Is it worthwhile for musicians to obtain a band trademark? When you think of bands like The Rolling Stones, AC/DC, Metallica, the Ramones, the Red Hot Chili Peppers, Aerosmith, KISS, and Iron Maiden, their logos and brands are immediately identifiable and familiar. These brands also happen to be worth millions.
The trademark of a band name or logo serves to identify and protect these brands, and can be hugely valuable in the music industry. The band trademarks listed above are arguably as identifiable as the band’s songs, and in many ways, just as valuable.
What can be protected via a Band Trademark?
Band trademarks can assume numerous forms. There are traditional Word Marks: Metallica, Iron Maiden, and Aerosmith are all word marks that have been registered with the United States Patent and Trademark Office, and protect the words themselves when used in association with music. Word marks can also take the form of personal names. For example, John Lennon, Mick Jagger and Bob Dylan all have trademark protection on their performing names.
Another type of band trademark is a Design Mark, which might consist of stylized words, letters, and/or a design element, like a logo. So the classic tongue of The Rolling Stones, the asterisk logo of the Chili Peppers, the stylized letters used by Metallica, Iron Maiden, and KISS…all of these designs are trademarked in addition to the words themselves.
Titles of songs and albums receive limited benefits under trademark law. A band generally cannot register trademark rights in the title of an album or song to prevent other artists from using it. For example, The Replacements released an album titled Let it Be, which of course The Beatles did years before. A title of a song or album may be protectable, if it is used in connection with merchandise, such as clothing. For example, Led Zeppelin would likely have a successful claim of trademark infringement if another band made t-shirts with ‘Stairway to Heaven’ written on them, because the song is so directly linked with Led Zeppelin.
The general prohibition on registering titles does not apply where there is a series of works involved. For example, Meat Loaf owns a federal trademark registration for the mark BAT OUT OF HELL, which he used as the title of a three-album series.
Without a Band Trademark, what rights do I have in my band name?
You can establish rights in your band’s name without a trademark, through the simple use of the name. However, absent a federal trademark registration, your rights in a mark are limited geographically to the scope of your reputation. Therefore, without a trademark, it is possible for two bands to exist with the same name, and neither would have a claim against the other unless the “reach” of the bands overlaps.
If two bands have the same name and their territories do not overlap, each band would be entitled to prevent the other from entering into its “zone of protection”, and both have the right to expand into “unoccupied territory” so long as their areas of operation remain remote. Thus, for example, a band in Toronto with only a regional reputation in Ontario can peacefully coexist with a band in Vancouver using the identical name. However, if either of those bands land a record deal with national distribution, or release a song online that gains significant exposure in the other’s territory, they could bring an action to stop the other band from using the name further. Of course, the concept of completely isolated territories is a bit nebulous in the Internet age, but the principle still applies.
What are the benefits of a Band Trademark registration?
The case of Stuart vs. Collins demonstrates the benefits of a federal trademark registration in the music industry. The Stuart case involved a little-known rock musician named Thomas Stuart who performed in a group called The Rubberband. Although the group’s primary area of operation was in the southeastern United States, Stuart procured a federal trademark registration for the band’s name. Subsequent to the registration date of Stuart’s mark, well-known funk bassist Bootsy Collins began to tour and release records under the name Bootsy’s Rubber Band. Stuart filed suit, and ultimately was awarded $250,000 after prevailing on his infringement claim. Without a federal trademark, Stuart’s rights would have been limited to his immediate zone of reputation, and the value of his claim would have been greatly diminished. Too bad for Bootsy.
Here are some other benefits of a trademark registration: it will stop dishonest competitors from diluting or tarnishing your band’s image; it will stop new bands from trying to use the name (as the name will appear in the Federal Trademark Register); it might allow you to claim triple the amount of damages if your band name is willfully infringed; in the event a domain name infringes your mark, a federal registration provides standing to bring an action that can force the infringing site to be shut down; and finally, you may be able to enlist the help of US Customs Service officers to stop gray market or counterfeit goods at the border.
When is the right time to obtain a Band Trademark?
My advice: if you take your career seriously (and you must if you’re reading this), you should think seriously about investing in a trademark for your band. In theory, it is never too early to apply for a trademark. A good estimate of cost is between $2,000-$3000 CAD to file a Canadian trademark application, and more to file a US application. I’ve dealt with several band name disputes, and can confirm that they end up costing far more than the cost of a trademark. I appreciate that paying rent, buying a new guitar, and maintaining your tour van might take precedence, but the cost of a trademark will be money well spent. When you look at the ongoing decline in music sales, it’s hard to deny the increasing importance of ancillary revenue streams like merchandise and the increasing value of your band’s “brand”.
