What is a Trademark and what is a Service Mark?

The Restatement (third) of unfair competition provides the following definition of a

trademark and service mark:

A trademark can be a word, symbol, device, or other designation, or a combination of

such designations, that is distinctive of a person’s goods or services and that is used in a
manner that identifies those goods or services and distinguishes them from the goods and
services of others. A service mark is a trademark that is used in connection with
services.1

For musical acts, the services that are provided will be considered entertainment services.

Therefore, registration of a band name will be done as a service mark. The definition of a

service mark may be found in section 45 of the Lanham Act. It provides:

The term "service mark" means any word, name, symbol, or device, or any combination
thereof—“(1) used by a person, or (2) which a person has a bona fide intention to use in
commerce and applies to register on the principal register established by this Act, to
identify and distinguish the services of one person, including a unique service, from the
services of others and to indicate the source of the services, even if that source is
unknown. Titles, character names, and other distinctive features of radio or
television programs may be registered as service marks notwithstanding that they, or
the programs, may advertise the goods of the sponsor.2

Examples of service marks include restaurant names, retail services, and most

importantly for purposes of this article, entertainment services. The Lanham Act never defines

“services.” However, case law arising in the Federal Circuit has stated that the term “service”

was “intended to have a broad scope” and the definition was not provided because of “the

plethora of services the human mind is capable of conceiving.” 3 The Federal Circuit then went

on to define a service as “the performance of labor for the benefit of another.” 4 Therefore, a

band must perform there musical compositions for the benefit of others. A group that has

decided on a name but has not yet begun to perform entertainment services for the benefit of
1
1995 The American Law Institute.
2
15 U.S.C. § 1127 (Lanham Act § 45).
3
In Re Advertising & Marketing Development Inc., 821 F.2d 614 (Fed. Cir. 1987).
4
Id. at 2014.
others would not be able to claim a valid service mark in the chosen name. However, unlike a

trademark, a service mark is “used” when it is displayed in the advertising of services, as well as

in their sale or offering. For the purposes of obtaining federal registration the service mark must

be used in connection with the services that are typically provided. Thus, a musical group that

has never performed before and decides to advertise an upcoming concert on a flier, in a

newspaper, or in a broadcast advertisement, has technically “used” the mark, and may be able to

assert common law rights. Until the performance is actually rendered though, the band will be

ineligible for federal registration.

A valid service mark in a band name protects the public’s interest in being able to

ascertain the source of the entertainment services provided. Ensuring the public is able to

ascertain who the musical performers are based on their name, is central to preserving a band’s

goodwill in their reputation, image, and expectation of repeat fans. Goodwill, an intangible

asset, is extremely valuable to a musical group. Moreover, a federal registration will provide a

band with nationwide legal protection and will serve to put all others on notice that the mark is

being used by a musical group in connection with the entertainment services that they provide

and all others are prohibited from using the name in connection with musical and entertainment

services.

Ownership and Use

First, federal registration is not necessary to establish trademark rights. Trademark

registration does provide the owner with many benefits, which will be discussed later, in the

section dealing with registration. Generally, trademark rights arise with use of the mark. The
first to either use a mark in commerce or file an application with the U.S. Patent and Trademark

Office (USPTO) has the ultimate right to use and registration.

Many times in the music industry bands in different geographic territories will come up

with the same name. Usually, in this scenario, two groups will be using the same or confusingly

similar band name in different territories, concurrently. Much of the time there is no bad faith

involved in these types of scenarios, as the litigants typically are unaware of each other’s uses.

To illustrate how a court may analyze concurrent use it is worth looking at a non-music industry

case, United Drug Co. v. Theodore Rectanus Co.

In United Drug, in 1877 the plaintiff Ellen M. Regis began creating and distributing a

“compound” used for medicinal purposes. She chose the trademark “Rex” which was derived

from Regis (her last name), and placed it on all boxes and packages containing her compound in

order to distinguish her product from others on the market. Mrs. Regis obtained trademark rights

in Massachusetts in 1898 and in 1900 she obtained a federal registration in the name “Rex”. She

successfully defended her trademark rights in the name against a drug store called “Rexall

Remedies” and purchased the drugstore in 1911. She then changed the name of the drugstore to

“Rexall Stores.”

