Trademarking Your Band Name: A Rose, By Any Other Name
July 27, 2009 in Doing Business
A Layman's Guide to Copyright And Trademarks
Please remember that this is for informational purposes only - retain your own legal counsel before making any major decisions!
You've come up with a really cool band name. You love it, it fits your band perfectly, and you don't ever want to change it. Now what can you do to protect it?
Make sure you are the first one to think of it. If you unwittingly choose the same name as a band who has achieved success, in or out of Canada, you may find yourself with a "cease and desist" notice. You also have to check for bands who may have used the name sometime in the past and, while they may not be performing anymore, have released recordings using the name. You will want to ensure that your chosen name is free of restrictions before you start to build a reputation or release albums. But don't limit yourself to one name. Before you begin your searches, come up with a list of alternates to check at the same time. You should also have a band agreement stating who owns the name, whether or not you trademark it.
It's important to search all avenues before you apply for trademark. Once you apply, you don't get your money back - even if the name isn't available. Once you have completed all your searches and are convinced that you are the first band to invent this brilliant name, start by registering it on the internet, so other bands will know it's taken. If you find another band using the name in the future, contact them and let them know when you began using it.
Obviously trademarking offers the best legal protection. But if you can establish "first use", you have "Common Law" rights (see below). And registering your name in every country would cost a fortune. Start with the markets where you will be visible (i.e. Canada).
What is a trademark?
Trademarks are images, symbols, words or even an overall "look" that identify a trademark holder's goods or services from those of another. They are the brand names like "IBM" or "Volkswagen" that we associate with a particular product, or symbols - like the NBC peacock, or the "Coca-Cola" script. Trademarks are significant in that they allow a consumer to be sure that they are getting the particular goods or services that have come to be associated with a certain seller - the "goodwill" associated with a particular brand. For this reason, trademarks are a very valuable commodity and thus, when they are infringed, serious issues are raised. A registered trademark can be protected through legal proceedings from misuse and imitation.
There are three basic categories of trademarks. The one applicable to bands is "words or symbols that distinguish the wares or services of a specific firm or individual."
Trademarking in Canada does not protect you in other countries. If your services/products are sold in other countries, you should consider applying for foreign registration. Contact a trademark agent or the embassy of the country in question to find out about procedures.
You cannot copyright a band name. The correct legal protection is a trademark. Within trademark law there is a category called servicemarks. A trademark identifies a product, while a servicemark identifies a service (duh). As a band's business is "providing entertainment services", a servicemark is the proper tool to protect a band name.
The federal agency responsible for registering trademarks in Canada is the Trademarks Office (TMO), directed by the Registrar of Trademarks. The TMO is part of a larger agency called the Canadian Intellectual Property Office (CIPO), which is part of Industry Canada. CIPO handles other forms of intellectual property as well (remember "Copyrights" from the last Session?) The TMO receives applications for trademarks, issues registrations, keeps records and provides information to the public.
To Register, or Not to Register
Registration is legal title to intellectual property (much the same way as a deed is title to a piece of real estate). It verifies the exclusive right you have established through use of a word, symbol, style or combination of these. A registered trademark is one entered on the Trademarks Register. You are not required to register your trade-mark - using a mark for a certain length of time can establish your ownership through "Common Law"-but it is highly recommended. (Generally the first party who uses a mark in commerce has the right to use the mark in that geographic area, and the natural zone of expansion therefrom. If your band uses the name "The Bugs" in Regina, and you are the first to use that name, you hold the superior rights in the area where you are actually using the mark and any surrounding areas in which the use of the mark would naturally extend.) If you started using your name first, you can prevent others from using it. However, this only counts in the area where you have used it. For example, if you started playing Regina in 1989 and never played or distributed music outside the this area, you couldn't stop a band from using your name in Ontario. They still couldn't use your name in Regina area since you were the first to use it there. Keep careful records of your public use of the name - where and when you played or sold records, and any publicity, to prove in which territory you have used the name and for how long.
