Rockin’ the Trademark

 Are you a solo performer?  A member of a band?  Do you want nationwide protection for your name?

As your music grows in popularity, so does your need to help consumers identify you as the source of your unique sound.  One way to do that is by registering your name as a trademark with the United States Patent and Trademark Office.  Federal registration provides nationwide benefits that you can use to enforce your trademark rights.

For general information about trademarks and the benefits of federal trademark registration, be sure to watch the Basic Facts About Trademarks videos and download the Basic Facts About Trademarks booklet.

For information about the trademark application process, be sure to watch the USPTO’s news broadcast-style video series called the Trademark Information Network (TMIN).

For questions and answers that specifically apply to bands and other musical artists, choose from the following:

If you have a suggestion for another topic that relates to bands and performers, e-mail TMIN@uspto.gov.

How do I file my application?   


We recommend that you file your application online using the Trademark Electronic Application System (TEAS).  There are three options for filing an initial Principal Register application through TEAS.  The TEAS Nuts and Bolts videos and TEAS Application FAQs page can help you decide which application is right for you and explain how to fill them out. 

  • TEAS Plus Form – This form is the most cost-effective and is designed to streamline the application process, but it has the strictest filing requirements.
  • TEAS Reduced Fee (TEAS RF) Form – This form is slightly more expensive than the TEAS Plus form, but does not require you to submit all the information required in a TEAS Plus application with your initial application.  It does require that you file certain submissions electronically and authorize e-mail communication.  
  • TEAS Regular Form – This form is the most expensive of the electronic forms, but only requires you to meet minimum filing requirements to begin the application process.  Electronic communication is not required.

For more information about filing requirements and current filing fees, visit the TEAS page.

NOTE: You may also file your application using a paper form.  However, the application fee is more expensive than the fee for any of the electronic forms.  In addition, if you choose to file a paper application, you will not have access to the tools built in to the online forms designed to assist in understanding and filing out the forms.

Back To Top

Who should be identified as the owner of the mark?


The application should be filed in the name of the party that owns the mark or is entitled to use the mark in commerce, and not merely the name of the party filing out the application (although those names may be the same).  If multiple parties own the mark or are entitled to use the mark, each party must be identified in the application.  As noted below, often, the mark is owned by the solo performer named in the mark as an “individual owner” or by the members of the band identified in the mark as “joint individual owners” or “joint individual applicants.”

  • If you are a solo performer, and you have not set up any type of separate entity (such as a corporation, limited liability company, etc.) to own your trademark, and you are attempting to trademark your individual name or stage name, you may file your application in your name as an individual applicant.  If you are applying as an individual applicant, the application must set out your name in the correct legal form, along with your citizenship (e.g., United States of America, Canada, France, etc.).
     
  • If you are in a group with more than one member, you want each member to be an owner of the mark, you have not set up any type of separate entity (such as a corporation, limited liability company, partnership, etc.) to own your trademark, and you are attempting to trademark your band name, you may file your application as joint individual applicants, with each member of the band listed as an individual applicant.  If you are applying as joint individual applicants, the application must name each of the joint applicants, and must set forth the citizenship (e.g., United States of America, Canada, France, etc.) of each of the joint individual applicants.

Sometimes, however, individuals or bands have set up juristic entities (such as corporations, limited liability companies, partnerships, etc.) that can serve as the owner of the applied-for trademark.

  • If various members of the band have formed a partnership to own the trademark rights, and the partnership has been organized under a particular business name, the application should be filed in that business name.  If the partnership has not been organized under a business name, the names of the members should be listed as though they composed a company name.  In addition, the application of a partnership or a joint venture should indicate the state (for United States partnerships) or country (for foreign partnerships) under whose laws the partnership or joint venture is organized.  In addition, if the applicant is a partnership organized in the United States, the application must list the names, legal entity types, and national citizenship (for individuals), or state or country of organization (for businesses), of all general partners or active members that compose the partnership or joint venture. 
     
  • If you, or you and your bandmates, have set up a corporation or limited liability company (“LLC”) to be the owner of the mark, the official name of the corporation or LLC must be set out as the applicant’s name.  Listing an assumed business name is optional.  The application must specify the applicant corporation’s state of incorporation or LLC’s state of organization (for United States corporations or LLCs) or country of incorporation (for foreign corporations or LLCs).

Back To Top

What happens if the band lineup changes or someone changes their name?


Sometimes, during the application process and/or after registration of a mark, the owner(s) of a trademark may change for various reasons. For example, band members may decide that it is beneficial for a mark held by them as joint individual owners to be held by a corporation or LLC, or one or more members of the band may leave and be replaced by new members.  In addition, some trademark owners change their names while retaining ownership.

In any situation in which ownership of the mark changes, proper documentation must be submitted to the USPTO Assignment Recordation Branch.

Examples of commonly encountered situations:

  • If the mark is owned by a single juristic entity, such as a corporation or LLC, and a band member leaves and/or a new member joins the band, there is no need to file an assignment or name change with the USPTO if the named entity intends to retain ownership of the mark, as the owner of the mark (i.e., the corporation or LLC) is unchanged by changes in the band’s lineup.  For example, if your band’s registered mark is owned by ROCK BAND, LLC, a limited liability company, and your bass player, Steve Bass, decides to leave the band and is replaced by a new member, you do not need to file an assignment, as the party that owns the mark, specifically ROCK BAND, LLC, is unchanged.
     