Meanwhile, around 1883, Theodore Rectanus began selling, distributing, and advertising

his medicinal compound, which he also named “Rex.” He sold the medicine primarily in the

Louisville area. All activity conducted by Mr. Rectanus was done without knowledge of Mrs.

Regis’ activities. Eventually, in 1906 Mr. Rectanus sold the business along with his trademark

rights to United Drug Company. United Drug became the defendant in this case for the

continued use of the trademark “Rex” in its business and on goods.

 In 1912, Mrs. Regis shipped five boxes of her “Rex” compound to Franklin, Kentucky,

which is one hundred miles outside of Louisville. It was established during litigation that before

Mrs. Regis shipped her product displaying the “Rex” mark, “Rex” had been primarily associated

with Mr. Rectanus’ goods. The court noted that the two usages persisted for no less than sixteen

years before the two companies became aware of each other. The court concluded both parties

acted without bad faith and established a substantial amount of goodwill in each of their markets.

As a result, the court refused to issue an injunction against Theodore Rectanus.5

United Drug created a general rule that a national senior trademark user cannot oust a

geographically remote good-faith user when in good faith the junior user establishes rights as the

first user in a particular market. In fact, the good faith junior user will be able to obtain

injunctive relief against a senior user from using its name in the junior user’s market. The

opposite will also be true. The senior user can get injunctive relief in order to prevent a junior

user from using the mark wherever the senior user has established rights in the mark.6

As we have seen in United Drug, the geographical area one uses the mark in can be

paramount. For example, a band that only performs under their chosen name in a limited

geographical area will only have “priority” in that given area. They would be unable to prevent

others from using the band name outside of the given geographical area. 7 Hypothetically, a band

named “The Flying Ramblers” who perform solely in the Detroit area, would be unable to

prevent a band in Cleveland from calling themselves “The Flying Ramblers”, or anywhere else

in the country. Next, if the Cleveland “The Flying Ramblers” begin a nation wide tour or begin

to distribute their music nationally, the Detroit “The Flying Ramblers” could be prevented from
5
United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918).
6
Houston Business and Tax Law Journal, What’s the Use? Establishing Mark Rights in the Modern Economy
(visited Feb. 26, 2010), at http://www.hbtlj.org/v05/v05Petersonar.pdf.
7
Music Trademark Guide, (visited February 22, 2010) at http://music.directlegal.com/dlm_tg_acquiring_rights.htm.
using their band name anywhere else in the country, besides the Detroit area. This can be the

result even if the Detroit “The Flying Ramblers” began using the name before the Cleveland

band. Applying United Drug, if the Cleveland band does do a national tour with national

distribution of their music they will establish rights in each territory they perform or distribute.

Therefore, if the Detroit band never leaves the metropolitan Detroit area for a performance or

distributes music outside the metropolitan Detroit area and the Cleveland band tours the state of

Michigan, under United Drug the Cleveland band would have established trademark rights in the

State of Michigan and would then be able to obtain an injunction against the Detroit band from

using “The Flying Ramblers” name everywhere, except the metropolitan Detroit area.

Use in Commerce

Next, the mark must be used in commerce. Much debate has surrounded the meaning of

the phrase “use in commerce” and the Lanham Act defines “use in commerce” in the following

way:

“Use in Commerce. The term “use in commerce” means the bona fide use of a mark in
the ordinary course of trade, and not made merely to reserve a right in the mark. (1) on
goods when-- (A) it is placed in any manner on the goods or their containers or the
displays associated therewith or on the tags or labels affixed thereto, or if the nature of
the goods makes such placement impracticable, then on documents associated
with the goods or their sale, and (B) the goods are sold or transported in commerce, and (2) on
services when it is used or displayed in the sale or advertising of services and the services
are rendered in commerce, or the services are rendered in more than one State or in the
United States and a foreign country and the person rendering the services is engaged in
commerce in connection with the services.”8