Registration is direct evidence of ownership, and helps ward off potential infringers. The process of registration, with its checks for conflicting trademarks, will ensure that you are claiming a unique mark, and help you avoid infringing other parties' rights. In a dispute, the registered owner does not have to prove ownership; the onus is on the challenger. Use of an unregistered trademark can lead to a lengthy, expensive legal dispute over who has the right to use it. If you fail to use your mark for an extended period, your registration may be cancelled. Registration gives you the exclusive right to use the mark across Canada for 15 years, renewable every 15 years thereafter.
Once registered, you may sell or otherwise transfer your rights to a trademark through a process called assignment. You may also license rights to your trademark.
But first, is your name original?
A registration may be declared invalid because of the prior use in Canada of a trade name* which is similar to the registered mark. You should conduct a search of existing trade names before filing a trademark app. To do this, you can consult a variety of sources, including the NUANS (Newly Updated Automatic Name Search) database, through the Corporations Branch. This will find registered company names, and registered trademark names. (There is a fee involved). To ensure a thorough search, it is best to hire a trademark agent.
Why do you need a preliminary search? It helps you determine whether your application has a chance for success. It helps you avoid infringing other people's trademarks. Before you apply for registration, your agent should conduct a thorough search of trademark records to see if your trademark could be confused with someone else's. This will determine if your application would be a waste of time and money in its present form.
You may consult one of the companies licensed to use the electronic database, or hire a freelance trademark searcher or registered trademark agent. Fees may range from $250-1000. Freelance searchers & trademark agents are listed in your local yellow pages under "Searchers of Records" and "Trademarks". Most Sask. law firms have a trademark lawyer. To do a proper search, you will have to check for all possible versions of the mark. For a word mark, look for all conceivable spellings. The TMO cannot conduct the search for you, or advise you on whether your application will meet all criteria and be original. This can only happen in the examination process, after you've filed and pay the dues.
Someone doing business with a certain name, but who has not registered it. If you try and register with this company's trade name, and they find out about your application, they may challenge it - arguing "common law" ownership of the word name.
Preparing an application and following it through is a complex task, particularly if a third party challenges your right. You may file on your own, but it is highly recommended that you hire a registered trademark agent to do so on your behalf, especially if you intend to register in other countries. An experienced, competent trade-mark agent can prevent problems such as a poorly-prepared application or inadequate research. The TMO can provide you with a list of registered agents.
Who can register a trademark?
Companies, individuals, partnerships, trade unions and lawful associations may obtain registration of their marks of identification for wares or services, provided they meet the requirements of the Trademarks Act and Regulations.
How do you register?
File an application for registration with the TMO. Your app then goes through a stringent examination process to make sure that it meets all requirements of the Trademarks Act. In most instances your trademark must be used in Canada before it can be registered. You can base your application on "proposed use," but must put your trademark into use before registration can occur.
How much does it cost?
The basic federal government costs are: $150 (non-refundable) for each trademark applied for; $200 for a certificate of registration, if your application is successful. That doesn't include agent fees (if you use one).
- a preliminary search (done by you or your agent) of existing trade-marks, trade names, etc.
- make your application
When the TMO receives your app, it:
- searches their records for other trademarks that may conflict with yours
- examines your app for compliance to the Trademarks Act and Regulations
- publishes the app in the Trademarks Journal
- allows time for challenges (Anyone may, upon payment of $250, file a statement of opposition)
- if no one files an opposition, the mark is allowed. Upon payment of the $200 registration fee and the filing of a declaration of use (in the case of a proposed use trade-mark), your mark is registered.
Will the TMO tell you during your preliminary search if your trademark can be registered?
Nope, the Office cannot provide a judgment at this stage. That will only happen during the examination process. Officials will give you general info about rules and regulations.
Things you can't register as trademarks:
- Names/surnames: if primarily your full name or surname.
