I was inspired to write this post by Hootie and the Blowfish, who are mired in unfortunate circumstances because they let their trademark registration lapse. Their misfortune is a good learning moment for others in their trademark strategy.
For those who are too young to know about them, or too cool to admit it, Hootie and the Blowfish were huge for a few years in the mid-90’s. They were wholesome, their songs were pleasant enough for “adult oriented radio”, and their debut album Cracked Rear View became one of the top-selling of all time. Full disclosure: I was interning at Atlantic Records when the band was emerging, although I had pretty much nothing to do with their success. I met their lead singer Darius Rucker, though and seemed like a nice guy.
During that time, the band let their trademark registrations lapse. All of them. It made sense not to renew the registration for live performances, as they were not performing. But letting all of their registrations become abandoned has troublesome consequences.
Recently, a cover band called Booty & the Hoefish applied to register its trademark for performances. The band’s move carried some risk. Although parody can be a successful defense to trademark infringement, a parody use of another trademark is much more difficult to register. Surprisingly though, the USPTO registered the trademark.
What’s more, Hootie and the Blowfish decided to apply to register their own trademarks again, for live performances, hats and shirts, and bumper stickers, but now their ability to register their trademarks has been jeopardized. It shouldn’t be, but it is.
Their registrations have been initially refused because of a likelihood of confusion with Blowfish Music To Die For, and Whooty, registered trademarks for, among other things, live musical performances and recordings.
I think this makes no sense. Hootie and the Blowfish should have been able to overcome the refusal. In my view, a band’s trademark outlives the band, so long as the records sell and people still listen to them. It endures. Joy Division had 3.2 million listeners on Spotify last month. If you started a new band, I wouldn’t recommend you call it Derek and the Dominoes or Buzzcocks, even though neither trademark is registered.
As of this blog date, the band didn’t respond to the USPTO’s Office Actions and the applications were marked abandoned. But now, they’d have to start the process all over again.
If you listened to me enough times you’ve probably heard me say a band’s most important trademark considerations are about ownership, not registration. There have been dozens of high-profile disputes from competing band members and ex-members: Pharcyde, Drifters, Platters, Boston, Pink Floyd, Commodores, Creedence Clearwater Revival. Beach Boys, and, most recently, Color Me Badd and Ready For the World. These kinds of disputes are more common, and can be more problematic than a band’s name being too similar to another band’s name or another trademark.
Nevertheless, I present important trademark considerations for rock bands and other musical acts. I’ll be using “bands” as a shorthand, but these rules can apply to any musical acts, including emcees and deejays.
Is the name registrable?
Can you register your band’s name? An important consideration is whether it’s likely to be confused with another trademark. That could be another musical act (see the Chameleons). But you could possibly run into problems if your band name mimics another trademark. (See Chicago Transit Authority).
Single words, even simple words, can be registrable as trademarks. Think the Doors, Rush, or All. But choosing a simple, single word isn’t optimal. There’s a much greater chance your trademark is already being used by another musical act (see Mastermind). And a single name can make your trademark more difficult to find in Google or Spotify searches. Reportedly, the band Chvrches chose those that spelling to make it easier to find. On the other hand, unique and inventive names (Flatbush Zombies, Destiny’s Child, Violent Femmes) create more opportunities and fewer headaches.
Band names typically don’t have the same concern that trademarks for other goods or services would. That is, they usually won’t be refused on the basis that they’re merely descriptive or generic. The best example I can think for a band whose name can probably never be registered for that reason, no matter how well-known, is the Band. Most band names, however, are what trademark law calls “inherently distinctive.” They are either suggestive (Metallica, Boogie Down Productions, Beat Junkies), arbitrary (Smashing Pumpkins, Flaming Lips, Red Hot Chili Peppers), or, less often, fanciful Klymaxx, Gwar). A common exception is where the band consists of only of its members’ real names (Simon & Garfunkel; Crosby, Stills, and Nash) which can create more obstacles to registration.
What goods or services?
A trademark registration will only cover the goods and services for which the trademark is registered, and only where the trademark holder uses it for those goods and services. That means you don’t, at least in theory, hold a trademark “in gross.” AKA. You don’t control it for all purposes.