  • Similarly, if the mark is owned by a single individual, and a band member leaves and/or a new member joins the band, there is no need to file an assignment or name change with the USPTO if the named individual owner intends to retain ownership of the mark, as the owner of the mark (i.e., the single individual owner) is unchanged by changes in the band’s lineup.  To continue the example set out above, if the band’s registered mark is owned by Joey Leadsinger, an individual, and Steve Bass decides to leave the band and is replaced by a new member, you do not need to file an assignment, as the party that owns the mark, specifically Joey Leadsinger, is unchanged.
     
  • If, however, a mark is owned by each of the band members as joint individual owners, all named joint individual owners, as well as the party receiving ownership, must participate in the transfer of ownership.  To continue again with the original example set out above, if the band’s registered mark is owned by Joey Leadsinger, Emily Guitarist, Steve Bass, and Gary Drums, as joint individual owners, and Steve Bass decides to leave the band and is replaced by a new member, Radford NewBass, and the band wishes to amend the registration to remove Steve Bass as an owner and replace him with Radford NewBass, all current owners (i.e., Joey Leadsinger, Emily Guitarist, Steve Bass, and Gary Drums), as well as the party receiving ownership (i.e., Radford NewBass), would need to participate in the transfer of ownership.
     
  • Similarly, if the band’s registered mark is owned by Joey Leadsinger, Emily Guitarist, Steve Bass, and Gary Drums, as joint individual owners, and Steve Bass decides to leave the band and the remaining members decide not to replace him in the band, or decide to replace him with a new bass player but not make the new bass player an owner of the band’s registered mark, all current owners (i.e., Joey Leadsinger, Emily Guitarist, Steve Bass, and Gary Drums), would need to participate in the transfer removing Steve Bass as a listed joint individual owner of the mark.

  • If the mark is owned by joint individual owners and the owners decide the mark should be held by a single juristic entity, such as a corporation or LLC, all named joint individual owners and the juristic entity must participate in the transfer of ownership.  If your band’s registered mark is owned by Joey Leadsinger, Emily Guitarist, Steve Bass, and Gary Drums, as joint individual owners and you wish to transfer ownership to ROCK BAND, LLC, all current owners (i.e., Joey Leadsinger, Emily Guitarist, Steve Bass, and Gary Drums), as well as the party receiving ownership (i.e., ROCK BAND, LLC), would need to participate in the transfer of ownership.

  • In the case of a name change of a listed mark owner, only the party changing its name needs to participate in the change.  For example, if the band’s registered mark is owned by Joey Leadsinger, Emily Guitarist, Steve Bass, and Gary Drums, as joint individual owners, and Joey Leadsinger changes his name to Joey Rocksinger (i.e., the mark would then be owned by Joey Rocksinger, Emily Guitarist, Steve Bass, and Gary Drums, as joint individual owners), only Joey Leadsinger needs to participate in the change.

For more information about ownership changes and how to record such changes, please visit the USPTO’s Transferring Ownership/Assignments FAQs webpage or watch the TMIN video titled “Assignments and Ownership Changes.”

Back To Top

What are goods and services?


Your trademark registration will only apply to those goods and/or services for which you claim that you are using, or intend to use, your applied-for mark. 

The USPTO will use your identification of goods and/or services, along with your applied-for mark, to determine whether there is a potential conflict between your applied-for mark and existing registrations and both earlier and later filed applications.  

The identification of goods and/or services must be specific enough to identify the nature of the goods and/or services.   The level of specificity required depends on the nature of the goods and/or services. 

  • For example, if your goods are “t-shirts,” you do not need to add additional clarification regarding the coloring, design elements, or structure of the t-shirts, and, absent additional clarification, the identification will be presumed to encompass all types of t-shirts.  For example, if your t-shirts feature rhinestones, you do not have to identify your goods as “t-shirts featuring rhinestones.”  You may simply refer to them as “t-shirts,” “shirts,” or “tops.”
  • Alternatively, if your goods are identified as “downloadable video recordings” or “downloadable Internet files,” you will be required to clarify the subject matter of the goods (e.g., “downloadable video recordings featuring music” or “digital music downloadable from the Internet”).  As such, the identification will not include other types of “downloadable video recordings” or “downloadable Internet files” (e.g., “downloadable video recordings featuring instruction in woodworking”).

Although it is important that you identify your goods and/or services with the required degree of specificity, you should keep in mind that while you may narrow your identification of goods and/or services after the filing of your application, you may not broaden the identification to encompass additional goods and/or services.

  • For example, if your original application identified your goods as “t-shirts,” you could amend your identification to “short-sleeved t-shirts,” “black t-shirts,” “t-shirts featuring tour dates on the back,” and/or “t-shirts with contrasting sleeves,” as each of those identifications identifies a particular type of t-shirt, so amending to any one, or several, of such identifications from the original “t-shirts” listing would be a narrowing of the original identification.
  • However, if your original application identified your goods as “short-sleeved t-shirts,” you could not amend your identification to “t-shirts,” as such amendment would broaden the scope of the identification to encompass all types of t-shirts, including long-sleeved t-shirts, which would not have been encompassed by the original identification.

