February 05, 2020 Feature

Branding the Band

Peter J. Strand

©2020. Published in Landslide, Vol. 12, No. 3, January/February 2020, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

One of a musical band’s most important assets is the BAND NAME. The band name identifies many aspects of the band—its sound, its look, its musical style, its fashion style, its known songs, its known recordings, its videos, and of course the individuals comprising the band. In other words, the band name is a source identifier for the music the band creates. The band name and often the accompanying band logo that may comprise the band’s brand are the band’s trademarks.

The band name and often the accompanying band logo that may comprise the band’s brand are the band’s trademarks.

The band name and often the accompanying band logo that may comprise the band’s brand are the band’s trademarks.

mspoint/iStock via Getty Images

Trademark Classes for Bands and Musical Artists

Bands or musical artists typically register their band name and/or logo as a trademark or service mark1 in the following three international classes (ICs):

  • IC 009 for sound recordings and music videos;
  • IC 025 for clothing, including T-shirts, hats, hoodies, onesies, jackets, etc.; and
  • IC 041 for entertainment services, namely performances by musical and vocal groups.

The United States Patent and Trademark Office (USPTO) shows no love for one-hit wonders. It will not register a mark for a single title and requires that sound recordings and other creative works, such as books, films, and television programs, be a series of two or more separate works to qualify for trademark protection. The Trademark Manual of Examining Procedure (TMEP), the USPTO guidebook for examination of trademark registration applications, requires a series of sound recordings for the mark to be registered.

Any mark consisting of the name of an author used on a written work, or the name of a performing artist on a sound recording, must be refused registration under §§ 1, 2, and 45 of the Trademark Act, 15 U.S.C. §§ 1051, 1052, and 1127, if the mark is used solely to identify the writer or the artist. Written works include books or columns, and may be presented in print, recorded, or electronic form. Likewise, sound recordings may be presented in recorded or electronic form.

 

However, the name of the author or performer may be registered if:

(1) It is used on a series of written or recorded works; and

(2) The application contains sufficient evidence that the name identifies the source of the series and not merely the writer of the written work or the name of the performing artist.2

The band should be able to demonstrate that a series of more than one single or digital download is released—i.e., made available to the public for purchase, download, or streaming. As a practical matter, this requirement for a series of works means that the trademark registrations for the band’s mark for entertainment services and clothing (and any other goods or services) may issue long before the IC 009 registration for sound recordings. Note that although sound recordings and music videos are both in IC 009, the series must be more than one sound recording or more than one music video. Claiming a series in a single sound recording with a single music video will not suffice.

There are several other classes that may cover other goods that bands often brand with their trademarks. It is not uncommon for bands to expand the reach of their trademark or brand by using it with a wide variety of merchandise, including coffee and beer mugs, posters, stickers, buttons, toys, action figures, guitars and musical instruments, lunchboxes, etc. For example, the trademark registration for BRUCE SPRINGSTEEN, Registration No. 4,454,482, includes the goods and services that bands and musical artists typically cover (i.e., IC 009, IC 025, and IC 041), and also covers posters, photographs, and concert programs under IC 016.

Use and Registration

A fundamental aspect of trademark law is that trademark rights are based on use, not registration. A band must use the band name as a trademark in commerce to secure ownership of the mark. A band will have rights in its name or trademark as soon as the band starts using the mark in connection with its performances. Registration is not required for ownership of the mark. However, before the mark is registered, the band’s rights in the name or trademark may be limited to the geographic area where the band uses the mark, usually the places where the band actually performs. In the internet era, band name use can be global through the band’s website and social media platforms; but use of a domain name or URL is not trademark use for a band’s performances, sound recordings, or merchandise.

It is not unusual for more than one band or artist to have adopted the same band name or trademark. In a dispute, the band who adopted and used the name in commerce first will have primary rights or priority over subsequent or junior users. A junior or subsequent user of the band name may have rights in the geographic area where it uses the mark if the senior or first user has not used the mark in that same geographic area.

The most practical way for a band to secure nationwide trademark rights in a band name is to file an application to register the mark with the USPTO as soon as the name is chosen—even before the band plays a note.3 Registration expands and confirms rights beyond the geographic limitations of actual use and provides constructive notice to any junior user that the senior or first user claims nationwide rights to that trademark. (It is possible that a junior user who adopts the same band name or trademark after the senior user but before the senior user’s application to register the mark with the USPTO is filed will have certain geographically limited rights in the band name or trademark.)