A musical artist or group will usually register their band name and logo trademarks in two international classes: for recordings (Class 9) and live performances (Class 41). For many artists, that’s sufficient protection. You’ll incur more fees for each different international class, and you shouldn’t be registering for goods and services you’re not using anyway.
If you are merchandising, or you have a bona fide intention to merchandise, you can apply to register your trademarks for your goods. Most clothing, like t-shirts or caps, are all part of international Class 25. Make sure you are using the trademark in such a way that the public knows that you are the source. Your registration might be held up by the examiner determines the depiction is merely ornamental or informational. My favorite counter-example is the iconic “This is Not a Fugazi T-Shirt” t-shirt.
Can you enforce your trademark against someone else’s use on things that you’re not selling?
The answer, almost always, is “it depends.” But if your trademark is unique and distinct, you have a better chance, especially if your band name is well-known. Currently, Guns N Roses is suing over Guns N Rosé beer. Darryl Hall and John Oates sued over “Haulin’ Oats” granola.
Who owns the trademark?
It seems like an obvious question, but it’s often overlooked until problems arise. If an individual member of the group registers the trademark for his or her own name, that individual can wield considerable control over it. If the group has formed an entity, it might be wise for the entity – the partnership, LLC, or corporation, to own the trademark rights. Whichever you decide, you want to carefully consider the ramifications, and try to get it right the first time. That leads me to a very critical concern for all musical groups.
Who gets to use the trademark? What happens if someone leaves or the band breaks up?
This can’t be stressed enough: it’s great for a musical artist to register its trademarks. But it’s even better for the artist to have a clear, written, signed agreement between members over who is entitled to use the trademarks. No matter how close and tight you are, no matter how much you think you can agree by handshakes, someone will eventually go their separate way. And bands break up. Then what? Who gets to use that band name for live performances, recordings, or merchandise? And how can they use the name?
These kinds of trademark disputes are among the most common for musical groups. They can be costly, time-consuming, and emotionally draining. Get these agreements in writing early on, and write them as clearly and comprehensively as you can, before you get the record deals and the fame.
Are Your Trademarks Immoral or Scandalous?
You probably know about the rock band the Slants, for their trademark pursuit if nothing else. They convinced the Supreme Court of the United States that the statute prohibiting registration of “disparaging” trademark is unconstitutional.
More accurately, it was Simon Tam, the bassist of the band, who applied to register the Slants band name and was refused, because the name was deemed to be disparaging against Asian-Americans.
At the time, the Lanham Act, the act that governs trademark law, prohibited registration of a trademark that is “disparaging to other persons, or immoral or scandalous.” To make a very long story very short, the Supreme Court held that the restriction on registering “disparaging” trademarks violates the First Amendment.
So if your band name contains a racial slur, trademark registration can’t be denied on that basis. What about curse words? The Supreme Court recently held that those, too, can’t be barred from registration. If your band’s name includes the name “Fuck” or “Shit”, they might be registrable. I can’t tell you, however, that a band name racial slur or curse word is desirable or marketable. Nor is it likely to be so original.
Keep in mind that you are entitled to use your trademarks even if they aren’t registered. Registration provides additional protection and allows for greater enforceability.
A few more general pointers:
- When your trademark is registered, you are then entitled to use the ® symbol in connection with the goods and services for which it is registered. Make sure you do that. You cannot use the ® symbol before the trademark is registered. The ™ or SM symbols are often used for trademarks where registration is pending.
- Whether you like or not, you might have to enforce and police your trademark against uses that will confuse the public. If you don’t, your trademark can be significantly weakened, and sometimes you can lose your rights. It’s often difficult to know what actions you ought to take against potential infringers, as these actions can involve sophisticated legal issues as well as public relations concerns. Avoid personally sending cease and desist letters – talk to a lawyer!
- Your compositions and sound recordings are covered by copyright law, not trademark law.
What Mark J is listening to these days:
Halsey – Manic
Les Amazones d’Afrique – Amazones Power
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