Here are some examples of goods and services often identified by musical performers: 

Goods Featuring Musical Recordings

  • Sound recordings featuring musical performances, in International Class 009
  • Pre-recorded compact discs and DVDs featuring music, in International Class 009
  • Digital media, namely, downloadable audio files featuring music, in International Class 009
  • Digital media, namely, and downloadable audio and video recordings featuring music, in International Class 009
  • Downloadable musical sound recordings, in International Class 009
  • Musical video recordings, in International Class 009
  • Video recordings featuring music, in International Class 009
  • Downloadable videos featuring music performances by a musical group, in International Class 009

Common Ancillary Products

  • Posters, in International Class 016
  • Stickers, in International Class 016
Clothing
 
  • T-shirts, in International Class 025
  • Hats, in International Class 025
Entertainment Services
 
  • Entertainment services, namely, live musical performances, in International Class 041
  • Entertainment, namely, live music concerts, in International Class 041
  • Entertainment services, namely, personal appearances by a musical group, in International Class 041
  • Entertainment services, namely, providing non-downloadable prerecorded music, information in the field of music, and commentary and articles about music, all on-line via a global computer network, in International Class 041
  • Entertainment services, namely, providing a website featuring non-downloadable videos featuring musical performances by a musical group, in International Class 041
 

For examples of acceptable identifications, please consult the Acceptable Identification of Goods and Services Manual (ID Manual). NOTE: If you enter a term (or a partial term with “$” for truncation (e.g., “comput$” or “music$”)) in the box to the right of the wording “Enter Search Terms,” you will be provided with a listing of all entries in the ID Manual with that wording.  For example:

  • A search of the term “shirt” will return all ID manual entries containing “shirt” (including certain plural entries) such as “athletic shirts,” “wind shirts,” “shirts,” “shirt studs,” “shirt stretchers,” and “carriers for suits, shirts and dresses.”
  • A search of the term “music$” will return all ID manual entries containing terms beginning with “music,” including “compact discs featuring music,” “downloadable musical sound recordings,” “composition of music for others,” “polish for musical instruments,” and “carillons [musical instruments].”

Some listings in the ID Manual require additional user input.  For example, the entry “sound recordings featuring {specify subject matter, e.g., music, self-improvement, mathematics instruction}” requires the applicant to identify the subject matter of the sound recordings.  As noted by the provided identification, “sound recordings featuring music” would be considered to be sufficiently definite for examination purposes.  NOTE: As noted above, you may narrow your identification of goods and/or services, but you may not broaden the identification to encompass additional goods and/or services.  Therefore, if you originally identified your goods as “sound recordings featuring music,” you would be permitted to narrow your identification by listing the specific types of recordings (e.g., “compact discs featuring music,” “phonograph records featuring jazz music,” “downloadable music files,” etc.), because such listings merely narrow identification by indicating the specific format.  However, if you identified your goods as “compact discs featuring music; phonograph records featuring music; and downloadable music files,” you would not be permitted to amend your identification to “sound recordings featuring music,” because such a proposed identification is broad enough to include types of recordings (e.g., “audio tapes featuring music”) not encompassed by the previous identification of goods.

If you file your application using the TEAS Plus Form, you will be required to select an identification of goods and/or services directly from the ID Manual.  In addition to the lower per-class filing fee, one of the main benefits of a TEAS Plus filing is that, with the exception of those identifications that require additional information entry from the applicant (e.g., audio and video recordings featuring {specify subject matter}), you know that your identification of goods and/or services will be acceptably specific as filed.

For more information, please watch the TMIN video titled “Goods and Services.”

Back To Top

What is a filing basis?


A trademark application must specify the proper “basis” for filing, most likely either current use of the mark in commerce or an intent to use the mark in commerce in the future. It is important to understand the distinction between these filing bases, and the implications of selecting one, before starting the application process.

Use in Commerce: If you are currently using your mark in commerce (that is, interstate commerce, territorial commerce, and or commerce between the United States and a foreign country) in connection with all the goods and/or services identified in your application, you may file under the “use in commerce” basis.  This is often referred to as a “Section 1(a)” basis.

Intent to Use:  If you have not yet used your mark in commerce in connection with any of the goods and/or services identified in your application, but intend to use it in the future, you must file under the “intent to use” basis.  This is often referred to as a “Section 1(b)” basis.

If you are currently using your mark in commerce in connection with some of the goods and/or services identified in your application, you may file using both the “use in commerce” and the “intent to use” bases.  For example, if you are currently using the mark in connection with live performances by your band and downloadable music files, and you intend, but have not yet begun, to use the mark in connection with t-shirts, you can file an application with split bases, specifically:

  • DOWNLOADABLE MUSIC FILES, in International Class 009, based on use in commerce
  • T-SHIRTS, in International Class 025, based on intent to use
  • LIVE PERFORMANCES BY A MUSICAL GROUP, in International Class 041, based on use in commerce

You may also split the application basis within an international class of goods and/or services if you have begun using the mark with certain of the goods and/or services in a particular class, but have an intent to use the mark in connection with other goods and/or services in the same class.  For example, if you are currently using the mark in connection with t-shirts, and you intend, but have not yet begun, to use the mark in connection with hats, you can file an application with split bases, specifically:

  • T-SHIRTS, in International Class 025, based on use in commerce
  • HATS, in International Class 025, based on intent to use

For more information about basis, please watch the “Filing Basis Information” video that is part of the TMIN news-broadcast style video series.