In addition to the nationwide rights that come from registration, registration affords the authority to use the registration symbol ®, the right to claim attorney fees in litigation, and protections against counterfeiting. A registration is a very effective tool to compel takedown of pop-up online stores sites selling band merchandise, especially T-shirts, photographs, etc., without authorization.

Identifying the Owner of the Band Name or Trademark

It is not always clear who owns a band trademark. Bands can be organized in several different ways, from equal partnerships to a single member with hired help to a legal entity. Before preparing an application to register a band name or trademark, identify the owner of the band name. Someone, maybe a band member, came up with the name. The band members may not even agree or understand who owns the name. Be aware that not all band members are equal and not all bands are alike.

When working with a band, consider preparing an agreement for the band members to agree on how a leaving member can use the band name or trademark after leaving the band. For example:

Any Band Member who ceases to be a Band Member for any reason shall have no right, title, or interest in the Band Name, trademark, or logo and, except as provided in this paragraph, shall not perform under or otherwise use the Band Name in any manner whatsoever, provided such Band Members may use the billing “Formerly of [Band Name].”

Application Process and Requirements

After identifying the owner of the band name or trademark, conduct a preliminary or “knock out” search of the USPTO online database to determine if there are any pending applications or subsisting registrations for the same or similar trademarks. Be sure to check for marks in ICs 009, 025, and 041, and in the other classes of goods or services that are in use or will be in use in connection with the band name. Then conduct a thorough online search via an online search engine to determine if the band name or trademark is in use by any artist, band, or other music industry enterprise such as a record label, production company, music publisher, music video, or music TV program, anywhere else in the country. As noted earlier, use rather than registration determines the primary rights in the mark.

Next, determine whether to file a multiclass registration application to cover the sound recordings (IC 009), clothing (IC 025), and live performances (IC 041), or a separate application for each class. The total filing fee is going to be the same ($225–$275 per application filed online). A multiclass registration application can be troublesome if the examining attorney requires more information or refuses registration of one but not all of the classes. This could delay registration of the mark in all of the classes. To move an approved class forward to registration while addressing issues raised by other classes in the application, the applicant can file a request to divide, and for an additional fee the application can be divided into more than one application. This procedure raises the cost of registration and increases the time between application and registration. Thus, a recommended practice is to file separate applications for each class rather than attempting to register all of the classes in a single registration. The total filing fee will be the same whether filed separately or in a multiclass application.

Prepare and file the application to register the trademarks either based on actual use of the mark in commerce at the time of filing the application or on the applicant’s intent to use the mark. If filing a use-based application, the applicant must submit specimens showing the mark in use in commerce in connection with the goods or services covered by the mark. For sound recordings (IC 009), acceptable specimens include: photographs of physical media (e.g., CDs, LPs, 45s) that include the mark; website screenshots showing the band’s downloadable or streamable recordings; and screen captures of the band’s sound recordings available at an online retailer (e.g., iTunes, CD Baby). For clothing (IC 025), submit photographs of the clothing showing the mark with the price and size. The mark must be a source identifier and should be in the collar or on a hanging tag or sticker on the clothing. A band name mark on the front, back, or sleeves of the clothing may be found to be “merely ornamental” by the examining attorney, and the USPTO will refuse to register the mark. For entertainment services (IC 041), acceptable specimens include: tickets showing the mark, venue, date, and ticket price; posters advertising the performance that include the mark, venue, date, and ticket price; and website screenshots of the band’s touring or performance schedule.

The trademark registration process typically takes three to six months for the USPTO to assign a staff attorney to examine the application. The examining attorney then reviews the application to confirm that all of the elements required to register have been provided and that there are no grounds for refusing to register the mark. Grounds to refuse to register include:

  1. The mark is substantially similar to an existing mark or pending application for similar or related goods or services.
  2. The mark is merely ornamental; that is, it is not functioning as a source identifier. A typical band T-shirt with the band name across the front will often be refused because it does not establish the mark as the source of the T-shirt. Placing the mark inside the tab collar where the manufacturing label usually goes will generally suffice. Stickers on the front of the T-shirt or a hanging tag attached to the shirt listing the name of the band, the size, and the price of the shirt usually will be sufficient.
  3. The mark is merely descriptive. A mark that simply describes the goods or services is not registrable. To be registered, marks should be arbitrary and fanciful and cannot merely describe the goods or services. HEAVY METAL BAND for a heavy metal band is merely descriptive and will likely be refused registration.
  4. The mark identifies a person whose consent is required. To obtain a trademark registration for BRUCE SPRINGSTEEN, the applicant had to include the following statement in the application: “The name(s), portrait(s), and/or signature(s) shown in the mark identifies ‘BRUCE SPRINGSTEEN’, whose consent(s) to register is made of record.”
  5. The mark suggests a false connection to a famous mark or person. The USPTO will cite a false connection when: (1) the mark sought to be registered is the same as, or a close approximation of, the name or identity of another person or institution; (2) the mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution; (3) the person or institution identified in the mark is not connected with the goods sold or services performed by the applicant under the mark; and (4) the fame or reputation of the named person or institution is of such a nature that a connection with such person or institution would be presumed when the applicant’s mark is used on its goods or services.4 The USPTO refused to register the mark THE RISING BRUCE SPRINGSTEEN TRIBUTE on the basis that the mark falsely suggested a connection with Bruce Springsteen.5
  6. The mark contains matter that may disparage persons, living or dead.6

After the USPTO examining attorney’s initial review of the filed application, the USPTO will respond by either approving the application to move forward toward registration, or raising an objection or concern that registration should be refused based on one of the above listed grounds.

If the examining attorney finds no grounds to refuse registration or if an initial refusal has been addressed and re-reviewed, the mark will be approved for publication in the USPTO’s Official Gazette. Upon publication, any person or entity that believes it will be harmed by registration of the mark can file within 30 days of publication an objection to registration, or within the 30 days request additional time up to 90 days to decide whether to file an objection. An objection is filed in the Trademark Trial and Appeal Board (TTAB) and proceeds like federal court litigation without any in-person court appearances.

If there are no objections filed, the USPTO will issue a registration. A trademark registration lasts for 10 years, but between the fifth and sixth year after registration, the registrant must file a declaration of current use and a declaration of continuous use of five years to maintain the registration. If those declarations of use are filed and accepted, the registrant must file additional declarations of use between the ninth and tenth year after registration, and every 10 years after that.

Recent Developments

In 2017, the U.S. Supreme Court gutted the grounds for refusal based on disparagement. In Matal v. Tam, the Court ruled that the First Amendment right to express unpopular or nonmainstream ideas trumped the Lanham Act’s prohibition on marks that disparage people.7 In Tam, a rock band comprising all Asian Americans named themselves “The Slants.” The band chose the name “slant,” a derogatory term for people of Asian descent, to “reclaim” the word. The USPTO denied registration of the name on the basis of the disparagement clause, which “prohibits the registration of trademarks that may ‘disparage . . . or bring . . . into contemp[t] or disrepute’ any ‘persons, living or dead.’”8

Simon Tam, the leader of the band, first contested the denial of the trademark before the USPTO attorney who had denied the request and before the TTAB. After these attempts were to no avail, Tam brought the case to the Federal Circuit, where the disparagement clause was found to be unconstitutional under the First Amendment. The government filed a petition for certiorari to the Supreme Court. The issue in front of the Court was “whether the disparagement clause ‘[was] facially invalid under the Free Speech Clause of the First Amendment.’”9 In dismissing all of the government’s arguments, the Court held that the disparagement clause violates the free speech clause of the First Amendment of the Constitution.

The government advanced three main arguments in order to maintain that the disparagement clause was not invalid under the First Amendment. These included: “(1) that trademarks are government speech, not private speech, (2) that trademarks are a form of government subsidy, and (3) that the constitutionality of the disparagement clause should be tested under a new ‘government-program’ doctrine.”10 The Court found that the disparagement clause could not be supported under any of these theories, emphasizing that “national protection of trademarks is desirable.”11

Lastly, the Court addressed the issue of whether trademarks are commercial speech subject to relaxed scrutiny as outlined in Central Hudson. The Court found that the disparagement clause neither serves a “substantial interest” nor is “narrowly drawn” in such a way that it should be afforded relaxed scrutiny, reasoning that the First Amendment affords Americans with the privilege to “express ‘the thought that we hate’” and that the disparagement clause is not narrowly drawn insofar as it “reaches any trademark that disparages any person, group, or institution.”12

Over the years, a number of band names have been refused registration by the USPTO because the mark consisted of or comprises immoral or scandalous matter. Following the Court’s decision in Tam, it is doubtful that the USPTO will refuse registration of a band name on the basis that the mark is vulgar, offensive, immoral, or scandalous.

