By L. Kevin Levine
What’s in a name? Everything! Although most people recognize the power that a strong brand can carry, few take the time to consider what a brand really is. The term “brand” is commonly used interchangeably with the word “mark,” which Black’s Law Dictionary (7th ed.) defines as “[a] symbol, impression, or feature on something, [usually] to identify it or distinguish it from something else.” True, a mark is used to identify goods and services, but at its core, a mark represents all of the goodwill associated with a particular company, product, or service. Unfortunately, a mark can also conjure up the negative vibes that one might associate with the mark’s owner. But let’s not think in terms of negatives.
Most successful companies recognize that their trademarks and/or service marks (as well as other forms of intellectual property or “IP”) are among their most important and valuable assets. I encourage bands, individual artists, and writers — particularly those who develop their own labels and/or music publishing companies — to do the same. The building of a brand takes time and requires careful planning. Therefore, I always recommend consulting legal counsel who is versed in IP law well before the launch of any new brand (and yes, this includes the adoption of a band name, hence the title of this post), as clearance and registration issues are rarely as straightforward as they may seem.
Far too often, a band will begin performing under a particular name without first taking steps to clear the mark. In most cases, the band will labor in relative obscurity for a number of years, flying under the radar of any other bands that have adopted the same name (unless the other band undertakes the highly advisable practice of conducting periodic vigilance searches to detect and prevent the unauthorized use of its name — more on this topic in a later post). However, for those talented and lucky few, opportunities can arise that thrust the band into the regional, national, or even international spotlight. Today, with the ease of establishing an Internet presence, even bands that have not yet seen any appreciable commercial success can place themselves on the world’s stage within a matter of minutes.
The failure to clear a band name before using it in commerce can come back to haunt a group, because, at least under United States trademark law, one obtains priority in a mark by being the first to use it in commerce, rather than by being the first to register the mark. Thus, a band that has been using an unregistered name continuously for the past five years on the hotdog stand circuit in “nowheresville” could potentially force a platinum-selling band that has registered and used the same name — or even a confusingly similar name — for only four years to change its name. This is an oversimplification of the issue, as courts do have rather liberal power to fashion remedies on a case-by-case basis, including the carving out of a party’s right to use a mark in a particular geographic territory.
Although it is impossible to be 100% certain that a proposed use of a mark will not infringe upon an existing use of the same or a substantially similar mark, one should always take steps to limit potential exposure to infringement actions. Indeed, even if a challenged mark is ultimately deemed non-infringing, the legal expense to get to that point can put most bands out of business. Seek help early from a lawyer who deals regularly with the clearance and registration of trademarks and service marks.
Also, I know this will come a shock to you, but there is a great deal of disinformation on the Internet. (I’ll give you a minute to compose yourself.) There are websites that purport to reveal the inside scoop on the techniques that IP lawyers employ when clearing a trademark or service mark, some going as far as to state incorrectly that lawyers only check proposed marks against the online registration database maintained by the United States Patent and Trademark Office (the “USPTO”). Although most lawyers will begin their searches with the USPTO database, as it is often the quickest way to rule out a potentially infringing mark, this is only the starting point.
I always recommend using a two-step clearance process. The first step is generally termed the “knockout” search, which incorporates searches of the USPTO records, websites, and other databases. Assuming that the knockout search comes back clear, many lawyers — including yours truly — will then employ the services of a third-party search organization for a much more comprehensive search in those geographic territories in which mark is to be used. This search incorporates the previously mentioned sources, as well as business filings, industry directories, and other proprietary databases. Obviously, this is a more expansive and, frankly, more expensive approach to the clearance of a mark. However, I can almost assure you that the extra expense pales in comparison to the defense costs associated with a typical trademark infringement action or, even worse, the amount of an adverse judgment.
I will not mention names here, but I have spotted multiple non-lawyer, Internet-based companies that purport to offer the same level of service that you can expect from a qualified intellectual property lawyer, only at “cut-rate prices.” Having had no personal experience with any of these companies, I will reserve any comment on whether they can actually deliver what they promise. However, I do suggest that you do your homework before engaging any company — or even any law firm — to perform IP services. Many qualified lawyers will offer some services on a flat-fee basis, as opposed to billing by the hour (e.g., federal trademark or service mark registration). A flat-fee structure generally translates into cost savings for — and certainly less nail biting by — the client.
It is also worth mentioning here that bands should also discuss and reach an agreement as to who owns the band name (i.e., the mark). As discussed in a previous post (see “Join Together With The Band (And Get It In Writing)”), band name ownership is one of many issues that should be handled in a written band partnership agreement if the band is operating as a partnership or in a shareholder or operating agreement if the band is formally organized as a corporation or limited liability company, respectively.
To sum up, although your band’s primary business is making great music, you should consider the management of its IP assets, including the band name, to be an important part of that business. Deal with clearance and registration issues early and with the advice of legal counsel of your choosing. Do not run the risk of having to adopt a new name after spending valuable time and resources building your initial name, or worse, having to change names and pay damages to another party because of an infringement.