Please note that a specimen of use is typically required for each class of goods and/or services in the application.  For more information about specimens, see the What are specimens? section below and watch the “Specimen” video that is also part of the TMIN video series.

Back To Top

What are specimens?


A specimen is a sample of how you actually use your mark in commerce in connection with the goods and/or services identified in your application (e.g., on packaging for a compact disc featuring music, on a label for t-shirts, on a poster advertising a live music concert).  A specimen is not the same thing as the drawing of the mark.  The drawing of the mark shows only the mark you want to register, while the specimen shows how consumers actually see the mark when they are trying to purchase your goods and/or services.

For more information, please watch the TMIN video titled “Specimen.”

Specimens for Goods

A specimen for goods (products) usually shows the mark on the actual goods, on labels/tags affixed to the goods, on packaging, or in a product display for the goods (like a window display). Advertising materials are generally not acceptable as a specimen for goods, nor are materials used to carry out your daily business (e.g., invoices, packing slips, etc.).

The USPTO typically accepts the following specimens for goods (such as CDs, downloadable music files, t-shirts, etc.):

  • A photograph of the product showing the mark directly on the product (e.g., on a CD):

Mark: SPARKLEHORSE (for “compact discs featuring music”)

Trademark example - CD

Mark: DOEMAN (for “compact discs featuring music”)

Trademark example - CD

  • Product packaging showing the mark (e.g., CD cover):

Mark: MARC SCIBILIA (for “phonograph records featuring music”)

Trademark example - CD 

Mark: THE LIVELIES (for “compact discs featuring music”)

Trademark example - CD

  • Product labels and tags showing the mark (e.g., the label on a t-shirt)

Mark: HEART BREAK GANG (for “clothing, namely, shirts, t-shirts”)

Trademark example - shirtTrademark example- clothing label

Note that the proper trademark usage here is seen on the t-shirt label, not on the front of the t-shirt.  Use of the mark on the front of the t-shirt may be considered “ornamental.”  For more information about ornamentation, please see the Specimens for Goods – Ornamentation section below.

Mark: TXB (for “hats”)

Trademark example - hat tag

  • A webpage showing or describing the product near the mark and with purchasing information (e.g., a webpage showing a photograph of a CD, the mark for the CD appearing above the photograph, the price appearing below the photograph, and a shopping cart button/link appearing on the page)
     

Mark: THE KIELBASA KINGS (for “compact discs featuring music”)

Trademark example - CD listing

 

  • For downloadable music, a webpage featuring a “download,” “add to cart,” “buy,” or similar link to put the consumer on notice that the identified goods are available for download.

Mark: KREWELLA (for “downloadable music files”)

Trademark example - iTunes download


Mark: THE VOODOO FIX (for “downloadable music files”)

Trademark example - download

Specimens for Goods – Ornamentation

When submitting your specimens for goods, it is important to remember that if the mark, as used on the provided specimen, is viewed as merely a decorative feature rather than an indicator of the source of the goods bearing the mark, the mark is not considered to function as a trademark. A decorative feature may include words, designs, slogans, or trade dress.

The examining attorney must determine whether the overall commercial impression of the proposed mark is that of a trademark.

For example, if your identified your goods as “shirts,” a small, neat, and discrete word or design feature (e.g., small design of animal over pocket or breast portion of shirt) may be likely to create the commercial impression of a trademark, whereas a larger rendition of the same matter emblazoned across the front of a shirt or hat may be perceived merely as a decorative or ornamental feature of the goods.

Mark:  Trademark example - Ego Kings logo (for "shirts")

In the image below, the mark is discretely placed across the upper pocket area of the shirt, and, as such, is likely to be viewed by consumers as indicating the source of the shirts bearing the mark.

Trademark example - Ego Kings shirt

As noted above in the product labels and tags discussion in the Specimens section, use of the mark on the label of a shirt would also be considered proper, non-ornamental use.  In the example below, although the mark appears across the front of the shirt, in what would be considered an ornamental use, the use of the mark on the label shows proper trademark use of the mark, and, accordingly, the specimen is acceptable for t-shirts.

Mark: HEART BREAK GANG (for “clothing, namely, shirts”)

Trademark example- clothing label

Alternatively, in the image below, the mark is displayed prominently across the face of the shirt, and consumers are likely to view such use as indicating the wearer’s support for the band, musical festival, or album referenced in the mark.  Accordingly, absent additional evidence or statements from the applicant, this mark is likely to be refused registration, as the wording “Jacob’s Ladder” would be considered to be an ornamental feature of the goods, rather than serving a source indicating function.

Mark: JACOB’S LADDER (for “shirts”)

Trademark example - t-shirt

Specimens for Goods – Ornamentation and Secondary Source

One additional factor to consider is that although certain use of a mark may be considered merely ornamental, it is possible to overcome a refusal, or potential refusal, issued because a particular use is ornamental by showing that the proposed mark also serves a source-indicating function.  You can do this by providing evidence that the applied-for mark would be recognized as an indicator of source through its use with goods and/or services other than those being refused as ornamental.  This is known as “secondary source.”

