Trademark 101 for Artists



In this 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.

Introduction


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.

Trademark Basics


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 “Secondary Meaning”).


It's important to know that, despite a registered trademark existing, if someone is using their real name when offering a good or service it can be an absolute defense to a trademark infringement claim. 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).

The Takeaway


· 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 name 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.


About Colin

Colin is the founder of Whiskey Ghost Entertainment Law 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 cmaher@whiskeyghost.com 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.


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