Choosing a band name, or for you label or even a business name such as for your publishing companies can be quite diffucult as the last thing you want to do is to infringe on a registered mark and have to STOP all of your work and start over.
First, we’ll discuss choosing a band name. Remember that you must have a unique name or you are going to cause confusion in the market place. And that is indeed the crux of Trademark Law. Under the Federal Lanham Act – the first to use a name in commerce has the right to use the name as long as it’s not geographically descriptive (Nashville Music Band) or other tests that are too many to list here. Your best bet is to GOOGLE the name, then check on iTunes for a band that’s similar, then check with a Domain Registrar, and do as much research as you can. The main thing is that you don’t want to cause confusion in the market place. In fact Trademark is NOT set up to protect the OWNER of the mark but to protect the consumer as to the origin of the goods or services.
Case in point, my band sometimes called “The Cowboy Killers” has been using that name for almost 20 years. We don’t play under that name exclusively but were for sure the first to use it in commerce. Then a few bands have come and gone that were using that name as I found them on My Space, etc. But I’ve owned “Cowboy Killers Music” (ASCAP) since the early 1990 and I’ll get back to Publishing names later. Be that as it may, a band from Germany comes along and they started to use the very name. I sort of let it slide as I haven’t toured the UK or the Continent for a very long time and I figured it wouldn’t hurt as long as they STAYED over in Europe but now they have songs on iTunes and Rhapsody listed MY SONG “Hold Back the Night” but put THEIR album cover as the cover art. That kind of got my attention. Since I never filed for a FEDERAL TM – which can take up to SEVEN years for the name to clear – I didn’t think it was worth the time money or effort. But at least under the Lanham Act – you can get an injuction. Should I? Well, I’ll give it some time, bands come and go. But I do own the name www.thecowboykillers.com while this OTHER band is using www.thecowboykillersmusic.com – and of course, they can’t use “The Cowboy Killers” as a fan page on FB as I’ve already got that – but they are using that name on My Space.
I could get an injunction or I could just sell them the domain for a reasonable price and to compensate me for having to do a TOTAL SITE redesign under a different name. But I try not to hurt other musicians or cost them time and money – but at the same time, they are costing me money and time as well – we’ll see how it plays out. But for now I’m taking the moral high ground.
Now on to choosing a Publishing Company name – which is MUCH easier! If you register with ASCAP, BMI, or SESAC they basically do all the work for you. They’ll tell you how many names are similar which doesn’t mean they make a TM decision as to whether or not there’s another name that’s similar or could cause confusion in the market place – but it’s a start. Because after all, if you sign up with a licensing company you ARE in the same business, class of goods, etc. You publish music! But you can still file for a STATE of FEDERAL TM – state being much cheaper and takes less time but each state doesn’t necessarily check for FEDERAL TM’s. So you should check with Thompson and Thompson or other services to make sure that you are clear and this is certainly true of a record label – as most people own their own labels. Just remember that only certain types of marks are not eligible for Trademark whether they be a ® (fior GOODS) or Service marks or both. Since most labels provide goods and in many cases services you should file for both! Just remember that if you are first to use the mark in commerce you have the right to get a FEDERAL or STATE TM but you can also just put TM or SM next to the name, logo, phrase that you are using and that at least gives you injunctive relief (you can make the other company STOP using your name) but that can get expensive if they don’t. IF you have a perfected mark (you’ve filed a FEDERAL MARK) you can then get statutory damages, injunctive relief and MORE.
I’ll give you a brief example of a former client – they were using the name (Can’t say it here) and there was another band on a major label that even admitted that they knew about the other band but used my client’s name anyway. Needless to say – we were able to make them pay a TON of money to KEEP their name and my band would stop – but this second band had invested a TON of money along with the label to develop that name. But here’s the funny part – (keeping the names out to protect anyone that may be upset about this) the LABEL is the one that chose the name but the ARTIST/BAND had to pay the money for the infringement or rather the label paid it – but took it out of their recoupment from record sales, etc. Which is really insane – the label messed up – but wouldn’t pay for it! of course, the band could have sued the label but that’s like asking to get dropped. If they sued the label everything would have gone south! And that’s just how fair the labels are! NOT FAIR at ALL! Hence why if you’re a budding artist start you own band, start you own publishgin company and start your own Record Label – you can do all that the majors do and probably better except you won’t have the labels money – but since the label pockets aren’t so deep anymore it won’t matter. Just keep working at your art, your music and get all your ducks in a row and if you can bring it live, put out a few indie records and gather a following THEN the major labels may be interested and you’ll at least have a good negotiation position. If you haven’t done all you can to develop the band BEFORE you pitch you could get lucky and get a deal – but it won’t be a good one. In fact, you’ve got a better chance of being struck my lightning. But if you have a pretty decent history, have a lot of songs, are developed enough and have a pretty decent fan base, then you could get a major deal and you’ve got more negotiation position and if you’re really lucky – then you get ALL the labels interested and you could be lucky enough to get a bidding war.
But before any of that happens, make sure you have all of your business names *(band name, pub, and Record Label) in order and that your not infringing on some other band or labels name!
SM @ MSO
(This is NOT legal Advice - please check with an Attorney in your town)