To show secondary source, you may provide any one, or several, of the following: 

  1. Evidence indicating that the named applicant already owns a U.S. registration on the Principal Register of the same mark for other goods and/or services based on use in commerce under Section 1 of the Trademark Act (e.g., if your current application is for the mark “LOWDOWN,” for goods identified as “t-shirts,” you can show secondary source by providing evidence that you already own a U.S. trademark registration for “LOWDOWN” for services identified as “entertainment, namely, live performances by a musical band,” on the Principal Register and registered pursuant to Section 1 of the Trademark Act);
  2. Evidence indicating that the applicant already owns a U.S. registration on the Principal Register for the same mark for other goods and/or services based on a foreign registration under Section 44(e) or Section 66(a) of the Trademark Act for which an affidavit or declaration of use in commerce under Section 8 or Section 71 has been accepted (e.g., if your current application is for the mark “LOWDOWN,” for goods identified as “t-shirts,” you can show secondary source by providing evidence that you already own the mark “LOWDOWN” for services identified as “entertainment, namely, live performances by a musical band,” on the Principal Register, registered pursuant to Section 44(e) or Section 66(a) of the Trademark Act for which an affidavit or declaration of use in commerce under Section 8 or Section 71 has been accepted);
  3. Evidence of non-ornamental use of the mark in commerce on other goods and/or services (e.g., if your current application is for the mark “LOWDOWN,” for goods identified as “t-shirts,” you can show secondary source by providing a flyer indicating that you are properly using the mark “LOWDOWN” to advertise live performances by a musical band); or
  4. Evidence of ownership of a pending use-based application for the same mark, used in a non-ornamental manner, for other goods and/or services (e.g., if your current application is for the mark “LOWDOWN,” for goods identified as “t-shirts,” you can show secondary source by showing that you have an application pending before the USPTO which shows proper trademark use for other goods and/or services.  NOTE: the pending use-based application can be a separate application or merely a separate class of goods and/or services in the same application).

The following provides an example of the type of secondary source evidence that can overcome a possible ornamental refusal.

Mark: AUTUMN CITY

  • Goods: Clothing, namely, t-shirts, tank tops, sweat shirts, jackets, and headwear
  • Services: Entertainment services in the nature of live musical performances

 

Trademark example - shirtTrademark example - Autumn City flyer

As used on the t-shirt, the mark may be viewed as merely an ornamental feature of the t-shirt goods featuring the mark.  However, because the application was filed based on use of the mark in commerce, and the specimen provided for the live musical performances shows proper service mark use, the applicant could claim secondary source, which claim would overcome a potential ornamental refusal that would be issued in connection with the t-shirt goods.

Specimens for Services

A specimen for services generally shows the mark used in the sale, rendering, or advertising of the services. A consumer should be able to directly associate your mark with the services you identified in the application on the specimen.

The USPTO typically accepts the following specimens for services (such as live music concerts):

  • Print or internet advertising

Mark: KIP MOORE (for “entertainment, namely, live music concerts” and “providing entertainment information via a website”

Trademark example - artist website

Mark: DANI LUV (for “entertainment in the nature of live performances by an actor, comedian, musician, and audio and visual show performer”

Trademark example - artist website

  • Brochures and leaflets

Mark: JIMMY CLIFF (for “entertainment in the nature of musical performances”)

Trademark example - concert poster

  • A photograph of a musical band performing with the band’s name displayed during the performance (e.g., on the band’s drum)

Mark: THE KIELBASA KINGS (for “live musical performances”)

Trademark example - band


Back To Top

What is a Statement of Use?


If you submit your application based on use in commerce, you will submit evidence establishing use as part of the initial application and there is no additional processing fee for reviewing the evidence of use.  However, if you submit your application (or specific class/goods/services therein) based on an intent to use, then prior to registration, you will be required to submit a “statement of use,” with evidence establishing use along with an additional processing fee for each class of goods and/or services for which an intent to use basis was claimed. Use is established by providing the date of first use of the mark anywhere and the date of first use of the mark in commerce, as well as submitting a specimen showing how you use the mark in commerce in connection with the identified goods and/or services.

If you file your application based on both use in commerce and an intent to use the mark in commerce for goods and/or services in the same international class, you will be required to submit evidence establishing use for any goods and/or services for which the initial basis was an intent to use, even if you have already submitted evidence establishing use for the goods and/or services in the same international class for which the initial basis was use in commerce.  For example, if the initial application listed “t-shirts” (in International Class 025) based on use in commerce and “hats” (also in International Class 025) based on an intent to use, and, with the application, you submitted acceptable evidence establishing use of the mark in connection with t-shirts, you will be required, at a later date prior to registration, to provide evidence establishing use of the mark in connection with hats, even though hats and t-shirts are properly classified in the same international class. 

However, if the initial application listed “t-shirts” and “hats” in International Class 025, with all goods based on use in commerce, you most likely will only be required to submit a single specimen establishing use of the mark in connection with t-shirts or hats.

For more information about the statement of use, please watch the “Statement of Use” video that is part of the TMIN video series.

Back To Top

What is a “likelihood of confusion”?


As part of the official examination of a trademark application, the USPTO conducts a search of USPTO records to determine whether there is a conflict between the mark in the application and a mark that is either registered or currently pending before the USPTO.

The principal factors considered in reaching this decision are the similarity of the marks and the commercial relationship between the goods and/or services identified by the marks.

As noted above, the USPTO will use your identification of goods and/or services, along with your applied-for mark, to determine whether there is a potential conflict between your applied-for mark and both existing registrations and later filed applications.  The goods and/or services do not have to be identical, or even competitive, in order to find that there is a likelihood of confusion. The issue is not whether the goods and/or services will be confused with each other, but rather whether the public will be confused as to their source.

