Agreeing on a band name can be painfully difficult.
Growing up in a series of bands with close friends — who seemed to agree on virtually everything else — I was shocked by how long it would take us to see eye to eye on a name. Once we settled on a name, we would scramble to see if it was available only to find that someone beat us to the punch. Crushed, we would start the process all over again.
Can you relate?
We all put so much effort into crafting the perfect band name because we understood the importance of this element of our branding. Having a memorable name that expresses something about your group is a critical step toward building a following and a lasting career.
Unfortunately, though, some groups run into trouble. If you discovered another band starting using your name, what would you do? Would you dig in your heels and fight or abandon the name you love?
If you are anything like me, you would do whatever you could to stop them. After all, isn’t your band name — that name you worked so hard to find — worth fighting for?
Imagine the consequences if you don’t: the fans you’ve made through touring and selling records will be totally confused and potentially lost if this copycat grows in popularity, leaving you back at square one. This is a problem that needs to be addressed and a trademark registration is one of the most powerful tools you can have to resolve the issue.
WHAT ARE THE BENEFITS OF TRADEMARK REGISTRATION?
Federal trademark registration benefits include:
1. Nationwide Protection of Your Band Name
Registering your trademark through the US Patent and Trademark Office (“USPTO”) is the most efficient and effective way to protect of your band name across all 50 states.
While some trademark rights are acquired simply by using your band name in commerce (e.g., selling music, performing, etc.), those rights are generally limited to the geographic area in which your business in reaching. A mark on the USPTO’s principal register, however, is given nationwide priority, a feat that would likely take years for any up and coming band to organically acquire, if ever.
2. Stop Knockoffs and Copycats
Registered trademarks have the power to stop dishonest competitors from diluting or tarnishing your band’s good name.
3. Deters Would-Be Infringers
This benefit alone is worth the cost of registration. The Federal Trademark Register is a formal publication maintained by the USPTO. Show the world that you assert ownership over your band name by including your mark on this register.
When other bands are searching the trademark database before adopting a new name, your registration will appear. Most people will do almost anything to avoid a lawsuit and your presence in the official register could save you thousands in litigation costs and attorneys’ fees down the road.
If another band files a trademark registration application seeking a mark that is confusingly similar to yours, the USPTO will usually refuse their application.
4. Use of ® (encircled “R” symbol)
Only marks on the principal federal register are allowed to use the the ® symbol.
This symbol puts the world on constructive notice that you possess an exclusive right in your band name. This helps prevent infringers from claiming an innocent infringer defense. The symbol also signifies your intent to protect your trademark, which will deter those who wish to avoid a potential lawsuit.
5. Triple Damages for Willful infringement
If your registered band name is willfully infringed, you may be able to recover a money judgment for triple the amount of your actual damages. In other words, the penalties for dishonest copycats of your trademark are severe.
Also, you may even be able to force the infringer to pay your legal costs and attorneys’ fees.
6. “Incontestable” Status
Your registered trademark may be deemed “incontestable” after a period of five consecutive years on the federal register with continuous use of the mark, subject to a few exceptions and provided certain conditions are met.
Start the five-year clock now to make your band name “incontestable.”
7. Domain Name Protection Against Squatters
In the event domain names that infringe your registered mark are improperly squatted on, a federal trademark registration provides standing to bring an action that can force the infringing site to be shut down.
8. Stop Counterfeit or Gray Market Goods at the U.S. Border
The owner of a federal trademark registration can record their registration with US Customs to enlist the help of US Customs Service officers to stop gray market or counterfeit goods at the border. For example, if someone was trying to import fake copies of your music or merch, your trademark registration could help put a stop to it.
9. Protection Can Last Forever. Yes, forever.
U.S. trademarks can last in perpetuity, so long as your registered band name is continuously used in commerce, defended against infringement, and the required maintenance filings with the USPTO are timely filed. In other words, as long as you are continuing to play gigs, sell music and merch, and you defend your trademark in the event it is challenged, protection of your band name will last as long as you do.
Please be advised there are required filings with the USPTO due every few years to maintain your registration with the USPTO, these include Section 8 Declarations of Use between the 5th and 6th year after registration and Combined Section 8 Declarations of Use and Section 9 Renewal Applications between the 9th and 10th year, as well as renewal applications every ten years there after. Please refer to the USPTO’s website for more details on trademark registration maintenance.
Sounds Good But How Much Does It Cost?
Registration fees are currently as little as $275 for one trademark in one international class of business. Most bands should consider registering in three international classes: Class 9 for CDs, DVDs and other digital recording media; Class 25 for t-shirts and other clothing; and Class 41 for entertainment services. If you are curious to see what other options there are, click here for a more complete list of international classes.
I understand this is not inexpensive, particularly for those who haven’t made it out of their garages yet. If cost is an issue, you can alway register in one class now and pick up the others when it makes financial sense to do so. That said, if you are a professional group whose primary source of income is music, you should make this a priority.
Most trademark applicants hire an attorney to assist them. Attorneys typically charge somewhere in the range of a few hundred dollars on up to conduct a trademark search, draft your application, file it with the USPTO, and address any Office Actions (i.e., follow up issues with the USPTO regarding your application).
However, hiring a lawyer is not the only approach. With a little training you can file your own trademark and potentially save hundreds or even thousands in attorneys’ fees. Sign up for my newsletter to receive free tips on preparing your own registration application to trademark your band name and much more.
When Should You Trademark Your Band Name? Now.
There is no benefit in delaying. In fact, you may lose the opportunity to be first to file a registration if someone snatches up your band name before you do.
I’d love to hear your thoughts in the comments below. Are you in a band? If so, what’s your group’s name? If not, what’s the most ridiculous band name you’ve ever heard?
Take the first step in protecting your band’s most valuable asset — its name — now by subscribing below for free updates about my future posts and offerings.
Trademark is a complex area of the law that is commonly misunderstood and vastly underutilized by many creative entrepreneurs. For more information, I encourage you to read my other articles:
- Avoid These Common Trademark Application Mistakes
- Supercharge Your SEO with Trademarks
- Business Name Ideas – Read This Before Naming Your Company
*Ian Gibson, Esq. is an attorney licensed to practice in the state of California. This article is for informational purposes only and is not intended to constitute legal advice. Visiting iangibson.com does not create an attorney-client relationship. This material may be considered advertising under applicable state laws. Copyright 2013 Ian Gibson.