Truth in Music Advertising

To protect audiences from “imposter bands,”13 more than 30 states have enacted a “legacy artist statute” to limit use of legacy artist band names (in several of these states, the statute is commonly known as the “Truth in Music Advertising Act”).14 These statutes are designed to prevent promoters using band names from presenting performances where none of the performers have any connection to the original artist.

In Illinois, the concert-going consumer is protected by the Consumer Fraud and Deceptive Practices Act, which provides:

(a) As used in this Section:

“Performing group” means a vocal or instrumental group seeking to use the name of another group that has previously released a commercial sound recording under that name.

“Recording group” means a vocal or instrumental group at least one of whose members has previously released a commercial sound recording under that group’s name and in which the member or members have a legal right by virtue of use or operation under the group name without having abandoned the name or affiliation with the group.

. . . .

(b) It is an unlawful practice for a person to advertise or conduct a live musical performance or production in this State through the use of a false, deceptive, or misleading affiliation, connection, or association between the performing group and the recording group. This Section does not apply if:

(1) the performing group is the authorized registrant and owner of a Federal service mark for that group registered in the United States Patent and Trademark Office;

(2) at least one member of the performing group was a member of the recording group and has a legal right by virtue of use or operation under the group name without having abandoned the name or affiliation with the group;

(3) the live musical performance or production is identified in all advertising and promotion as a salute or tribute;

(4) the advertising does not relate to a live musical performance or production taking place in this State; or

(5) the performance or production is expressly authorized by the recording group.15

It is not clear from the statute if the use of a legacy name which is authorized by the owner of a federal trademark registration who is not the performing group is permissible.

Conclusion

The band name or band trademark is a significant asset of the band. It establishes and identifies the band’s brand, including its sound, appearance, discography, song catalog, and history. It is an asset that can be protected and exploited for longer than the band’s copyrights and can be licensed or sold so the band brand can continue after the expiration of the band members.

Endnotes

1. Trademarks for goods and service marks for services are both referred to as trademarks.

2. U.S. Patent & Trademark Office, Trademark Manual of Examining Procedure (TMEP) § 1202.09(a) (Oct. 2018) (citations omitted).

3. Registration applications may be based on actual use of the mark in commerce or based on the applicant’s bona fide intent to use the mark in commerce in connection with the goods or services contemplated.

4. TMEP, supra note 2, § 1203.03(c)(1).

5. “Registration is refused because the applied-for mark consists of or includes matter which may falsely suggest a connection with Bruce Springsteen. Although Bruce Springsteen does not appear to be connected with the services provided by applicant under the applied-for mark, Bruce Springsteen is so famous that consumers would presume a connection.” Office Action, U.S. Trademark Application Serial No. 77/751,396 (filed Sept. 9, 2009).

6. The Tam case, 137 S. Ct. 1744 (2017), discussed below, does away with the disparagement grounds for refusal to register a mark.

7. 137 S. Ct. 1744.

8. Id. at 1765 (Kennedy, J., concurring in part).

9. Id. at 1755 (majority opinion).

10. Id. at 1757.

11. Id. at 1752.

12. Id. at 1764–65.

13. Daniel Ralston, The True Story of the Fake Zombies, the Strangest Con in Rock History, BuzzFeed (June 2, 2016), https://www.buzzfeed.com/danielralston/the-true-story-of-the-fake-zombies-the-strangest-con-in-rock.

14. The following states have enacted legacy artist statutes: Alabama, Arkansas, California, Colorado, Connecticut, Delaware, Florida, Indiana, Kansas, Maine, Maryland, Massachusetts, Michigan, Mississippi, Nevada, New Hampshire, New Jersey, New Mexico, New York, North Carolina, North Dakota, Ohio, Oklahoma, Oregon, Pennsylvania, Rhode Island, South Carolina, South Dakota, Utah, Virginia, Washington, and Wisconsin.

15. 805 Ill. Comp. Stat. 505/2XX.

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Peter J. Strand is a partner at Mandell Menkes LLC, where he represents content creators and providers in various transactional and litigation matters in the entertainment industry. Before becoming an attorney, he played and recorded as a full-time touring musician with several bands.