Before choosing a band name you should do some targeted Google searches as well as trademark searches on the US Patent Office website (www.uspto.gov) and the Canadian Trademark Database (www.cipo.ic.gc.ca) before committing to the name. When you can afford to, invest the money and secure the trademark. The last thing you want is to get your big break after years of hard work and building up your brand, only to find out that another band owns the rights to your band name and you have to start from scratch. As always, email me with any questions.
30 Responses
Hey Kurt,
first off, this site has been amazing in helping us sort out legal details on getting our band to the next step, thank you. I’m getting into trademarking and am curious about the goods and services portion of the application. Do you have any insight or experience with what goods and services are must haves when applying?
thanks,
Belvue
Hi Belvue
Email me at kdahl@murphyandcompany.com and I’ll connect you with my trademark agent.
Thanks
Kurt Dahl
Entertainment Lawyer
Hi Kurt,
This is awesome, thanks for posting such a relevant topic. Can you please clarify in registering a band name as trademark, it is obvious we would associate the name with anything music (i.e. vinyls, downloadable music, songs etc.), but do we also include merchandise that could have the printed trademark name on it?
Thanks!
Thanks Swey. I would definitely include merchandise, as it’s such an important revenue stream these days.
Hey Kurt,
Thank you so much for this information!!
My question is: if the artist is located in Canada, do we have to file 2 Trademarks, one for Canada and one for US?
Thank you!
Hi Mike,
It’s up to you. If your band has a real presence in the US (touring frequently, selling a lot of merch and music there, etc), then at some point, a US app is worth it.
My band, for example, only has a US TM and not a Canadian one. We should apply for a Canadian one, as most of our business is done here. It’s just a matter of finances and getting it done. I would suggest filing for Canada first, as it’s cheaper and where you are based. We just had a label in the US that filed for us years ago.
Hope this helps
Kurt Dahl
Entertainment Lawyer
Thanks for this very informative post. I’m looking at trademarking a band sometime in the not to distant future and both this post and this excellent question has answered a few of the questions I had rolling round in my head. I’m in New Zealand and so now understand I’ll have to register in Australia and the US separately should things progress to the point where touring like that actually occurs. Which brings me to two questions:
1. If I was registered here and later a band registered with the same name in the US what would happen? (I’m guessing the band with the most clout would win)
2. The name I want to register hasn’t been registered before and from the searching I’ve done doesn’t seem to have been used before either. However, there is a squatter sitting on the (US based) .com name. Would my ‘other country’ Trademark registration have any bearing on this use?
Many thanks!
Hi Steve,
Thanks for your questions, here are my answers:
1) Two bands with the same name that are conducting business in different territories can exist peacefully, assuming neither moves into the other’s territory. The lines become blurred in the Internet age, but the point remains the same. If they start to move into the other’s territory, it’s a matter of hiring lawyers and proving who has a stronger claim, likely based on prior use (i.e. who started using the name first).
2) No. Your Australian trademark wouldn’t likely effect the US based .com user. Again, different territories.
Thanks
Kurt Dahl
Entertainment Lawyer
Regarding #2, you could always hire an entertainment lawyer to draft a Cease and Desist letter, and you might be successful.
Thanks,
Kurt Dahl
Entertainment Lawyer
Hi. I’m from Trinidad and we’ve been having an extremely difficult time with this whole Trademarking thing. Our band’s name is Shay Grey, however, when we did a search, the name was registered internationally. But one of my friends said when he registered his business, “ColorCraft” he had to put the words together because he couldn’t patent the word “color” or “craft”. Is it different for the music industry? Also, does it matter if the Shay Grey that’s registered is from a different entity rather than the music industry? Would we have to get a new name? Thanks!
I don’t think removing the space between the two words would change things much. The test is whether the average consumer would be confused, and for me, removing the space doesn’t change anything. I would recommend doing more research on the extent of the use of the other Shay Grey. Are they on social media etc. Because if your fans are confused and/or not able to find you easily, you will want a different name.
Thanks
Kurt Dahl
Entertainment Lawyer
I’m curious about whether Steve Gorman would have a trademark claim against new black Crowes revenue. Also wonder whether he would be a common law partner absent a band agreement. Btw, I’m a lawyer drummer too, though I practice outside of entertainment. Ps – it’s be a great hypothetical that you could use as an article….
Cool Craig! Love the Crowes. I guess that would depend what the band had in writing, as I’m guessing they had something there based on how big there are/were.
Kurt Dahl
Entertainment Lawyer
Hi there!
I’m wondering about registering a band name that has a trademark already but its used for vehicle sound systems by Bose. Seems a bit risky but worth looking into I would say. Any help would be appreciated
Risky due to brand confusion with customers, but also because BOSE may oppose it. But many TMs exist with the same name and different products, but you have to clearly define the differences and again it can be risky.
Kurt Dahl
Entertainment Lawyer
I released a album in 2016 and it was copyrighted and distributed. However, we never obtained the band trademark. Then in 2020 a musician obtained the trademark and released his own album. Now quite a few sites online are showing him as the copyright of my music as well as many places such as Spotify. Do I have any hopes of retaining my band name and solution to this problem. As far as I can tell he is receiving my royalites as well.