Therefore, since musical groups perform entertainment services the mark must be used or

displayed in the sale or advertising of the services and the services must be rendered in

commerce. However, consider a band name that has been used in commerce and the band
8
15 U.S.C. § 1227 (§ 45 of the Lanham Act).
subsequently breaks up. Assume our hypothetical “Flying Ramblers” have not performed in

twelve years, but they still generate a small amount of income from college radio airplay. It may

still be inappropriate for another band to use the name “Flying Ramblers.” A court may rule that

the name is still being used in commerce because the original “Flying Ramblers” still generate

royalty income due to radio airplay, however limited the airplay may be.9

Furthermore, the Lanham Act defines “commerce” as all commerce which may lawfully

be regulated by Congress. This inherently comes with serious implications for band names that

originate outside the United States, because unless the use in “foreign commerce” involves the

United States, Congress would not have the power to regulate it. Yet, foreign users sometimes

promote their marks in the United States. Consider the case of Bhuti v. Impressa Perosa, which

is another non-music industry case, but one that musicians and music lawyers can learn much

from. At issue was the name “Fashion Café,” for fashion themed restaurants and bars. Impressa,

was the alleged senior user, in other words, they were first to begin using the mark. Impressa had

opened a “Fashion Café” in Milan, and planned to contract with franchisees in other countries.

A “Fashion Café” representative then traveled to the U.S. to promote the “Fashion Café” and

distributed thousands of t-shirts, cards, and key chains with the “Fashion Café” logo to persons

in the modeling and fashion industry. The central issue was whether Impressa had conducted the

affairs of the Milan Fashion Café in such a way to substantially affect United States interstate or

foreign commerce and thereby fall within Congress’s authority under the commerce clause. The

court concluded that the promotional activities were insufficient to establish a use of the

“Fashion Café” mark in commerce absent proof that “Fashion Café” had offered any restaurant

services in the United States.10

9
Alan Korn, Choosing a Band Name, at www.alankorn.com/articles/band_names.html (visited Feb. 23, 2010).
10
Bhuti v. Impressa Perosa, S.A., 139 F.3d 98 (2d Cir.), 525 U.S. 826 (1998).
 The court in Bhuti seems to be saying that if the actual services are not rendered in the

United States the mark will not be protected by the Lanham Act. The services at issue in Bhuti

were restaurant services, but consider applying the case to the music industry. Usually, if a

foreign band plans a United States tour, it is probable that the music the band performs is already

receiving a substantial amount of radio play in the United States. The radio play the band

receives produces royalties to the band, their record label, and their publishers. Therefore, this

should qualify as “using the mark in commerce” even though the band may have never

performed a single gig in the United States. On the other hand, consider a band that is not well

known in the United States and receives no radio play in the United States. In fact, in this

hypothetical, the only way people know of this band is through peer to peer file sharing. This

hypothetical act receives no royalty income in the United States and their mark is virtually

unknown outside a small group of illegal file sharers between Europe and the U.S. Despite this,

the group and their management feel confident that they can launch a successful U.S. tour,

playing small venues which cater to independent and so-called “underground” music. In

anticipation of the tour, a manager from this group travels to the U.S. and meets with some of the

owners of the small venues that the band will be performing at. The manager then distributes t-

shirts, hats, bumper stickers, and other novelty items displaying the group’s logo and asks the

owners of the small venues to distribute these items to patrons in anticipation and promotion of

the upcoming tour. Another band can come along and use the groups name without the

European group being able to stop it from doing so. The use of this band’s name would not be

deemed to be a “use in commerce” pursuant to the Lanham Act. The services the band provides,

musical/entertainment services, were never rendered in the aforementioned hypothetical to

consumers in the United States. However, after the band begins performing and touring in the
United States (or sells albums or downloads), it can assert trademark rights pursuant to the

Lanham Act and get federal protection.

Exceptions to Use-Based Priority

So, when it comes to trademarks rights, when a court decides who has priority of

ownership of the mark, the primary inquiry is use-based. There are, however, two circumstances

that serve as exceptions to use-based priority. The exceptions concern registration but are worth

mentioning now because they also concern which user has priority when it comes to determining

ownership of the mark.