Similarly, a conflict may be found even if the marks are not identical.  Instead, it is sufficient if the marks are similar and the goods and/or services are related. For example, a likelihood of confusion could be found between an application for the mark BLACK NITE for goods identified as “audio tapes featuring music” and a registration for the mark BLACK KNIGHTS for “downloadable music files” based on the fact that the marks are highly similar in sound and the goods are highly similar in nature.

Alternatively, if you identified your goods as “pre-recorded CDs featuring music,” it is unlikely that your mark would be found to be confusingly similar to highly similar marks covering “metal wings nuts” or “laundry detergent” because the goods at issue would be so distinct that it is unlikely that consumers encountering the goods at issue would be confused into believing that such goods come from the same source. 

If a conflict exists between your mark and a registered mark, the examining attorney will refuse registration of your mark on the ground of likelihood of confusion. If a conflict exists between your mark and a mark in an earlier-filed pending application, the examining attorney will notify you of the potential conflict and will suspend your application pending the outcome of the prior pending application.  If the prior application registers, your mark will be refused on the ground of likelihood of confusion.  If the prior pending application is abandoned, your mark will not be refused registration based on a likelihood of confusion with that mark.

For more information about likelihood of confusion analysis, you may visit the USPTO’s Likelihood of Confusion page or watch the TMIN video titled “Searching.”

Back To Top

Can I register a title of a single work?


Something to keep in mind when applying for a trademark is that the title, or a portion of a title, of a single creative work will be refused registration unless the title has been used on a series of creative works. Therefore, although the name of a band can be registered, the name of an individual album or song cannot.

Single creative works include works in which the content does not change, regardless of the format.  Accordingly, a particular song or album will be considered a single creative work regardless of whether the song or album is available to consumers via multiple formats such as CDs, downloadable music files, and non-downloadable streaming services.

However, a creative work will not be considered a single creative work if evidence exists that it is part of a series (e.g., you release two albums under the same name, with the first album labeled “Volume 1” and the second album titled “Volume 2”).

Live performances by musical bands are presumed to change with each presentation and, therefore, are not single creative works.

Evidence of a series of recorded works

Acceptable evidence of use of the mark in connection with a series of recorded words could include use of the mark on two different CD or phonograph record covers featuring different material.  For example, see the images below showing use of the mark “BON JOVI” on four CD covers featuring different material.

Trademark example


Back To Top 

Can I register my name or a stage name?


You can register your name or stage name (or pseudonym, nickname, portrait, or signature) as a trademark or service mark, but only if you submit the following:

(1)  Evidence that the name is used on a series of recorded works (see Evidence of a series of recorded works section above for information regarding the types of evidence that are acceptable to show use in connection with a series of recorded works);

As noted above, evidence that the same collection of recordings is available in different media (i.e., the same album is available on CD, phonograph record, and as a downloadable music file) does not establish that the mark is used on at least two different works.  Your evidence must show use on two separate albums.

OR

(2)  Evidence that the mark is a source identifier

This evidence must show that the name (of the individual or group) identifies the source of the series of works and does not merely indicate the name of the performing artist.

You may make such a showing by submitting either:

  • Evidence of the performer’s control over the name and quality of his or her works in the series.  If you maintain control over the quality of the goods because the goods are recorded directly under your control, you may satisfy this requirement by submitting a verified statement indicating that that “the applicant publishes or produces the goods and controls their quality.”

OR

  • Evidence of promotion and recognition of the name as a source indicator for the series of recordings.  You can do this by submitting:
    • ​copies of advertising that promotes the individual or group name (e.g., TAYLOR SWIFT, PINK FLOYD, ABBA) as the source of the series of recordings (e.g., an advertisement for the CDs featuring the wording “Now available at your local record store, the new album from Joey Bananas, Choose Your Own Destiny, along with his prior hit album, This Way to Nowhere”); or
    • copies of third-party reviews showing the reviewer’s use of the individual or group name to refer to a series of works (e.g., a review in a newspaper with the text “the new album from Joey Bananas, Choose Your Own Destiny, is a strong follow-up to his last album, This Way to Nowhere”); or
    • evidence showing the name used on a website associated with the series of works (e.g., a screen-shot from a music retailer’s website showing the name of the artist “JOEY BANANAS” at the top of the page above images of different “JOEY BANANAS” albums, along with a brief synopsis describing the different musical styles employed in the depicted albums).
 

Back To Top 

Do I need consent to register a name or stage name?


When a name, stage name, nickname, pseudonym, portrait, or signature in a mark could reasonably be perceived as that of a particular living individual, you must provide the USPTO information regarding whether such name, portrait, and/or signature in fact identifies a particular living person.

If a name, stage name, nickname, pseudonym, portrait, or signature does identify a particular living individual, you must provide both:

(1)  A statement that the name, portrait, or signature identifies a living individual whose consent is of              record; and
(2)  A written consent personally signed by the individual named or shown in the mark.

If a name, stage name, nickname, pseudonym, portrait, or signature does not identify a particular living individual, you must provide:

  • A statement that the name, portrait, or signature does not identify a particular living individual.
The reason the USPTO requires written consent from a named living person in a mark prior to registration is to protect an individual’s rights of privacy and publicity to control the commercial use of his or her identity.
 
