TMIN: Rockin' the Trademark


Part 17 of Trademark Information Network Series

Published on Sep 29, 2017

This video covers the three main issues that bands and musical artists encounter when applying for a federal trademark registration: (1) identifying the proper applicant, (2) selecting accurate goods and services, and (3) submitting an acceptable specimen. If you fail to comply with these requirements, your application may be refused and you will have wasted valuable time and money.


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TRADEMARK INFORMATION NETWORK
BREAKING NEWS

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MARK TRADEMAN, TMIN NEWS ANCHOR:
Hello, everyone. And welcome to a Trademark Information Network Special Report: "Rockin' the Trademark." This one is dedicated to all you bands, singers, and other musical artists out there to help you navigate the federal trademark registration process.

At first, applying for a trademark registration might seem as difficult as the trickiest time signature, but with a little information, your mark can record the greatest recognition of all: a federal trademark registration. And the right to use the "R in the circle" symbol with your mark.

To help us along today, we have Camille Ki Kwon, our Investigative Reporter, who will be taking us through three of the largest pitfalls for musicians filing applications.

Camille, I guess that makes you lead vocals for today.

CAMILLE KI KWON, INVESTIGATIVE REPORTER:
I guess so! But what does that make you, Mark?

TRADEMAN:
Oh, buried in the rhythm section, I guess, where I can't do too much damage. Maybe a tambourine? Or a set of bongos?

KWON:
No...

TRADEMAN:
Take it away, Camille.

KWON:
Thanks, Mark. We receive lots of questions from bands and other musical artists about problems they run into during the application process. These issues fall into three main areas: identifying the applicant, identifying the goods and services, and submitting acceptable specimens. Let's go through them, one by one.

EDUARDO RIVERA:
What's up, Trademark people. We want to register our band name as a trademark, but were confused by the application.

LAUREN RUTH WARD:
Im filling out the application. Do I put my name down? Do I put everybodys name down? Do I put the bands name down? What do we do?

KWON:
Good question. This section often confuses applicants and they identify themselves incorrectly. It may seem like a simple concept, but it's trickier than it looks. And it's incredibly important. If the applicant is identified incorrectly, your application may be void and you must start all over, losing valuable time and your non-refundable filing fee. With a little info, though, we can keep that from happening.

The first thing to do is to figure out who owns the trademark. Do you own it individually? As a group? Or maybe you formed a legal entity that owns the trademark. Like a corporation, LLC, or business partnership. The answer to this question determines how you fill out the application form.

For the most part, bands and other musical artists file either as individuals or joint applicants. That's because they haven't filed paperwork with their states to form corporations, LLCs, or partnerships. And that's OK. The important thing is to identify your entity status correctly on the trademark application form.

Let's say Mark over here is a singer/songwriter and wants to register his name as a trademark for his entertainment services. Let's also assume he owns the trademark as an individual and hasn't, say, incorporated his entertainment business.

In the electronic application form, he would enter his name, last name first ("Trademan, Mark"). Click that he is an "Individual" and then select United States as his citizenship. And then fill out the rest of the form. And that's how it works if you own the trademark as an individual.

If Mark and I have a band together, though, and haven't formed a legal entity for our band, we'd fill it out this way. The first page could stay the same, because we co-own the mark as individuals. Note that we are not a legally formed Partnership and we are not a Joint Venture. Those entities require filing paperwork with the state. Instead, we are "joint applicants." So, at the bottom of the page, we would click "Add Owner" and fill out the second page for me. And that's how it works if you co-own the trademark with another person or party. You click "Add Owner," allowing you to file as Joint Applicants.

If your band has more members, keep adding owners until all parties are identified in the application.

In this case, if the band has not formed a legal entity (like a corporation or LLC), the band members are all joint applicants. And they all need to be named as individual owners in the application form.

GIA MORA:
Hey, guys. Im Gia Mora and I am scheduling a national tour of my one-woman show, EINSTEINS GIRL, and I would like to register a trademark for my live act. But Id also like for it to cover the CDs and the t-shirts and the swag and everything else I sell while Im on the road. So, I would love a little help! Thank you so much! Ciao!

KWON:
Sure thing, Gia. Accurately identifying your goods and services is a very big issue. But it becomes very simple when you think about it carefully.

Are you using your mark on actual physical products? Goods? Or are you performing an activity for someone. A service.

Typically, live performances are a service. As are retail store and on-line retail store services where you sell your CDs, downloads, and t-shirts. That's in contrast to all of the physical products that you sell in your store; those are goods. Here are the most common identifications.