First, an applicant can file an “intent to use” application if the application’s filing date

predates a third party’s actual use of the mark. This is an important detail for record labels,

bands, and managers to consider. When a record label signs a new group, or creates a new

group, it may be that the group’s musical compositions have only been performed in a limited

geographical area, with no distribution of the music. Therefore, the group or record label will

not necessarily have priority when it comes to being able to enforce its trademark rights in the

group name. Furthermore, the record label may feel that the group is not ready to take its act on

a national tour and its music is not ready for distribution. This is when the group or record label

should consider filing an “intent to use” application with the Patent and Trademark Office. An

“intent to use” application provides for the filing of trademark applications to protect (or reserve)

trademarks which are not yet in use. 11 The benefits include constructive use and priority, based

upon the bona fide intent to use a mark. The bona fide intent may be simply sworn to in the

application. The intent should be bolstered with verifiable documents. For musical acts,

11
Keuster Law, What is an Intent to Use Application? (Visited Feb. 23, 2010) at
http://www.kuesterlaw.com/itutm.html.
documentation may include studio records, record industry contracts, or even music publishing

deals. There is no statutory definition of what constitutes a “bona fide” intent, but being able to

produce good records and documents should suffice. Before the mark will actually receive

registration, it still must be used in commerce. Once the application is filed with intent to use,

and the intended mark (the band name) has been approved, published for opposition, and

indicated as “allowed,” there will be six months in which to verify actual use. It must also be

noted that an “intent to use” application should never be filed if the intent is only to reserve

rights in the group name. Remember, the group must still use the mark at some point in the

future. Also, filing an “intent to use” application does not eliminate the need to perform a

thorough search to find out whether the name is already in use in connection with

musical/entertainment services.

The second exception to use-based priority concerns foreign marks. If the band is a

foreign act that has not yet penetrated the U.S. market but intends to tour and distribute its music

in the United States at some point in the future, the band should first register its name in its

native country. If the foreign registration is complete six months before the group files a

registration of its name in the U.S., it will get priority over an identical band name that was first

used in the U.S., provided the U.S. group registered their name after the foreign group registered

its name in its home country.12 This can be a valuable tool for a foreign act to avoid consumer

confusion when it finally does begin to tour and distribute in the United States. A foreign act

that does not register in its home country may launch an American tour only to find another

group has the same name in the U.S. which can result in a significant waste of resources, time,

and money.

Jane C. Ginsburg, Jessica Litman & Mary L. Kevlin, Trademark and Unfair Competition Law Cases and
12

Materials, at 157 (4th ed. 2007).

Trademark Registration

When a band has decided on a name and has begun using the name in interstate

commerce, the band should register the name with the Patent and Trademark Office. First, the

band should make sure the name is not already being used by another group. Next, the band

should establish rights in the mark (see previous section on trademark use), and finally the band

should obtain a federal registration of the mark. There are many benefits to registering the band

name. A valid federal registration will provide the band the following assurances:

1. Constructive notice nationwide of the trademark owner's claim.

2. Legal presumption of ownership of the trademark.
3. Anyone using a "confusingly similar" mark can be legally stopped.
4. Registration provides powerful ammunition against potential infringement.
5. Exclusive use of the trademark nationwide in connection with the goods or services
indicated.
6. The right to sue in of federal courts for trademark matters.
7. Can receive money damages for infringement up to triple of actual losses.
8. Registration can be used as a basis for obtaining registration in foreign countries.
9. Registration may be filed with U.S. Customs Service to prevent importation of
infringing foreign goods.
10. Allows use of the ® symbol or the words "Registered Trademark."
11. Can increase the value of your trademark as a business asset.
12. After five years, the trademark owner's rights become incontestable.
13. Can prohibit the registration or use of an Internet domain name that infringes the
trademark.13

Once granted, trademark registration is valid for ten years and may be renewed for

additional ten year terms as long as the band continues to use the mark in commerce in

connection with the goods or services specified on the registration. In contrast, a registered state

trademark only protects your mark in that particular state. A federal trademark protects the mark

13
Trademark Guide, Benefits of Federal Registration, (visited March 26, 2010) at
https://www.directlegal.com/tg_benefits_registration.htm.
 nationally. Even if a mark is only used locally, federal registration will allow expansion of the

use of the mark anywhere in the U.S.14

Moreover, the consequences of not obtaining a federal registration can be expensive and

time consuming. A band who decides not to register may eventually find out that the name is

already in use, or that another similar name is in use. Now the band without the registration can

be sued for infringement and the tribunal will grant the plaintiff band an injunction. The band

will have to redo merchandise, promotional materials, and CD’s. Fans of the group can become

confused and turned off once the band has changed their name. At any rate, the benefits of

registering certainly outweigh the burdens of not registering.

