Trademark Registration and the Rocker, part 2
The Use in Commerce Problem

(C) 1989, 1996 Green & Green

What of the many types of intellectual property that a musical group generates ever becomes sufficiently "used" for purposes of proving sufficient use for registration? Would the uses that might qualify for registration be provable in Opposition or Litigation? Perhaps with the new Trademark Law Revision Act of 1989 (TLRA) some needed change and hope is in sight, barring interpretive problems of the new term, "bona fide intent to use" as opposed to the 1946 Act's rules surrounding actual use in commerce, the extent and strength of the use. Generally, the rule prior to November 16, 1989 is and has been that the applicant must have actually used the mark in connection with services or on goods or in or on their containers or displays in interstate or international commerce to qualify it as used, and then to register it with the PTO.

The new rules of practice which define the "bona fide intent to use" as including "a required showing of ongoing efforts to make use of the mark in commerce that may include......research and development...manufacturing activities...steps to acquire distributors..." will make it different for the entertainer to obtain registrations. Use on the WWW as for example, in a new web site, could qualify as a use in international and interstate commerce. This use may, however be limited to the use of the mark IN A SITE. This use is usually for public sampling of music, downloadable songs and to order copies of a CD or Cassette via e-mail ordering or an 800-number. Such use may restrict the user to actual site uses, though this author believes it would qualify as advertising use in interstate commerce, provided the use is not illegal and it otherwise qualifies a service mark as being used.

Whatever mark is used in "commerce" the degree of use is usually a major issue for the entertainer getting started. If an application is based on actual use, the dilemma becomes that the mark needs to be fully protected against another usurper while the use must be enough to allow defensible registration. If it is used, when is it registrable as a service mark based on use? THE TLRA, though it allows registration of a proposed unused mark, it also has a new and more rigid definition of "use", when an application is based on TLRA Section 1(b) "Bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark...deemed in use in commerce when...(1) on goods when ..."

Can a performer "gig" in California, then decide to register his mark with PTO and book to perform in Reno, in order to obtain protection? The new definition in TLRA seems to say that, no, he cannot, at least if the performer wants to file an affidavit of Intent to Use. Another interesting point is whether the use of the entertainer's name on a WEB site is enough of a "use", and the answer to this one seems to be that IF the site allows for a sampling of the music, video or other art, and allows the user to download it, then it might be a "use." If the WWW site only advertises, per se the music, then it might only be enough of a "use" for retail sales, in class 42 (misc. services) or other class, but NOT class 9.

This may be possible, under the old (but still valid) declaration of actual use. One might explain to the PTO examiner that use in one's home state is "interstate" in nature. One might cite such facts as the venue being located on a major interstate highway; licensed by an interstate commerce agency (such as the performing rights societies), and like arguments "make it" a use "in commerce." But this might not be good enough to withstand opposition and litigation. The information superhighway is certainly an interstate and international use.

Under the "old" definition, applicable until November 16, 1989, and then still applicable (presumably) to new applications based on actual use, the mark may be considered as "used" in commerce if it was (a) "placed in any manner on the goods or their containers or the displays...and the goods are sold or transported in commerce...(b) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, OR the services are rendered in more than one State...". Thus a use such as mentioned above, on only one other state to get the "interstate commerce" might be registrable, as might a "use" where the entertainer performs in venues that in some way affect commerce that is regulated by Congress. This could happen where the venue is fed by an interstate highway, serves food that was transported in interstate commerce and pays a Performing Rights Society for the privilege. After November 16, 1989 this would no longer suffice and in any case might not withstand opposition, litigation or other action that would test the sufficiency of use, not just for registration (a somewhat lesser standard), but forever, and to allow the mark to become "incontestable" after 6 years of continuous use. The best advice is to avoid this minimalist use approach and perform in venues that span at least two states on a regular basis for some time before alleging actual use in commerce.

An application based on TARA Section 1(b), however, might be "bona fide use" if the performer seeks distribution by contracting with a licensed talent agent. Perhaps the acts of seeking "distribution" of the performances, and contracting and using a personal manager to do the necessary steps for an "ongoing effort" of "research and development" into the particular market for the entertainer might be "enough" bona fides for proof of intent to use.

If this isn't sufficient R&D in this business, what else could be. Of course the producer contract could provide that the producer will develop the artist's "sound" and try to make it marketable; another degree of intent to use that should prove sufficient to show intent to use. Such manager or producer functions as "shopping" the performance, recording, film, book and the like could, perhaps, show the necessary intent to use the mark. Again, the cautious practice is to avoid any minimum and go for solid, well documented uses, and not rely on intent if there is any question.

Next- THE CLASSIFICATION ISSUE