- Clearly descriptive: a word that describes a feature. e.g. "juicy" for apples. All good apples could be described as "juicy" - these are inherent characteristics of the wares. If you were allowed to register these words, no other apple sellers could use them to promote their goods, which would be unfair.
- Deceptively misdescriptive: a mark which is not clearly descriptive, but clearly misleading. e.g. you could not register "sugar sweet" for candy sweetened with artificial sweetener.
- Place of origin: a word that designates the place of origin of the wares/services, or misleads the public into thinking that they come from a certain place if they don't. e.g. "Paris Fashions". Allowing you to use placenames as part of your trademark would give you a monopoly on a geographical term and be unfair to others.
- Words in other languages: if they are the name of the wares/services - such as "gelato," (Italian for ice cream.)
- Causing confusion: Beware of words, symbols, sounds and ideas that suggest someone else's trademark. If it's confusingly similar to a registered or pending trademark, it will be refused.
- Prohibited marks: a trademark that resembles certain official symbols (unless you have the consent of the authority) - e.g. the Canadian Flag, crests of the RCMP, provincial symbols. Also prohibited is subject matter that is obscene or immoral. Your trademark may not include profane language, obscene visuals or racial slurs.
- What's a disclaimer? This is a statement indicating that you do not claim exclusive rights for a certain word(s) appearing in the trademark. In this way, you can use clearly descriptive words which are unregisterable on their own (described above), with the understanding that you have no rights over them. e.g. "Frugden Ice Cream", the "ice cream" would have a disclaimer.
The Trademarks Act does not contain marking requirements. However, it is advisable to use them, and you can indicate your registration through certain symbols, namely, ® (registered), ™ (trademark), SM (service mark), MD (marque déposée) or MC (marque de commerce). The symbols ™, SM or MC may be used regardless of whether the trademark is registered. The ® or MD should be used only if the mark is registered.
Policing your trademark
The TMO will prevent someone from registering a mark that is the same or confusingly similar to yours. It does not, however, keep an eye out for infringement. It is your responsibility entirely to monitor the marketplace and, if you find someone using your registered trademark or a mark/trade name that may be confusing with your trademark, to take legal action. Someone infringing on trademark rights may be accountable to you by way of an injunction, i.e. an order to cease the infringing activity and/or damages.
What do I need to include in my application?
1. the appropriate, completed application form;
2. the application fee; and
3. a drawing of the trademark if application is made for a word or words in special form or a design.
There are 175 countries that register trademarks and 60 which allow the registration of entertainment service-marks. Even if you focus on the five or so most important jurisdictions (Great Britain, Canada, Germany, Mexico and France), you are still talking about a great deal of money for trademark protection on a worldwide basis.
Another option you should be aware of is incorporation. If you incorporate your band, there may be tax advantages; plus, they will automatically do a NUANS search (see above) before letting you incorporate. The cost is around $300, and it offers your name some legal protection (although not the same level as trademarking).
In conclusion, you should: first, research the proposed name for conflicting uses; second, document the dates and territory where you use the band name; third, take steps to protect the name through servicemarks.
Our website (saskrecording.ca) includes links to CIPO, or visit the sources below if you need further clarification.
Places to start looking for other bands with your name or similar names…
- Trademarked Canadian band names: CIPO, (819) 997-1936 or fax (819) 953-7620. Try searching their database at cipo.gc.ca to start looking yourself.
- www.bandreg.com - also has cool music info
- www.ubl.com (The Ultimate Band List)
- www.bandname.com(N. American Band Registry)
- databases used by retail stores -HMV, Tower, etc. (Helpful in locating bands no longer performing but who may have ownership of the name.)
- general internet searches
- Canada - SOCAN, 1-800-937-6226
- U.S. - ASCAP, BMI, SESAC
- U.S. - The annual Billboard International Talent & Touring Directory (check in libraries)
Sources, or for further info:
- CIPO (cipo.gc.ca);
- the Lawboard - a cool bulletin board, but note it's U.S. law (www.lawgirl.com/trademark.shtml)