This section will guide the reader through the necessary steps to obtaining a federal

registration and discuss the possible bars to obtaining a federal registration.

Make Sure the Name Is Not Taken

The best ways to learn whether the band name is already in use is to order a search report

through one of the independent searching companies. Typing the words “trademark clearance”

or “search trademarks” into an internet search engine are good places to start the search. Most

likely, the searcher will discover numerous private companies and law firms across the United

States. These companies specialize in disclosing all federal trademark registrations currently in

effect, marks which have been cancelled or expired, and even marks which may be similar for

either identical or closely related goods and services.15 However, there are also certain

companies that specialize in only searching band names. These websites include

“BandName.com” and “BandNameProtection.org.” At any rate, whatever company’s services

14
Id.
15
Ginsburg, Litman, and Kevlin. at 172.
 the band decides to make use of, it should also not neglect to perform a search with the U.S.

Patent Office's Trademark Electronic Search System, located at the U.S. Patent and Trademark

Office website. Furthermore, after the search is complete the band should have the search report

evaluated by an experienced trademark attorney who can put forth his or her best judgment when

deciding if any potential problems exist and what may be done to clear those problems up.

Put the Mark to Use

As previously discussed, the band name will function as a service mark. A service mark

may be used in advertisements, brochures, letterheads, or whatever items the band uses either to

advertise or render its services. Also, the service must be rendered in interstate commerce to be

eligible for a federal registration. A band would have to perform in at least two states in order to

establish interstate usage of its name. The name can be exhibited to the public on posters, print

ads, fliers, tickets, or theatre marquees.16 Therefore, performing in at least two states and

exhibiting the name to the public would make the band name eligible for federal registration of

the name in connection with the entertainment services it provides.

The Process

First, the band must prepare the application. Once the name has been used in commerce

or the band has a bona fide intent to use the name, they can file an application to register the

name in the United States Patent and Trademark Office.

16
Id. at 173.
 The first requirement must be the applicant’s name. At this point, the band does not need

to discuss who will have the right to carry on with the name should the group disband or break

up. The application must be filed in the name of the owner of the mark. The owner of the mark

is the person or entity who controls the nature and quality of the goods identified by the mark

and/or the services rendered in connection with the mark. The owner may be an individual,

corporation, partnership, or other type of legal entity.17 Therefore, the band, as a legal entity, can

list the band name as the owner of the mark. It is also advised that the band incorporate pursuant

to its home state’s incorporation laws and procedures, but that discussion is beyond the scope

here.

Next, the name and address for correspondence should be listed. The name and address

for correspondence is the address where the U.S. patent and Trademark Office (USPTO) will

send communications concerning the application. It may be that of the applicant or the

applicant’s legal representative. This can be the band’s manager or attorney. Also, an applicant

residing outside the United States may list a domestic representative, that is, the name and

address of any person residing in the U.S. "upon whom notices or process may be served for

proceedings affecting the mark.”18

Also, every USPTO application must include a drawing of the mark. The drawing will

be used to search official records, will be printed in the Official Gazette, and will also be printed

on the certificate of registration once the registration has been granted. The TEAS (Trademark

Electronic Application System) generates a proper drawing for the applicant, based on the

information the applicant enters. The applicant should see TMEP §807.05 for more information

17
United States Patent and Trademark Office, What Must the Application Include? (visited Feb. 27, 2010) at
http://www.uspto.gov/trademarks/process/appcontent.jsp#AppName.
18
Id.
about electronically-submitted drawings at the USPTO website. Whether the band wants to hire

an outside artist to do the drawing is probably worth considering as well.

