Merchandising, licensing, and sponsorships have become significant revenue streams for the modern-day musician. In a constantly changing music industry, a solo artist or musical group who anticipates any reasonable amount of success should start to consider themselves as a brand, long before they become the next “hot” act. Artists should protect and police their name so their brand or “trademark/service mark” remains strong. i.e., is enforced more easily. In order to do this, it is advisable to obtain trademark protection in regions where the artist intends to perform and sell products.
Consider the possibility of an artist who has not protected his or her brand in a particular region, only to find that another solo artist or musical group may have prior rights in and to the same or a similar name. This may sound unlikely, but it does happen. Although artists may protect their names in connection with a number of goods and/or services, for purposes of this blog post, we focus on the classification (Class 25) relating to clothing.
In some cases, an artist may be performing under a certain name but not yet have made use of the name in connection with merchandising. If so, the United States allows for what is called an intent-to-use trademark application wherein the applicant can file with a bona fide intent to use the mark/name in the future with the designated goods and benefit from the rights in and to that mark beginning on the date the application is filed. However, ultimately in the United States, one must prove use in order to obtain registration of a trademark. In order to evidence use, the applicant must provide specimens to the U.S. Patent and Trademark Office.
For Class 25 goods, it is not enough for the artist or group to simply put the trademark on t-shirts or jackets, but they must instead actually sell clothing bearing the mark or have packaging for the goods bearing the trademark. Simply applying an artist’s name on clothing is considered “ornamentation” rather than a trademark use. The exception would be for a band such as Led Zeppelin or The Beatles, where the public automatically associates those names with the fame of the bands, a concept called “acquired distinctiveness” and/or “secondary meaning.” In addition, ultimately, every item of clothing that is being sold or will be sold in connection with the brand or mark must be set forth to the U.S. Patent and Trademark Office.
As most artists do not limit their performances or the sale of their merchandise to just the United States, where economically feasible, the artist should consider obtaining trademark protection in countries where performances will occur and so, too, the sale of merchandise will take place. Unlike the United States, many countries do not require use to obtain a trademark registration. As a consequence, taking steps early to protect your brand are really important. Otherwise, a third party can and may ultimately file for the name the artist wants to protect. The only way to avoid such potential difficulties is to file for trademark protection as soon as possible in the geographic regions of interest.