Entertainment services, namely, live performances by a musical band. Retail store and on-line retail store services featuring pre-recorded music CDs, downloadable music files, stickers, posters, t-shirts, jackets, and hats. Pre-recorded music CDs and downloadable music files. Stickers and posters. Clothing, namely, t-shirts, jackets, and hats.

And these are the basics. You might have more, less, or different goods and services, but these identifications cover most of the services and swag that musical artists typically associate with their trademarks.

Remember, however, that goods and services are placed in different International Classes. CDs and downloads are identified in Class 9. Stickers and posters in Class 16. Clothing in Class 25. Retail store services in Class 35. And entertainment services in Class 41.

Each International Class requires a separate filing fee and a separate example of how you actually use your mark in commerce; its called a specimen. So, before you file for every good that you sell or service that you perform, be sure to decide whether you need to protect your trademark for every single product (down to pens and buttons) or whether you just want to register your mark for your entertainment services and maybe your clothing articles.

The choice is yours and depends on how much protection you think you need and how much money you want to spend in filing fees. If you're not sure, you may wish to consider hiring an experienced trademark attorney to advise you.

D SMOOVE:
What's up, y'all. I'm a DJ and I want to protect my brand. So, what exactly is this specimen thing and what kind do I need to submit with my application.



KWON:
A specimen is evidence of how the public encounters your mark in the marketplace. What type of specimen you need to submit depends on whether you have goods or services.

For example, if you have services, like "disc jockey services," you may submit advertising as a specimen. You could submit a screenshot of your webpage. Or maybe a poster or flyer that shows your mark being used in the advertising of your services.

Remember, though, that your specimen may not be advertising for an upcoming gig. The specimen must show use of the mark for a past performance.

Also remember that your specimen must show use of the mark in connection with your services. Here, "disc jockey services." Your specimen cannot just show that you use the name. It must show use of the name in connection with the underlying services.

If you use your mark on goods, like "t-shirts," you may submit photographs showing the mark appearing on the labeling or packaging for the goods. You could submit a picture of the mark appearing on a t-shirt label. Or a t-shirt hangtag. Even the mark appearing in a traditional trademark location on the t-shirt.

Remember, though, that not all uses of a mark on clothing show acceptable specimen use.

If the mark appears in large size across the front of a shirt, wraps around the shirt, or appears as a repeated pattern on the shirt, that is considered decorative or ornamental. And a USPTO examining attorney may issue an ornamental refusal.

For more information about ornamental refusals, be sure to check out the "Ornamental Refusal" webpage on USPTO.GOV.

In addition, remember that you cannot register your name or band name for sound recordings if it is used as a title of a single work or solely to identify you as an artist. Your specimens must show evidence that you use the mark for a series of recordings. So, at least two albums or CDs.

You must also either show evidence that your name is promoted and recognized as the source of the series or that you control the quality of your recordings, as well as the use of your name.

This topic is often confusing, so be sure to check out the "Rockin' the Trademark" webpage on USPTO.GOV or consult an attorney.

So, that's a specimen. It shows how you are actually using the mark in commerce in connection with your goods and services.

And that's it: answers to the three questions most bands ask when applying for a federal trademark registration. How do I correctly identify the owner of the mark. What are the most common acceptable identifications of goods and services for bands and musical artists. And what are acceptable specimens for these types of goods and services.

TRADEMAN:
Excellent. Thanks, Camille. Now, what about information on other trademark issues that musical artists might face. For example, what happens to a trademark when a band breaks up?

KWON:
Good question. The USPTO's "Rockin' the Trademark" webpage is a great resource. Not only does it provide more details about the three topics we've covered, it also discusses more complex trademark issues, such as how a band's dissolution impacts trademark rights.

TRADEMAN:
Any other resources you'd recommend?

KWON:
Certainly. The Trademarks section of USPTO.GOV has a wealth of information. There are Trademark Frequently Asked Questions. A downloadable Basic Facts About Trademarks booklet. Plus, individual videos about Applicants, Goods and Services, and Specimens as part of the larger Trademark Information Network series.

TRADEMAN:
And that does it, folks. On behalf of Camille and myself, thanks for watching. I'm Mark Trademan, Trademark Information Network.

I should head home and work on my tambourine technique.

KWON:
Or maybe the cow bell!

TRADEMAN:
Oh yes. You always need more cow bell...

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