Trademark Registration and the Rocker

THE CONCEPT OF TRADEMARK FOR THE ENTERTAINER

This articles discusses some of the more common problems that arise when musical groups and other entertainers do business under fictitious names as trademarks and service marks, and try to protect these marks for their own use. Such problems include troubles in establishing the proper degree of "use" of the mark, registration for performing and/or recordings, videos and the like, and the difficulty in the conceptualizing of the name as a property right, that can be licensed, bought, sold and otherwise acquired and dealt with as property.

Section 1 of the Trademark Act of 1946 provides "The owner of a Trademark used in commerce may register his trademark...(a) by filing....(1) a written application...(2) a drawing of the mark (3) specimens...." and seems a simple matter on its face. Trademark attorneys and examiners alike know the difficulties in acquiring registrations and licensing, protecting and enforcing associated rights regarding the usual corporate entity that manufactures and sells goods. However, what meaning has this for the musician or performing band? It is even more complex and problematical, not only because the concept is unfamiliar to the entertainer but also because it crosses such a gamut of goods and services that it becomes an endless search for the proper method.

One of the most difficult concepts for most musicians, taken for granted by the manufacturer, is that their fictitious name, logo, the title of an album or video, or even the title of a song may have a value as intellectual property and meaning to the public. It represents the particular sound and quality of their work through their music, television performance, films, videos and live stage performances and can be dealt with in the form of trademarks, service marks, and other properties that have their basis in commerce and use, rather than in the creative matter that most entertainers are more used to.

Musical recordings, books, films and like entertainment "goods" and the associated services of live performances that have a title are not easy to the entertainer to imagine as trademarks. The title of a song, or other work is not protectable as a part of the copyright of the work, so that trademark laws must be used to protect a performer's work from public confusion and possible obscurity.

On the other hand, a musical band has its name but this is not part of the creative efforts of the musicians. It is sometimes also the title of a first album, but it is usually presented as a part of the album graphic art which is drawn by someone outside the circle of the writers and other musically creative geniuses who write and perform the works and songs themselves. This can be shown in the case of several famous groups such as the Grateful Dead, whose logo (skull and roses) was made famous in 1960's rock posters by artists who were not part of the band. This logo is then usually put on promotional devices such as t-shirts, buttons and the like. Thus the entertainer must be carefully counseled at the outset to use and protect the mark(s), and to treat them as other forms of property.

The entertainer may provide a services and/or goods consisting of live performances on stage, in clubs, or stadiums, that may also become recorded (audio and/or visual products) and specially recorded products not associated with the performances (such as a "studio band"). These trademark "arenas" for entertainers other than personal appearances and recordings, include merchandising, endorsements of a variety of products, services and companies (and the rip-off of a performance implying an endorsement), and using the trademark name in many ways to gain popularity. Many legal avenues are available for protection of these intellectual products and names, as well as for other forms of recognition. For example, Bette Midler sued Ford Motor Co. and won based on Ford's use of a "sound-alike" Midler imitation endorsement of their cars. Entertainers provide goods and services that tend to be classifiable under many classes of goods and services. All of these uses must be protected beyond the copyright "bundle" of rights that accompany any work fixed in a tangible medium. This article addresses only the trademark aspects.

The entertainer's trademarks differ from the "usual" case of the seller of manufactured goods. However, the name of a performing group is the same as other trademarks in that it is subject to counterfeiting that can cause public confusion, infringement, and other abuses that could either end or cause serious delay or obscurity to a career before it gets of the ground. If well protected and fought for, and used and re-used a mark can enhance a career that begins to get recognition.

But is it good or advisable to register all of the possible uses of the mark in the Principal register? The PTO seems to lack an understanding of the degree and nature of the goods and services the entertainer might provide, and the case law tends to show this confusion extends to the courts. Therefore, the pattern is that an entertainer has his hat in many classes of services and goods. When they go to register their trademarks they run into several interpretive situations of "use" and "classification" that the PTO has been unable to resolve with any consistency, and might call for legislative intervention to clarify. These problems are part of the trademark law as it has been applied to the music industry, to the music, the songs, and the crazy names of the performers.

In its simplest form, registration of a trademark with the PTO requires filing an application with declaration under penalty of perjury, submittal of a fee (presently $200 per class), five specimens of the mark as actually used on the goods, in connection with the services and a drawing of the mark. The drawing can be typewritten (for registration of the words only) or an actual india ink black and white rendition of the logo, to register the design. The application calls for the applicant to identify the mark, its class, the register (principal or supplemental) and describe how it is used in commerce.

The mark is received, and searched by the PTO examiner. If they find no confusingly similar mark(s) and if it is not rejected on other grounds (including application flaws, or that it is misdescriptive, fraudulent, or other like grounds), then it is published in the Official Gazette, for the public to comment on. If no opposition is filed (or other negative public comment) the mark usually is registered within a year from the date of the submission of the application.

The problems below are those associated with this process including the use of the mark in commerce, how to prove the use to the PTO and for litigation and opposition purposes and the problem of selecting what classes to apply for.

See the Use In Commerce Problem for part 2.