How to Play the Name Game: The Why and How of Trademarks

Excerpted from the book Indie Business Power: A Step-by-Step Guide for 21st Century Music Entrepreneurs, by Peter Spellman

Whether you are starting a new band or founding your own recording company, your business’s name will be its number one asset, so it makes sense to take care in choosing one. The right name will help distinguish you from a sea of bland competitors, provide customers with a reason to hire you, and aid in branding your business or music. Here are five guidelines to help you decide:

• Make the name meaningful. It may be the first thing someone knows about your music or your business; consider it an important marketing tool.
• It should be easy to pronounce and remember.
• Make sure it’s unique and available.
• Choose a name that you can grow with. Be forward thinking so that it can expand with you.
• Check if you can obtain a suitable Internet domain name for it, too. This can be done through a registration website, such as godaddy.com or register.com.

Once you have selected a name, it is important to get it trademarked. A trademark protects the distinguishing identity of goods and services. A word, name, symbol, phrase, slogan, or a combination of these items, can be trademarked. Unlike patents and copyrights, trademarks affect all businesses because they distinguish the goods and services of one company from those of another. When you use the name of your group or business publicly, you are using a trademark.

Both the federal government, through the US Patent and Trademark Office (USPTO), and each state have the power to grant trademarks. Federal law requires marks to be used in interstate commerce (i.e., doing verifiable business between two or more states), while state registration can be used to protect a regional mark from competitive use. The ® symbol means the USPTO has reviewed and registered the mark. A “TM” symbol, on the other hand, indicates that the word, phrase, or design is being used and claimed as a trademark, but is not yet federally registered.

Before applying for a trademark, you will want to ensure no one else has already registered the name. You can do a trademark search for free on the Internet by visiting the USPTO website (www.uspto.gov). Or you can visit one of the Patent and Trademark Depository Libraries available in every state. Most of these libraries have step-by-step instructions for searching registered and pending marks. One place to search for unregistered trademarks is The Thomas Register of Goods and Services (www.thomasregister.com). To check artist and band names, you can check online directories, like the Ultimate Band List (www.ubl.com) and the All-Music Guide (www.allmusic.com).

Because the name is a valuable asset of your band or business, it’s crucial to protect it relentlessly. You automatically have some protection for a trademark, if you were the first person to use it in commerce, even if you didn’t formally register it with USPTO. However, it is easier to prove an infringement case and collect damages, if the mark has been formally registered. Registering also provides the following benefits:

• Notice to everyone that you have exclusive rights to the mark
• Entitlement to sue in federal court for infringement
• Incontestable rights to use the mark for commerce
• registration symbol ®, as opposed to simply TM
• Basis for filing a trademark application in a foreign country

Trademarks are granted for 20 years and may be renewed indefinitely if a firm continues to protect its brand name. An entrepreneur can lose the exclusive right to a trademark, if the trademark loses its unique character and becomes a generic name. The USPTO will not register: names of living persons without consent; the US flag; some federal and government insignias; the name or likeness of a deceased US president without the widow’s consent; words or symbols that disparage living or deceased persons, institutions, beliefs, or national symbols; or marks that are judged to be immoral, deceptive, or scandalous.

The trademark registration process is fully explained on the USPTO website. You can either register electronically or by mail. The current fee is $375, or $325 if filed electronically. To register, the mark must be used for commerce that crosses state, national, or territorial lines, for example, a record label that sells CDs in other states or a touring band that performs in other states.

To evaluate the registration, the USPTO office answers the following questions: Is the trademark the same as or similar to an existing mark used on similar or related goods and services? Is the trademark on the list of prohibited or reserved names? Is the trademark generic—that is, does the mark describe the product itself rather than its source? Is the trademark too descriptive (not distinctive enough) to qualify for protection? If the office deems that none of these factors are true, the trademark is eligible for registration.

You can expect to receive a “Filing Receipt” within eight weeks. Afterwards, you will receive notice that your band or business name is to be published in a government publication known as The Trademark Gazette. If there is no opposition to your mark, your registration will be issued. The whole process takes from 12 to 18 months. In the mean time, your intent to establish a trademark can be shown by affixing the letters TM next to your company name or logo. Once the registration is complete, you may begin using the ® symbol.

Peter Spellman is Director of the Career Development Center at Berklee College of Music and a popular speaker at conferences around the country. He is author of the new book Indie Business Power: A Step-by-Step Guide for 21st Century Music Entrepreneurs and provides music career coaching to artists around the world. Find him at www.mbsolutions.com.