constituency arcade: Music Biz 101 ? Trademark Basics

Published on March 16, 2012 by GLAM ????? No Comments

What?s poppin??!

Recently, the firm has been retained by a number of clients seeking to trademark their brand names and logos.? So much so, that I asked my associate, Alicia Ferriabough, Esq., the ?Trademark Queen,? to answer some commonly asked questions.

TRADEMARK BASICS

1.? ? ? ? ?? What is a trademark?
A trademark is usually a word, symbol, design, a slogan or a combination of these elements which identifies and distinguishes the goods or service of one party from others.? Furthermore, a trademark identifies the source (i.e., the manufacturer) of a good or service (e.g., Johnson & Johnson is the source of ?Baby Lotion?; Apple is the source of the ?iPod?).

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2.? ? ? ? ?? What is the purpose of trademark law?

The purpose of trademark law is to prevent unfair competition and to protect consumers from being misled by confusingly similar trademarks used by unrelated manufacturers (e.g., Fanta might make a ?Cola?, but they are not the source of Coca-Cola).? The legal standard is whether similar trademarks will cause a ?likelihood of confusion? in the marketplace.? Trademark laws serve to assure a consumer that the product or service that they are buying that bears a particular trademark is delivered with a standard of quality associated with that trademark in the marketplace (e.g., Cash Money Records is associated with hit records).

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3.? ? ? ? ?? Do I need to register a trademark in order to enforce a mark?

No formal registration is required to protect a trademark, just actual use in interstate commerce. However, registering a trademark with the U.S. Patent and Trademarks Office (USPTO) gives constructive notice to the public which prevents anyone from claiming that they did not know that the trademark existed.? Registration also provides evidence of superior use of the trademark as well as various procedural advantages in court when pursuing trademark infringers.

4.? ? ? ? ?? How many applications must I file?

We usually file two applications for our recording artist clients: one for ?live musical services? and one for ?sound recordings? ? they are two separate classifications and the USPTO charges a fee per application, per classification.? If you also have a design logo that you use to identify your goods or service, then that would require one or two separate applications as well.

5.? ? ? ? ?? How long does trademark protection last?
Unlike copyrights and patents, trademark rights can last indefinitely as long as the owner continues to use the trademark to identify its goods or services. The term of a federal trademark is 10 years, with 10-year renewal terms. However, the USPTO requires that between the 5^th and 6^th year after the date of registration, the registrant must file an affidavit stating that the trademark is still in use. If no affidavit is filed, the registration is cancelled. The USPTO does not remind the trademark owner of this deadline so it is up you, the trademark owner, to keep track of the renewal terms.

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6.? ? ? ? ?? How long is the trademark process?

It could take up to 6 months or longer depending on the backlog at the USPTO and whether there are any issues that need to be addressed with your application, such as third party opposition to registration or because the USPTO issues an Office Action requesting further information (e.g., a consent of a living individual to use his/her stage name) or declining registration for a host of reasons, which could be appealed by the registrant.

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7.? ? ? ? ?? How can I protect my trademark once it?s registered?

If you?are successful in registering the trademark, it is your obligation, not that of the USPTO, to police the trademark (i.e., send cease and desist letters, sue, file for injunction, etc. to infringing parties) and to ensure that third parties are not infringing on your trademark or substantially similar trademarks.? There are specific service providers that you can retain to help find potential infringers around the world.? To further protect your trademark, use ?TM? or ? to provide additional notice to the general public.? Keep in mind that these displays can only be used with the registered trademarks and on goods and services actually stated in the Certificate of Registration (which is what you will receive if the trademark registration process is successful).

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8.? ? ? ? ?? Could the USPTO void a trademark once it?s registered?

Yes, a trademark can be cancelled for lack of use in interstate commerce.? It is also possible for a registration to be voided when a third-party user of the same or substantially similar trademark proves that that they are actually the ?superior? or first users of such trademark, despite their lack of registration with the USPTO.? An example of this happened when Avon introduced a new perfume called ?Toccara? and registered the trademark with the USPTO.? A few months later, a Japanese company became aware of Avon?s registration and challenged it.? The Japanese company also sold perfume under the name ?Takara?.? The Japanese company argued that although they did not register with the USPTO, they made use of the trademark in commerce first and because they were selling the same type of product, consumers may be confused about the source of goods; this despite the different spelling.??Avon stopped selling Toccara and their registration was cancelled.

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9.? ? ? ? ?? Does my registration with the USPTO protect my trademark overseas?

Unfortunately, it does not.? But there is another vehicle for international protection called the Madrid Protocol, which is an international treaty that allows a trademark owner to seek registration in any of the countries that have joined the Madrid Protocol by filing a single ?international application.?? The resulting ?international registration? allows trademark owners to seek protection in member countries, each of which apply their own rules and laws to determine whether the trademark may be protected in their jurisdiction. There are separate requirements and fees involved.

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The area of trademark law is vast and this article does not attempt to cover all bases.? You should visit www.uspto.gov for more information on trademarks and the trademark application process or please consult with a competent trademark attorney.