What if another band has trademarked our name?
March 15, 2011
Dear Music Lawyer,
My Austin band has some questions about the trademark of our name. Apparently, there is another band in California with the same name that has the name trademarked for "live performance by a music group." The problem is that we already have the name out there and semi built-up. At this point, changing the band name would be a step backward. Is there any way around not changing the name? What if we just abbreviate our current name?
—Jesse
Dear Jesse,
There's probably not a way around changing your band name if the California-based band has a federal trademark, particularly if they had been using the name first. After all, you are talking about using the exact same name in the same manner, as the name of a live performance group in the United States.
(Note: If you were talking about using the name to start a cheese shop, you’d likely be fine because it’s unlikely that the California band is going to branch out and try to start up a cheese shop under their name and therefore your use of the same name is unlikely to confuse the public. Avoiding consumer confusion is the main point.)
Trademark protection flows from use of the mark (in this case, the use of the band name), and earlier uses of the trademark generally trump later uses. Therefore, if the California band formed before your band, even if they didn’t register a trademark, they would still have superior rights to use the name in the areas where they had used it (e.g., where they toured and/or sold CDs), and you might find yourself the not-so-proud recipient of a cease-and-desist letter. Worse, you might get sued.
Even if they had only used the name in California before your band sprang to life, you would have to consider whether you are willing to change your name when, for example, touring in California.
As far as changing the name, abbreviating the name is probably not enough. Trademark law protects consumers against competitors using the same or a "confusingly similar" mark. Even translating the name to another language can be perceived as confusingly similar.
In my experience, best practice in these situations is to change the name sooner rather than later. The longer you use the name, the more susceptible you are to them coming after you for trademark infringement and the more work you'll have to do to get the public to associate you with a different name. Plus, there's a product issue/expense if you have to redo artwork on your CDs.
—Amy E. Mitchell