Generally, the USPTO will issue an inquiry when a full name (i.e., first name or initials followed by a surname) appears in a mark that could potentially identify a particular living individual. However, the USPTO will also issue an inquiry when a first name only, nickname, stage name, title, pseudonym, or surname only may identify a particular individual who is well known or famous or has achieved some public recognition under the name in connection with the relevant industry, business entity, goods, and/or services.
 
Examples of when a consent statement would be required:
 

The examples below are names and pictures that identify particular living individuals and for which a personally signed written consent and accompanying statement would be required. Typically, the USPTO does not require consent to register when the mark features a first name, nickname, or surname. However, the USPTO will require consent if, due to fame or public recognition, the relevant public would actually perceive the name as identifying a particular living individual. For example:

  • Full name: KEITH RICHARDS, TAYLOR SWIFT
  • First name: ADELE, MADONNA, CHER
  • Surname: SPRINGSTEEN, OVECHKIN, SCHWARZENEGGER
  • Pseudonym: ROBERT GALBRAITH (the pseudonym of the writer J. K. Rowling)
  • Stage name: BONO, KRS-ONE, AXL ROSE, R. KELLY, BEN E. KING
  • Nickname: SLOWHAND for Eric Clapton, THE QUEEN OF SOUL for Aretha Franklin, THE PRINCE OF DARKNESS for Ozzy Osbourne
  • Portrait or likeness of an individual:
 

Trademark example - logo

[Toby Keith]


Trademark example - logo

[Burt Shavitz]

Trademark example - logo
[Arnold Palmer]

How to comply with consent requirement:

Unless consent can be implied (see below), if the name, portrait, and/or signature in your mark identifies and/or depicts a particular living individual, you must provide both:

(1)  The following statement:

  • “The name(s), signature(s), portrait(s), and/or likeness(es) shown in the mark identifies a living individual whose consent to register is made of record”; 

AND

(2)  A written consent from the named/shown individual, personally signed by this individual,               using the following relevant language:

  • “I consent to the use and registration by __________ [insert name of applicant(s)] of my name as a trademark and/or service mark with the USPTO.”
  • “I consent to the use and registration by __________ [insert name of applicant(s)] of the signature of my name as a trademark and/or service mark with the USPTO.”
  • “I consent to the use and registration by __________ [insert name of applicant(s)] of my portrait or likeness as a trademark and/or service mark with the USPTO.”
When consent can be implied:
 
If the person named in the mark is a person who personally signs the application, the consent to register the mark will be presumed.
 
  • For example:
    • The mark is “THE JOEY BANANAS EXPERIENCE”;
    • “Joey Bananas” is the stage name of Joe Rothschild; and
    • The application has been properly signed by Joe Rothschild (e.g., as an individual applicant, as the president of the corporate applicant, etc.).

Once it has been established that “Joey Bananas” is the stage name of Joe Rothschild, consent to register the name in the mark will be implied and no further inquiry will be required.

You can establish that the name in the mark is the stage name of the person who signed the application by one of the following:

  • Including a miscellaneous statement in your application, preliminary amendment, or response to Office action indicating that the person named in the mark is the stage name of the person who signed the application (e.g., “Joey Bananas” is the stage name of the applicant “Joe Rothschild”).
  • If the examining attorney contacts you about filing an examiner’s amendment, you can permit the examining attorney to enter a statement into the record indicating that the person named in the mark is the stage name of the person who signed the application.

If you own a current U.S. registration for a mark featuring the same name as the name in the applied-for mark and the registration identifies the same, or broader, goods and/or services than those listed in your application, you do not need to submit a new consent statement.  Instead, you must only: (a) claim ownership of that existing registration; and (b) inform the examining attorney that there is a consent statement in the existing registration.

  • For example:
    • If you own a current registration for the mark “THE JOE ROTHSCHILD EXPERIENCE” for goods identified as “pre-recorded compact discs featuring music” with a consent statement for the name “Joe Rothschild,” and you are filing a new application for the mark “JOE ROTHSCHILD & THE NEW BOMBARDIERS” for goods identified as “pre-recorded compact discs featuring music,” you would not need to submit a new consent statement if you have submitted a proper claim of ownership for the current registration and have informed the examining attorney that there is a consent statement in the current registration.

Although you may rely on a current registration as evidence of consent if the goods are the same or narrower (e.g., the previous registration is for “pre-recorded compact discs featuring music” and the new application is for “pre-recorded compact discs featuring jazz music”), if the goods in the new application are not encompassed by the goods/services in the current registration (e.g., the previous registration is for “pre-recorded compact discs featuring music” and the new application is for “entertainment, namely, live music concerts”), you must file a new consent statement.

Because the names at issue must be the same, if you own a current registration for the mark “THE JOE ROTHSCHILD EXPERIENCE” for goods identified as “pre-recorded compact discs featuring music” with a consent statement for the name “Joe Rothschild,” and you are filing a new application for the mark “J. ROTHSCHILD & THE NEW BOMBARDIERS” for goods identified as “pre-recorded compact discs featuring music,” you would need to submit a new consent statement, as the names in question (i.e., “Joe Rothschild” and “J. Rothschild”) are not the same.

When would a statement be required to indicate that a name does not identify a particular living individual?