Also, the application should include a description of the goods and services for which the

mark has been used or will be used to identify. For musical groups, this can include a

description of the entertainment services provided. Most likely this list of goods and services

will also include CD’s and tapes, digital downloads, t-shirts, posters, and DVD’s. Note, that for

some things, most notably t-shirts and posters, the mark will function as a trademark and not a

service mark. This presents no dilemma. The USPTO has thirty-four classifications for

trademarks and another eleven classifications for service marks. As a result, a single application

will cover the same mark in more than one class.

Next, the band must pay a three hundred and seventy five dollar filing fee if the

application is done on paper. If the application is done electronically, there is a reduced fee of

three hundred and twenty-five dollars.

Also, the band must state the date that the mark was first used. This applies to any kind

of use, even intrastate use. Moreover, if the mark was first used in intrastate commerce, the date

that the mark was first used in interstate commerce must also be included. If the band is foreign

and they are basing their application on a Paris Convention country of origin application (filed

during the last six months) or a country of origin registration, no use information need be

contained. However, a copy of the country of origin registration (with a proper English

translation) will need to be included.19 The application must also be signed and dated. All

disclosures and attestations in the registration will be subject to penalties of perjury.

19
Ginsburg, Litman, and Kevlin, Trademarks and Unfair Competition Law: Cases and Materials, at 174 (4th ed.
2007).
a. Examination by the PTO

Typically, after six months from filing the registration, the application will be examined

by a trademark attorney. The attorney reviews the application for form, completeness, and

registrability.20 Due to this imposed examination by the PTO, the musical group should

particularly be aware that section 2 of the Lanham Act establishes most of the grounds for

refusals of registration. Under Section 2 of the Lanham Act, no trademark may be refused

registration on the Principal Register unless one of the statutory grounds for refusal listed in the

Act applies. Thus, the language of Section 2 presumes that the mark can be registered and the

burden of establishing that a mark cannot be registered rests with the assigned examining

attorney at the United States Patent and Trademark Office (USPTO). Any application that is

finally refused by an examining attorney may be appealed to the Trademark Trial and Appeal

Board (TTAB) and then to the U.S. Court of Appeals for the Federal Circuit or a federal district

court.21

b. Grounds for Refusing Registration: Immoral or Scandalous marks (Lanham Act

Section 2)

A mark considered to comprise of immoral or scandalous matter will be refused

registration. This decision of whether a mark is immoral or scandalous is made by the

examining attorney, who decides by considering its ordinary and common meaning based on

dictionary definitions and other evidence of usage and significance.22 Consider this:

Matter is considered to be scandalous or immoral if it is shocking to the sense of

propriety, offensive to the conscience or moral feelings, or calls out for condemnation. A
20
Id. at 174
21
WIPO SCT, Submission of the United States of America, Grounds for Refusal of Trademark Registration,(visited
March 15, 2010), at http://www.wipo.int/export/sites/www/sct/en/comments/pdf/sct21/ref_us.pdf.
22
Id. at 1.
 mark will likely be refused registration if it contains matter that offends religious, ethical,
patriotic, or political beliefs. Marks are also scandalous or immoral if they are vulgar or
morally crude. A mark will likely be refused if it identifies in vulgar terms certain body
parts, bodily activities, or describes certain bodily functions.23

First, it is important to keep in mind that if a band name is refused on the grounds that it

is immoral or scandalous; it is refused from registration on the Federal Registrar. The band may

still use the name; they would just be limited to common law rights rather than those rights that

are associated with having obtained a federal registration. For example, if the band is refused

federal registration they might have a very difficult time enforcing their mark in regions around

the United States where the mark has not yet been used. Not having a valid federal registration

would make it all the more difficult for a band to prevent others from selling merchandise

bearing the group’s name in parts of the United States the band has yet to perform. Therefore,

being refused registration on the grounds that the name is immoral or scandalous can be a

devastating blow to a group that is just starting out.