You’d have to hire a lawyer and draft a Cease and Desist Letter, and be able to prove that you had the name first and actually used it in a given territory. In territories where it wasn’t used, they may be able to keep using it.
Kurt Dahl
Entertainment Lawyer
i think the key phrase is “when you can afford to”. if your band is established enough that 1-2k is not a crushing expense….yes, do it. as a band member looking at all the startup costs (digital distributor, web presence, LLC setup, trade marks) you can easily spend 2-3k before you make a cent. don’t do that. or if you do make sure you that money isn’t needed for rent.
Agreed 100% Chris
Kurt Dahl
Entertainment Lawyer
I wanted to use a band name for a long time never released my music but am about to. Many bands have this name actually and even the alternatives to the name that I would consider however none of them have the name trademarked in the US when I searched.
Even though some bands have been around for years with that name, even a rapper, and I trademarked it, would I basically win the right to the name? It’s a good one and I don’t want to keep changing it to a lesser alternative .
It seems like I could have that in my favor however if they made money with that name prior or fans, it still wouldn’t matter, trademark above all else?
Thanks
There are many factors involved to determine who has the right to use the name. A TM is only one aspect of it. Most importantly, first use needs to be considered. And the geographic area it was used in. So no, a TM is not above everything else. Whatever you do, I would hire a good entertainment lawyer to give you a legal opinion on this, if the name is important to you.
Kurt Dahl
Entertainment Lawyer
Good morning Kurt,
I was called for a “work for hire” vocal session and ended up writing something on the spot with the original composer needing a vocalist.
It turned out to have a life of its own here, unfortunately the other party had alcohol issues.
Fast forward to today and the song is nearly done yet the producer does not “want to touch it with a 10 foot pole“ simply because of emotions from the guitar player/former client. I have the copyright registered under my name with said guitarist as a co-writer and believe we are too close to completion to jump ship.
I also realize that for peace of mind I could practice and learn the original guitar part and still be legally in the right to release it. I guess I answered my own question.
Hi.
I have a band name that no other band has and I have not not trademarked it.
I’m soon to release music for the first time. If i were to release the music before any other bands use the same Band name does that provide me any protections by default by being first?
Im rather broke, i want to release my music, but am nervous that someone may come along and snatch up the trademark if it starts to get recognition, before i can afford to. and i do want to sell merch, is that a different trademark? Thanks
A trademark is one feather in the hat when it comes to your IP protection. Other feathers are first use, and the territory/nature of the use. So if you can’t afford a TM right now (most bands can’t), your next best step is to start using the name and that use will create rights in the name for you. Be sure to document that use (i.e screenshots of online usage, emails records, photos of posters, etc.).
Kurt Dahl
Entertainment Lawyer
I came to believe it’s important to trademark your band name no matter how big your vision for your band. I played in an above average at best cover band in the 90s. We came up with a name we all liked and we thought suited our college crowd etc. we never wanted to be more than we were, a cover band that worked weekends. And that’s what we did, eventually a “manager” of some local talent saw us and started booking our gigs. After a good 4 year run we all started doing other things and wanted to play less. One night I get a call from a friend saying he was at a bar and did the band kick me out? It seems another band, maybe realizing we weren’t working as much, took our name and were booking themselves at bars and clubs that we had a good reputation at. I went to the next gig of theirs I could find and threatened I think to blow up their houses. You know some idle threat that got me no where. Luckily, our manager had all of the Stepping Out magazines that we were advertised to play in by the bars, and using that as proof we had been using the name long before them a lawyer friend of our manager wrote them apparently a very effective letter because we saw them playing under a different name a few weeks later. This long winded story is just to prove my point that I wish we’d have copyrighted our name to save the high blood pressure I had for a month.
Agreed 100% Brian!!
Kurt Dahl
Entertainment Lawyer
Hi,
I’m part of what was, in the 90’s, a relatively successful electronic music duo (my ex-wife and I). We got divorced and she said she didn’t want to do music anymore. About 4 years ago, I started up the band again under the original band name and also remastered the original recordings and re-released them successfully. Both of us also signed a contract with a leading UK distributor. She has been receiving all due payments and credits for her work. However she now says that I’m not allowed to use the original band name, even though she’s not at all active in music in any way. Can she do this? I need to build upon my old successes to lend credibility to my new solo releases. I have an email from her where she clearly displays ill-intention and malice as the motive for her demand. We both presently reside in the UK. Please advise.
Best regards,
Anthony
I would hire an entertainment lawyer in the UK but the high level answer is – unless she assigned her rights in the band name, she is right, you can’t use it without her consent.
Kurt Dahl
Entertainment Lawyer
Addendum to previous email: My ex-partner has not been involved with the band for 22 years.