In certain instances, wording that could reasonably be perceived as the name, nickname, or stage name of a specific living individual is, in fact, not that of a specific individual.  If your mark includes such wording, you must include a statement indicating that the wording does not identify a particular living individual.  The examples below show terms that are not, but could reasonably be perceived as, the name, nickname, or stage name of a specific living individual and, therefore, would require a separate name statement in the record.

  • LYNYRD SKYNYRD
  • PINK FLOYD
  • JETHRO TULL
  • HARVEY DANGER

The statement should read as follows, “The name(s), portrait(s), and/or signature(s) shown in the mark does not identify a particular living individual.”

For more information on consent statements for marks featuring names, portraits, or signatures, please visit the USPTO’s page on names, portraits, and signatures in marks.


Back To Top

Who can respond to Office actions and authorize Examiner’s Amendments?


Often, during the course of the examination of an application, you will be required to respond to a refusal or requirement issued by the assigned examining attorney.  When submitting your response, it is important that all proper parties sign the response.  If a response is not signed by all necessary parties, it will be treated as incomplete.

  • If you are represented by an attorney, the attorney may sign the response.
  • If you are not represented by an attorney, the signature requirements will vary by the nature of the identified owner of the mark:
    • If you own the mark as a single individual owner, you may sign the response.
    • If the mark is owned by joint individual owners, all listed owners must sign the response (i.e., if there are four members in the band, and each member is listed on the application as an individual owner, each of the four members must sign the response).
    • If the mark is owned by a partnership, any general partner may sign, and signature by all general partners is not necessary.
    • If the band has formed a corporation, and the mark is owned by that corporation, the response must be signed by an officer of the corporation.  An officer is a person who holds an office established in the articles of incorporation or corporate bylaws (e.g., president, vice-president, secretary, treasurer, chief executive officer, chief operating officer, chief financial officer, etc.).  If, either in your response, or in a response to an inquiry from the USPTO regarding the authority of the named party to sign the response, you state that the person who signed the response is authorized to bind the named corporation under the articles of incorporation or bylaws, the USPTO will accept the signature.
    • If the band has formed a limited liability company (“LLC”), and the mark is owned by that LLC, anyone identified as a manager, or equivalent, may sign, and anyone with a corporate-officer-type title may sign (e.g., president, vice-president, secretary, treasurer, chief executive officer, chief operating officer, chief financial officer, etc.).
    • If the band has formed a limited liability partnership (“LLP”), and the mark is owned by that LLP, because, generally, all partners in an LLP are recognized as having general agency authority to bind the partnership in the ordinary course of business, anyone identified as a partner may sign.

Back To Top

Once I receive a registration certificate, does the registration last forever?


Although it is possible to maintain a trademark registration indefinitely, you must file required maintenance documents at regular intervals to keep the registration alive.  If you fail to file the required maintenance documents during the specified time periods, the registration will be cancelled.

For additional information on maintaining your trademark registration, please visit the “Keeping Your Registration Alive“ page on the USPTO’s website.

For more information, please watch the TMIN video titled “Post-Registration Issues.”


Back To Top

How can I check the status of, or view documents from, my application or registration?


You can check the status of your application or registration at any time via the Trademark Status and Document Retrieval (TSDR) system.  To check the status of an application or registration, go to the TSDR page, enter the application serial number or registration number in the box to the right of the box with the wording “US Serial, Registration, or Reference No.” and click on the blue button labelled “Status.”

You can also use TSDR to view all documents in the application or registration file.  To view a document, enter the application serial number or registration number in the box to the right of the box with the wording “US Serial, Registration, or Reference No.” and click on the blue button labelled “Documents.”  This will return a listing of all incoming and outgoing documents in the file.  To view a specific document, click on the name of the document you wish to view in the listing under the heading “Document Description.”


Back To Top 

Who helps me protect my rights?


If you receive a trademark registration, you are responsible for enforcing your rights; the USPTO does not “police” the use of marks. While the USPTO attempts to ensure that no other party receives a federal registration for an identical or similar mark for, or as applied to, related goods and/or services, the owner of a registration is responsible for bringing any legal action to stop a party from using an infringing mark.  If you suspect that your registered mark is being infringed upon or may be subject to future infringement, the registered mark can be recorded with U.S. Customs and Border Protection through its e-Recordation application.

 

Back To Top 

What are all these non-USPTO solicitations?


Private companies not associated with the USPTO often use publically available trademark application and registration information from the USPTO’s databases to mail or e-mail trademark-related solicitations.  These companies may use names that resemble the USPTO name, and may feature, for example, one or more of the terms “United States,” “U.S.,” “Trademark,” “Patent,” “Registration,” “Office,” or “Agency.” Increasingly, some companies attempt to make their solicitations mimic the look of official government documents rather than the look of a typical commercial or legal solicitation by emphasizing official government data like the USPTO application serial number, the registration number, the International Class(es), filing dates, and other information that is publicly available from USPTO records. Many of these private company solicitations refer to other government agencies and sections of the U.S. Code and require “fees” to be paid.

You should read all trademark-related communications carefully before making a decision about whether to respond. All official correspondence from the USPTO will be from the “United States Patent and Trademark Office” in Alexandria, VA, and all e-mail communication from the USPTO will be from the domain “@uspto.gov.”

For additional information on solicitations from private companies not associated with the USPTO, please visit the “Non-USPTO Solicitations“ page on the USPTO’s website.
 

Back To Top