Deceptive Terms (Section 2(a) of the Lanham Act)

Just as a name that is scandalous or immoral can be refused registration, a name that is

deceptive may also be refused by the examining attorney. According to the Trademark Manual

of Examining Procedure:

A mark will be refused registration if it consists of deceptive matter, that is, if: (1) the
mark or a portion of the mark is misdescriptive of the character, quality, function,
composition or use of the goods and/or services, (2) prospective purchasers are likely to
believe the misdescription, and (3) the misdescription is likely to affect the decision of
consumers to purchase the goods and/or services. This includes matter that is
geographically deceptive. The test for determining whether a mark is geographically
deceptive is whether: 1) the primary significance of the mark is a generally known
geographic location; 2) the goods and/or services do not originate in the place identified
23
Id. at 2.
 in the mark; 3) purchasers would be likely to believe that the goods and/or services
originate in the geographic place identified in the mark; and 4) the misrepresentation is a
material factor in the consumer’s decision to buy the goods and/or use the services.24

Since the services a band provides are musical and entertainment services, upon first

glance it does not appear that musical groups will be denied registration on the grounds of

deceptiveness very often. For example, it seems immaterial to consumers that a band that hails

from Detroit may refer to themselves as “Miami”, or vice versa. However, consider a group of

musicians who perform Dixieland style jazz. This hypothetical group hails from Grosse Pointe,

Michigan and they refer to the band as “New Orleans.” Suddenly, it may be material to the

consumer who may believe that the group is an authentic New Orleans Dixieland jazz band

based on the name they have chosen and the musical style that they perform. An argument can

be made that the consumer has based his/her decision to attend the band’s concerts and purchase

their CD’s because the consumer believes he/she is hearing authentic New Orleans Dixieland. In

theory, a registration can be denied to the hypothetical band “New Orleans” based on the mark

being geographically deceptive.

The Use of a Surname as a Band Name

Another possible bar to registration of a band name could be due to the name primarily

being a surname. The Lanham Act provides in section 2(e)(4):

No trademark by which the goods of the applicant may be distinguished from the goods
of others shall be refused registration on the principal register on account of its nature
unless it-
(e) Consists of a mark which… (4) Is primarily merely a surname.25

24
Trademark Manual of Examining Procedure §1203.01, (visited March 15, 2010), at
http://tess2.uspto.gov/tmdb/tmep/.
25
15 U.S.C. § 1502.
 There are bands that use surnames as their group name. “The Smiths” and “The

Ramones” instantly come to mind. The Trademark Act prevents granting exclusive rights in a

surname without evidence of long and exclusive use which changes its significance to the public

from a mere surname of an individual to that of a mark for particular goods or services.

Basically, many individuals would like to use their last names to identify there goods or services.

However, those who favor using a surname as a band name will have to wait before they can

obtain a federal registration. They will have to wait for the name to obtain distinctiveness in the

eyes of the purchasing public. Assuming “The Smiths” and “The Ramones” have federal

registrations in the United States, it must be because the names have become so distinct in the

eyes of the purchasing public they have obtained “secondary meaning.” The Trademark Trial

and Appeal Board has identified five factors when determining whether the name is “primarily

merely a surname.” They are:

(1) Whether the surname is rare

(2) Whether the term is the surname of anyone connected with the applicant
(3) Whether the term has any recognized meaning other than as a surname
(4) Whether it has the "look and feel" of a surname
(5) Whether the stylization of lettering is distinctive enough to create a separate
commercial impression.26

Note that the purpose behind the prohibition against the registration of marks that are

“primarily merely surnames” is to keep surnames available for people who want to use their own

surnames as part of their business identity.27 Therefore, if a band member has a surname that is

rare, the rarity of the mark ensures that only a small number of people would be affected if that

surname were granted federal registration. So a band wanting to register a rare surname as their

group name should have an easier time convincing the PTO that the mark should be granted

26
Trademark Manual for Examining Procedure § 1211.01, see also Ex Parte Rivera Watch Corp., 106 U.S.P.Q. 145,
149 (Comm’r Pats.1955).
27
Xavier Morales, The Trademark Registration Blog, (visited March 27, 2010), at
http://www.secureyourtrademark.com/2007/11/trademark-registration-of-surnames.html.
registration than a band who wants to register a common surname. The bottom line, though, is

that if a band tries to register a surname with the PTO, the band should probably be prepared to

receive a rejection letter from the Office. The best advice here is that the band should probably

choose a group name other than a surname unless it can honestly say the purchasing public is

more likely to associate the surname with the group, and not associate it primarily as a surname.

