Disclaimer: This information is for educational purposes only and is not legal advice. Please seek an attorney for legal advice.
Like a grocery store, retail store, or a coffee shop, being a musician or an artist is a business. Therefore, musicians and artists need to legally protect themselves just like a business does. During the last entertainment law feature we spoke with entertainment and intellectual property lawyer at Meehle and Jay Business and Entertainment Law in Orlando, Florida, Davey Jay, about the top five copyright misconceptions. Now the rockstar lawyer is back to discuss trademarks with us.
Davey provides us with critical information about the fundamentals a musician needs to understand about trademarks, including benefits of registration, kinds of trademarks, whether to copyright or trademark a logo, and whose job it is to register.
What is a trademark?
Trademarks, like copyrights, are a form of protection; a “source identifier.” Copyrights protect art, not names, titles, or short phrases. Whereas trademarks protect names, titles, short phrases, and slogans that help consumers identify the source of the product or service. “The purpose of a trademark is to prevent unfair competition, such as someone else using a name/logo/slogan that is so similar to yours that it causes confusion,” states Jay. “One of my clients was in a trademark dispute with another band because they were using the same name and it caused my client’s fans to buy tickets to a show thinking my client was performing, when it was actually the other band.”
There are different variations of trademarks, including word (“standard character”), design (logo), packaging design (Coke bottles), trade dress (distinctive “look and feel” characteristics of a business, such as the minimalist look of the Apple Store), and sound (MGM lion roar and THX deep note). “The key to those being protectable by trademark is that they are ONLY used to identify source,” states Jay. “So, while a jingle (the three NBC notes) may be a trademark, a song by an artist that is not used consistently to identify a brand is generally not.”
How do I register a trademark?
Unlike a copyright, which can more easily be done by an artist themselves, trademarks are much more involved and require much greater attention to detail to register properly, so it’s best to use an attorney if you’re looking to register your mark. Before registering or even using a trademark, however, it is critical to “clear” the mark to make sure you’re not infringing on someone else’s rights. “Because of the existence of common law marks, simply searching the USPTO database is not sufficient,” states Jay. “The standard for trademark infringement is ‘likelihood of confusion,’ so marks don’t have to be identical to be infringing. The dispute between Disney and Deadmau5 is a prime example."
Trademark registration is very involved because of the various classes that one can be registered under with the USPTO. If you want your mark to be properly protected and registered, then you must choose the right class. “There are 45 of them, and choosing the right class is critical to properly registering a mark (and part of the reason why using an attorney to do so is a good idea),” states Jay.
What are the benefits of registering a trademark?
Aside from preventing unfair competition, the benefits of registering your trademark are that they provide better protection than “common law,” as most states offer. By registering your trademark with the United States Patent and Trademark Office, you’re essentially “showing off the stick you can beat people with,” states Davey. “Registering a mark with the USPTO entitles the mark owner to an array of remedies that they would not have otherwise - the court can order that the mark owner be awarded the infringer’s profits.”
Furthermore, the registration through USPTO allows the U.S. Customs to confiscate infringing goods at the border. Through a treaty process called the Madrid Protocol, your trademark registration allows for international protection.
What’s the duration of a trademark?
The duration can vary. As long as the owner is using the mark in commerce, then it’s still protected. However, the owner can abandon the mark, and after three years of not using the mark, it can be presumed that it has been abandoned. “A registration with the USPTO only lasts 10 years, but can be renewed as long as it’s being used in commerce,” states Jay. “If a registration is lost, it does not mean that there is no trademark protection, because it just defaults to being common law if its still being used in commerce (the Washington Redskins are an example of that).”
What should I keep in mind when working with a graphic designer?
When you’re working with a graphic designer, there are a few important notes that you should keep in mind in order to protect yourself. It’s imperative that you have a contract with the graphic designer to limit your liability and compensate you if their design infringes someone else’s work and are sued and that the copyright for that design transfers to you.
If the graphic designer’s mark infringes upon someone else’s trademark, then the ramifications can be detrimental to your business. So much so that it puts you out of business and in a devastating amount of debt. “One of my clients first came to me when he received a demand letter for trademark infringement,” states Jay. “He had no idea there was anyone else using a similar mark, but in fact, there was, and since they were first, they held the trademark rights, not my client. He not only had to give up his URL, but throw away all of his merch and products that bore the infringing mark, and all marketing collateral (signs, banners, etc.). It was a massive loss of money and it put him out of business.”
Like a grocery store, retail store, or coffee shop, being a musician is a business. If you’re a musician and are serious about your craft and art, then you should take the necessary steps in protecting yourself, brand, and image through copyright and trademark registration. The digital age and modern technology has made everything much more accessible; therefore, taking the proper precautions is important in ensuring that you save yourself a big headache (or even losing your entire business, brand, and all of your money!) in the future.