28 April 2022

Jam Brands: Why Bands Should File For Federal Trademark Registration

Arnall Golden Gregory


Arnall Golden Gregory
Consumers do not associate the names Phish, Grateful Dead, and Moon Taxi with an animal, a scary movie, and a spaceship.
United States Intellectual Property
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Consumers do not associate the names Phish, Grateful Dead, and Moon Taxi with an animal, a scary movie, and a spaceship. Instead, these names likely recall the bands' popular songs, albums, and memorable concerts. In fact, each of these bands recognized the goodwill associated with their names and legally protected that goodwill by filing for federal trademark registration with the United States Patent and Trademark Office (“USPTO”). Considering artists' amplified use of digital platforms and streaming services to access fans and distribute music and merchandise, filing for federal trademark registration has become even more imperative.

A trademark is any word, phrase, design, symbol, or combination thereof that identifies the source of goods or services. A trademark owner acquires rights to a mark simply by using the mark in commerce. A trademark, however, does not provide its owner with sweeping rights to the mark. Rather, a trademark affords exclusive rights to the mark in connection with the specific goods or services that the owner offers. For example, the mark THE BEATLES did not provide the band ownership rights over any goods or services related to insects; rather, the band was afforded protection against, among other things, musicians or entertainers using THE BEATLES mark in connection with musical recordings, entertainment services, and branded merchandise. It is important to note that creative and unique marks (i.e., non-generic) more easily gain public recognition and, in turn, these marks become distinct source identifiers in their relevant industry. For example, names of musical groups that are unrelated to music, such as THE BEATLES, distinctly and memorably become source identifiers for the band's music and entertainment services.

If a trademark owner has used or intends to use its mark in interstate commerce, the owner can apply for federal trademark registration with the USPTO. Generally, the USPTO will register the mark if the owner establishes use in commerce and if the USPTO does not find any conflicting marks or receive any opposition to the mark's registration. Federal trademark registration provides several advantages to trademark owners, such as notice to the public that the owner has rights to the mark, nationwide priority of use of the mark in connection with the relevant goods or services (with some exceptions), a presumption of ownership, and federal legal protection of a mark's goodwill against misappropriation and misuse in all U.S. states and territories.

In most instances, federal trademark registration will prevent a would-be competitor or other third party from wrongfully using an artist's name brand or gaining recognition from the artist's goodwill. Assuming that an artist desires to attract widespread attention and recognition, protecting the ownership rights in their brand enhances the probability that the name will become a source identifier for their music. Although trademark rights exist without federal registration, these “common law” rights afford only limited, regional protection against others misappropriating, tarnishing, or diluting the artist's brand.

The recent battle over the mark LADY A exemplifies the importance of filing for federal trademark registration. In 2020, the country music group formerly known as Lady Antebellum announced that it would discontinue its use of the name Lady Antebellum and, instead, would perform exclusively under the name Lady A. The band owned a federal trademark registration for its LADY A mark, which it received in 2011. Shortly after the band's announcement, however, Anita White, a blues, soul, and funk artist, claimed that she owned the LADY A mark and that the band was infringing on her common law rights to the mark. Notably, Ms. White performed under the stage name LADY A for over 20 years and released numerous albums using the LADY A mark before the band announced its name change.

Even considering her longstanding use of the LADY A mark, however, Ms. White did not file for federal trademark registration of the mark. In turn, Ms. White was not afforded a legal presumption of ownership to the LADY A mark. The parties' dispute over the ownership of the LADY A mark resulted in two lawsuits — one in which the band sought a declaratory judgment that it lawfully used the LADY A mark and did not infringe on Ms. White's rights in the mark, and one in which Ms. White argued that she had priority over the LADY A mark based on her first-to-use status. After more than a year of litigation, the parties ultimately settled the dispute. Despite the parties' agreement, consumers will now likely associate the LADY A mark with negative media attention and extensive litigation. Such association dilutes the goodwill previously held by the LADY A mark. Had Ms. White filed for federal trademark registration earlier in her career, the band may not have used the mark at all.

Acquiring recognition for a musical group or stage name often requires a commitment of substantial time and effort, in addition to financial resources, advertising, promotion, and strategic development. Although it is impossible to predict whether such efforts will ever break an artist, let alone yield the next global superstar, it is a matter of fact that an artist's failure to protect the rights to its name will likely prove to be a hindrance, if not a roadblock, to success. As shown by Ms. White's battle for her LADY A mark, common law rights to a trademark rarely provide adequate protection against misappropriation or dilution of an artist's name. Rather, artists should always file for federal trademark registration to afford themselves a presumption of ownership and a right to use the mark in connection with their musical and entertainment career. Unless you want to fight for your right to your trademark, the proactive approach to protecting your brand involves registering your band's or artist's name with the USPTO. Don't sabotage your career before it begins. While there are no sure shots, the diligent artist can be proactive, crafty, and never, ever sleep ‘til registration!

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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