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A trademark is a source identifier that establishes and protects a brand through the use of images, words, or designs to distinguish that brand from its competitors. Part 1 of this 4 part series, “Music Branding 101 – Putting the ® in Band” discussed the importance for a band to create, develop, and sustain its brand identity. Bands are brands, and by establishing brand recognition through use and registration, they distinguish themselves from other bands. With brand recognition, a band can more easily tap into new revenue sources (in part, by way of licensing and endorsement deals). Then, Part 2 discussed the importance of a band to apply for and obtain federal trademark registration in association with the goods and/or services offered by the band. Federal registration protects the band from other competing uses of its brand – in some cases protecting against other, non-music uses. In this section, we will discuss the steps to obtaining a federal registration for a band name. Let’s take the emo hipster, and totally hypothetical, band “The Lemon Macaroons” as our example.
In order to successfully obtain trademark registration for “The Lemon Macaroons,” the name has to first, exceed the threshold of distinctiveness established by the U.S. Patent and Trademark Office (USPTO). In order to receive federal protection, the band name cannot be too descriptive or “merely generic” of the goods and services that the band provides.
Second, the mark cannot create consumer confusion with a mark that already has protection or is in the process of receiving protection. If another band already uses “The Lemon Macaroons,” or something similar that is likely to cause confusion, the USPTO may deny “The Lemon Macaroons” application. The USPTO wants to ensure that consumers do not confuse the source of some goods and/or services with the source of other goods and/or services. Finally, the band should be using or have an “intent” to use their name in interstate commerce (within 2 or more states) in connection with their goods or services. Without use in interstate commerce, or a clear intent of the band to use their name interstate commerce, the USPTO will not register the trademark. In determining whether “The Lemon Macaroons” qualify for federal registration, our firm takes a six-step process – from initially selecting a name to receiving the registration certificate in the mail.
Step 1: Selecting a Name (or analyzing a name already in use)
For our hypothetical, the “The Lemon Macaroons” have already selected the band name and are using it in connection with their music related goods and services. They’ve designed cool merchandise with the band name on it – t-shirts, hats, bumper stickers, and concert posters, to name just a few. The band also has a strong Internet presence, with a constantly updated website, as well as Twitter and Facebook accounts. Finally, they’ve recently returned home to Hipster Land after touring the Midwest.
The first step of the trademark process ensures that the band name meets the threshold of distinctiveness – being neither generic nor descriptive for the goods and/or services provided. A generic mark is the common name for a good or service, such as tissue paper. A descriptive mark describes elements of the goods or services, such as the soft paper company for tissue paper. Because the band does not and will not sell actual, delicious lemon macaroons, it seems unlikely that such a band name would fall under the category of merely descriptive for the goods or service provided. Instead, “The Lemon Macaroons” provide CDs and live shows of heart melting, sugary folk-dance-rock-pop. Calling the band name “The Lemon Macaroons” “generic” seems unlikely as “The Lemon Macaroons” almost never signifies any “band name” generically in the way that “Thermos” might signify any thermal food container. A merely descriptive or generic mark will probably be denied federal registration.
Step 2: Performing a Comprehensive Search and Analysis
Step two of the registration process examines whether the band name may cause a likelihood of confusion with any prior uses of the same or similar mark—those already registered or applied-for with the USPTO or those solely in use under the common law standard.
A company that specializes in trademark searches is hired to search for all federal trademarks (registered and applied-for), as well as all state and common law uses of the same or similar name. Simply searching the USPTO site for federal registrations will not reveal state or common law uses. If the search results revealed prior uses that may be confused with the band’s use, we would then explore other names or ways to distinguish your name from those prior uses.
Step 3: Identify Use or Intent to Use
If it is clear that “The Lemon Macaroons” is not a merely descriptive or generic name, and there are no other prior uses that may cause concern about proceeding with the band name, it is important to identify whether the band is actually using or intends to use the mark sometime in the future. For Actual Use, the band needs to use their name in connection with the goods or services provided in interstate commerce. Interstate commerce use means that the band has provided its goods or services in more than one state, whether that means by playing shows on a multi-state tour or selling its recordings and merchandise in multiple states. If the band has yet to actually use its name in multiple states, then it can file an Intent-to-Use application. An Intent-to-Use application locks in a priority date that precedes the Actual Use date. The band will want the earliest date possible because this date will become a key issue if someone alleges trademark infringement. Whoever files first will probably win their case. Since “The Lemon Macaroons” already use their name in interstate commerce, an Actual Use application should be filed. If, however, “The Lemon Macaroons” had not begun using their name in interstate commerce, their attorney would file an Intent to Use application. This is important because federal protection begins with the date of filing, and not the date of registration.
Step 4: Determine Class(es) & Draft Class Description
Just because one has a federally registered mark in a band name, it does not mean that no one else can use that mark. Federally registration only extends as far as those particular goods and services for which a band receives registration. For example, if a bakery wanted to call and receive trademark protection in “The Lemon Macaroons,” it could probably do so as long as the goods described in its class descriptions differed enough from the goods described by “The Lemon Macaroons” so as to avoid consumer confusion over the source of the goods.
The Trademark Act recognizes forty-five (45) classes of goods and services. Of those forty-five, class nine (9), “Electrical and Scientific Apparatus,” would cover the CDs and LPs that the band puts out under the name “The Lemon Macaroons.” Class twenty-five (25), “Clothing,” would cover the t-shirts and hats that the band sells at its live shows. The band also provides a “service” of a live performance. The live performances that the band provides to the public would fall under service class forty-one (41) “Education and Entertainment.” For all of these goods and services, “The Lemon Macaroons” need to have their attorney draft up specific descriptions.
Because federal protection of “The Lemon Macaroons” brand will only extend as far as the specific goods or services that “The Lemon Macaroons” provide and describe on their application, the class description for each good or service is very important. If the description is too narrow, then “The Lemon Macaroons” might not receive the scope of protection they need to firmly establish their brand. If the class description is too broad, then the USPTO will probably deny the application. An entertainment lawyer will draft “The Lemon Macaroons” class descriptions for them as they will want a lawyer with experience in drafting for the of goods that they provide.
Step 5: File Trademark Application
If the band makes it to this step, a trademark application should be filed as soon as possible.
Step 6: Corresponding with Trademark Examiner
Registration usually takes twelve to eighteen months from date of submission through registration. Once submitted, a trademark examiner is assigned to review the application and make determinations on whether to approve it. During this time the trademark examiner might have follow up questions about the application or make a preliminary denial that requires an official response. Our firm handles all communications with the trademark office and keeps you informed about the status of your application throughout the process.
In the last part of this series, Putting the ® in Band, we will look closely at the classes most commonly applicable to musical artists and those promoting music-related goods and services.
Written by Nadia Makki, Legal Intern