Trademark and Servicemark: The Significance of Branding in the Entertainment Business
What do Jay-Z, Frank Sinatra, Babe Ruth, Madonna and Albert Einstein have in common? Their names are all federally registered trademarks:
- Jay-Z is a United States federal trademark registered in 4 classes on September 4, 2001, as performing artist name (reg. # 2,485110), clothing (reg. # 2,485107), posters (reg# 2,485104), cds/dvds/etc. (reg. # 2,485107).
- Frank Sinatra is a United States federal trademark registration No. 1,313,931, registered January 8, 1985.
- Babe Ruth is a federal trademark registration No. 1,863,687, registered November 22, 1994; Madonna is a federal trademark registration No. 1,473,559, registered January 19, 1988; Albert Einstein is a federal trademark registration No. 1,216,122, registered November 9, 1982.
Popular icons, through the application of their name and marks, provide exploitation revenue opportunities even long after their careers have ended. Copyright does not protect titles or short phrases. This is the province of trademarks and service marks. Film titles, book titles, song titles, and personalities' names can be protected by common law, state or federal trademark statutes.Unlike copyright law, which since 1978 is exclusively federal in nature, trademark law comes in a baffling array of variations. There is the federal Trademark Law, the Lanham Act, (15 U.S.C. § 1051, et seq) some 50 state statutes for state trademark law, and common law unfair competition, which can directly affect the entertainment industry and the talent.
Disputes regularly erupt between past and present band members over former members' ability to use the famous band’s name as they attempt to continue their performing careers apart from the group that initially gave them the popularity, such as The Platters, The Coasters, The Drifters, The Four Freshmen, and Little Anthony and the Imperials. Similarly, bands about to sign a record deal have all too often been confronted with the problem that another band adopted and used the band’s name earlier, and thereby acquired superior trademark rights, (for example, Nevada-based singing group Shenandoah held superior trademark rights to an earlier use than the Nashville-based recording artist who went by the same name). Thus, a band is forced to consider changing its name, buying off its competitor, or face the prospect of protracted litigation. See also Chi-Rock versus Twista.
Comparatively, the power of trademarks is also demonstrated when Arrested Development sued Fox for the unlawful use of its name of a show with the same moniker: www.law.com/jsp/article.jsp, and Spike Lee was successful in his settlement with Spike TV over the use of his name: inventors.about.com/b/a/007680.htm.
IT IS COMMON FOR ARTISTS TO LOSE CONTROL OF THEIR NAME IF THEY DO NOT OWN THEIR NAME, EG PRINCE, BIGGIE SMALLS, ETC. EVEN BADBOY HAD PROBLEMS WITH THEIR BRAND NAME AND IT TOOK THEM 9 YEARS OR SO TO RECENTLY COMPLETE THEIR APPLICATION AND OBTAIN REGISTRATION. THEREBY PREVENTING DIDDY FROM MAKING REAL MOVES WITH HIS LABEL. (filed on January 4, 1994 only fully registered, # 2,967303 on July 12, 2005!)
Occasionally, simple slogans or entertainment identifiers become so inextricably intertwined with a concept of the creator as to become equal to or more important than the creator’s name. For example, everyone knows the marks "007" or "James Bond," but not everyone can remember the author of the original series of books or the producer-distributor of the successful series of films which followed. Accordingly, the marks became more important for public consumption than the original creator or the company that distributed the materials. Who should own those marks? Who should have the right to license and profit from the marks? HOW DOES APPLY TO DOMAIN NAMES, SEARCH ENGINES THAT UTILIZE NAMES, AND NEW MEDIA MARKET BRANDING? These and other questions can be less difficult to decide if one takes the NECESSARY LEGAL STEPS OF REGISTERING TRADEMARKS AND SERVICE MARKS BEFORE MARKETING PRODUCT OR SERVICES.
For more information, see: www.musiciansatlas.com/newsletter/nov05/copyright11_05.htm
Trademark Basics: Legal Procedure
- The Examination Process
Approximately four months after the trademark filing, a trademark lawyer at the United States Patent and Trademark Office (USPTO) reviews the trademark application and determines whether the mark may be registered. Should the USPTO trademark lawyer decide that a mark should not be registered, he will issue a letter (Office Action) explaining the reasons for refusal.
The applicant must respond to any objections within six months, otherwise the trademark application is deemed abandoned.
The most common grounds for the trademark lawyer from the USPTO to refuse a trademark registration are likelihood of confusion between the applicant’s mark and a previously registered mark or that the mark is merely descriptive in relation to the applicant’s goods or services.
The trademark lawyer from the USPTO may also refuse the mark because he deems the mark to be primarily geographically descriptive, primarily geographically misdescriptive, a generic term, primarily merely a surname (Smith Apples), or a scandalous or immoral trademark.
- Publication for Opposition
The second phase to registering a trademark is publication for opposition. If the USPTO trademark lawyer raises no objections to registering a trademark, or if the applicant overcomes all objections, the USPTO trademark attorney will approve the mark for publication in the Official Gazette, a weekly publication of the USPTO. The USPTO trademark attorney will send a Notice of Publication to the applicant stating the date of publication. Any party who believes it may be damaged by registration of the mark has 30 days from the publication date to file a Notice of Opposition or a Request to Extend Time to Oppose. In the rare event of an opposition (only 3% ofall marks are opposed), a proceeding similar to a trial is held to determine whether the opposition is based on valid grounds, such as the applicant’s mark being confusingly similar to the opposer’s mark. If no opposition is filed or the opposition is unsuccessful, the trademark application matures to a registered mark or receives a Notice of Allowance.
- Registration or Notice of Allowance
The third phase to registering a trademark is the issuance of a Registration or Notice of Allowance. If the trademark application was for a mark already used in commerce, the USPTO trademark attorney would register the mark and issue a registration certificate generally about four months after the date the mark was published.
If the trademark filing was based on an Intent-to-Use basis, the USPTO trademark attorney will issue a Notice of Allowance about four months after the date of publication. The applicant then has six months from the date of the Notice of Allowance to either (1.) use the mark in commerce and submit a Statement of Use or (2.) request a six-month extension of time to file a Statement of Use. If the Statement of Use is filed and approved, the USPTO trademark attorney will issue a registration certificate.