What do I do if newer bands are using my band name?

September 6, 2011

Dear Music Lawyer,

How do I protect my band's name when other groups pop up using the same name? Can I copyright it? I bought the domain name first, released music under that name on iTunes first and have the facebook URL for it too. What do I do?

—Jerome

Dear Jerome,

Contrary to popular belief, band names cannot be protected under copyright law. Band names and logos are "marks" that can be protected by trademark law, a body of law aimed at preventing unfair competition and consumer confusion. Trademark protection flows from use of the mark (in this case, the use of the band name).

The primary way to stake your legal claim to your trademark is to register your trademark. If you believe that there are current infringers of your mark, you may also wish to send cease-and-desist letters to such users asserting your rights in the band name and demanding that they stop using the name. (Note: Cease-and-desist letters tend to have more teeth if you have registered your trademark. Otherwise, it often turns into an argument about which band used the name first and where. Such letters also tend to be more powerful on a lawyer’s letterhead.)

In the United States, you can apply for registration of your trademark at the state level and/or the federal level. A federal trademark registration is much more powerful in that, if granted, it precludes an alleged infringer of the mark from using the mark nationwide. State trademark registration only precludes an alleged infringer of the mark from using the mark in that particular state.

TIP: State trademark application fees tend to be much lower than the federal trademark application fees and processing times are usually much faster at the state level. Therefore, some bands like to file in their home state first to get some kind of public record of their claims to the name. For example, in Texas, the trademark application fee is currently $50 per class of goods or services and applications are often processed within a few weeks. Trademark filing fees with the United States Patent and Trademark Office? range from $325 to $375 per class of goods or services and application processing is generally 1 to 1.5 years.

Before you rush out to file your trademark application, you would be well-advised to speak with a trademark attorney about your specific mark. Trademark law is nuanced and there may be barriers to registration of your mark. A trademark attorney should be able to warn you of any potential pitfalls prior to you plunking down hundreds of dollars in nonrefundable filing fees.

Regardless of whether you are planning to file an application for a federal trademark registration or send out cease-and-desist letters, you, your attorney, or a trademark search firm should conduct a comprehensive search to determine if anyone else used your band name before you. As mentioned in more detail in my March 15, 2011 post, earlier uses of a trademark generally trump later uses. While having the domain name, first iTunes presence, and facebook URL can be helpful evidence that you have superior rights in the name, it could be that prior users existed and were just not as web savvy.

—Amy E. Mitchell