be a part of such a great community, WGE will be writing a six-part educational series for Music Neighbors, which will be featured on musicneighbors.org as well as in this newsletter. Part I, entitled "Trademark 101: Do you own your artist/band name?" is below.
TRADEMARK 101: Do you own your artist/band name?
This Article is the first of a six-part series. The series is meant as a legal checklist for musicians as they plan to release their music. In this first article, we explore the questions you need to ask about your artist name or band name (in the rest of this article I’m just calling it your name) before making the decision to use it. In this article you will learn:
Background of trademark law;
Is your birth name trademark protected?
Please make a note! Every explanation of law should start with “With some exceptions.” There are many exceptions and distinctions that exist, and it is far too burdensome to explain each one. It is important to know the basics so you know when legal consequences exist, but it’s also important to hire a lawyer to guide you through the exceptions and distinctions. These are general legal principles, and it should not be considered legal advice.
The reason musicians need to know trademark law basics is to (1) avoid trademark infringement when they decide their name, and (2) know how to protect themselves from others infringing their own name.
Trademark laws were created to protect consumers (not the musician or the business owner) from getting confused as to where a product or service is coming from. Everyone wants to know that when they buy a cup of coffee from a shop named Starbuck’s, it is indeed from the brand we all know (and some of us love). We don’t want Joe Schmoe opening up a “Starbuck’s” and selling different coffee.
So why does trademark law concern you? Your name is a trademark, and if someone else is using your name before you, then you may be infringing their trademark, which can have serious consequences as you look to build your brand.
A product or service can obtain trademark protection without even registering their trademark. In general, a person can have trademark protection with the use of the mark “in commerce.” Such protection is limited to the geographic locations where the mark is being used. One of the benefits of registering your trademark (“registering” is explained in more detailed below) is obtaining trademark protection throughout the entire country despite only using the mark in one area.
It is very important to note, the first to use a trademark has priority over the first to register the trademark in the geographic location it is being used. Arguing the first person to use the name never registered the name is not a valid argument. In other words, if I start a band called “Golden Baskets”, and another band has been using that name while touring through California, they will have trademark protection in California even if I register the name as a trademark before them!
This is why it is very important to come up with a unique name that you know for certain (1) is not already a registered trademark for use as a band name, and (2) is not being used anywhere else in the country.
What is Trademark Registration?
Trademark registration is actually registering your trademark through the U.S. Patent and Trademark office. An examiner from the office will review your application and determine whether to grant you registration.
The benefit of registration is, as stated before, trademark protection throughout the country. Registration also provides you with the benefit of the doubt with the court that you own the trademark, and after five years your mark is “incontestable” and cannot be challenged under particular legal arguments.
You must be already using your name in commerce to obtain your trademark. However, if you know you will be releasing your music or playing live under a particular name, you can file an “intent to use” application and hold your place in line (i.e. others who register/use the name after you file the intent to use do not have priority).
Can My Real Name be a Trademark?
One of the most common questions I get regarding trademarks is one’s trademark rights in their birth name. As every good lawyer answers any legal question, “It depends.” There are several factors the examiner will consider including (1) how rare the name is, (2) is it the actual name of the applicant, (3) does the name have any other recognized meaning (i.e. John Baker), and (4) is it already recognized as your trademark (people already know you as a musician, called obtaining “Second Meaning”).
The most important legality to know when it comes to real names is the use of one’s real name is an absolute defense to trademark infringement. This is a double-edged sword. Why? The good news – if it’s your real name you have zero risk of infringing another trademark. The bad news – no matter how big you build your brand, you can’t stop another with the same name from using it in the future.
An important note – You can always trademark your name’s logo, and others (even with the same name) can’t use the same logo (it’s both trademark protected and copyright protected).
A second note – This of course doesn’t apply when you have a unique name attached to your real name (e.g. Bruce Springsteen and the E Street Band).
Do some research before deciding on your band/artist name. Is someone else using it? Then simply avoid the risk for headaches and find another one before you gain success and have to change it later in your career.
Register your name as a trademark. Get the maximum protection for your trademark and get it registered. This will ensure when you’re only playing the Nashville Circuit, someone in Des Moines won’t register the same name and take away protection from everywhere outside Nashville.
Using your real name is good and bad. You’re guaranteed to not infringe if you use your real name, but others with the same name can use it to.
Colin is the founder of Whiskey Ghost Entertainment based in Nashville, TN. Colin has represented independent musicians, record labels and publishers with a wide array of representation including the drafting, review and negotiation of record/publishing deals, distribution and band agreements. He has also assisted in the formation of LLC’s, trademark registration and much more. If you have a legal question, please don’t hesitate to email Colin at firstname.lastname@example.org or call him at 615-721-2233.
This article does not create an attorney-client relationship between you and me. Your use of this website is intended for -general information purposes only and is not legal advice or a substitute for legal counsel. You should not act upon any information contained on this website without seeking professional counsel, licensed to practice in your jurisdiction for a -particular problem.
Please VOTE FOR ME for Best Attorney in The Nashville Scene's Best of 2018.
Again, I'd like to thank everyone for their ongoing support. I have lived here now for two years. I passed the TN bar exam, started my law practice, saw my baby boy Levi enter this world, bought a a house, and met so many new friends along the way. None of this could have happened without the unwavering support and relentless encouragement from the love of my life and mother of my child, Brittney. Her sacrifices allowed me to get to a place where I can ask for your vote, and it would be icing on the cake to tell her I was named Best Attorney of 2018.
I'd like to thank everyone who has already voted. If everyone else could take a moment to vote for me as the Best Attorney in The Nashville Scene's "Best of 2018" I would greatly appreciate the support. You can vote here. The deadline is September 6th!!!
I think it's time an attorney in the music industry, supporting independent musicians and music industry start ups, should take hold of Music City's "Best Attorney" title. Let's not let someone who pays for an advertisement right above the submission form win again (check it out, it really skews the legitimacy of the vote!).