Abandonment

The doctrine of trademark abandonment, also referred to as “non-use” and “cancellation”,

is covered in section 45 of the Lanham Act. It states:

Abandonment. A mark shall be deemed to be "abandoned" when either of the

following occurs: (1) When its use has been discontinued with intent not to resume such
use. Intent not to resume may be inferred from circumstances. Nonuse for three
consecutive years shall be prima facie evidence of abandonment. "Use" of a mark means
the bona fide use of that mark made in the ordinary course of trade, and not made merely
to reserve a right in a mark. (2) When any course of conduct of the owner, including acts
of omission as well as commission, causes the mark to become the generic name for the
goods or services on or in connection with which it is used or otherwise to lose its
significance as a mark. Purchaser motivation shall not be a test for determining
abandonment under this paragraph.28

Abandonment, if nothing else, should be the key factor in motivating musicians to decide

what to do with the band name if the band breaks up or if members leave. Ironically,

abandonment is not utilized as a defense in suits between bands as frequently as it used as a

defense in disputes between former band members. Quite often a key member of the group will

leave or get fired. The disgruntled former member may neglect to get anything in writing with

regard to the band name. The band will then continue to use the name as it had in the past. If the

former member does not use the name for a period of three years or more and then tries to assert

28
15 U.S.C. § 1125 (Lanham Act § 45).
trademark rights in the band name, the former member’s old band may be able to successfully

claim abandonment and ask a tribunal to enjoin the former member from using the name.

The following case, still being litigated in New York’s Southern District, serves as a

straightforward example of how abandonment can affect even Rock and Roll’s most

recognizable personalities. In 2009, Ozzy Osbourne launched a lawsuit against former band

mate Anthony Iommi over the rights to the famous “Black Sabbath” name. Osbourne claimed

rights to fifty percent of the name and merchandising royalties garnered by former band mate

Iommi, who registered “Black Sabbath” in 2000 at the U.S. Trademark Office and in Europe. 29

Osbourne admitted that he ceased to perform or use the “Black Sabbath” name from 1980 to

1996, but returned in 1997 when he and Iommi did a reunion tour together. Iommi, on the other

hand, never ceased using the Black Sabbath name, even playing in small clubs to keep the name

alive. Osbourne's hiatus is an indication of the abandonment of his rights, even though he claims

that his return to using the name in 1997 should entitle him to claiming a valid trademark in the

“Black Sabbath” name once again. Here is Osbourne’s official statement regarding the matter:

Throughout the last 12 years, it was my management representatives who oversaw the
marketing and quality control of the "Black Sabbath" brand through Ozzfest, touring,
merchandising and album reissues. The name "Black Sabbath" now has a worldwide
prestige and merchandising value that it would not have had by continuing on the road it
was on prior to the 1997 reunion tour.30

Osbourne’s main argument seems to focus on the fact that “Black Sabbath” as a band and

a brand was in financial ruins during much of the 1980’s and into the 90’s, until Osbourne

rejoined with Iommi in 1997. According to Osbourne, this sparked a renewed interest in “Black

Sabbath” among fans (new and old) and whatever rights were abandoned were regained upon

29
Cheryl L. Hodgson, Trademark a Band Name-The Legal Battle Over Black Sabbath, (visited March 27, 2010) at
http://ezinearticles.com/?Trademark-a-Band-Name---The-Legal-Battle-Over-Black-Sabbath&id=2924016.
30
Id.
rejoining “Black Sabbath” for the 1997 reunion tour. Even if this is true, it may not be enough

for Osbourne to prevail in the upcoming suit. Basically, Osbourne is admitting that when the

“Black Sabbath” name was in financial dire straights, and being used by his ex-guitarist Toni

Iommi, he did nothing to stop it for a period of roughly seventeen years.

Osbourne’s complaint alleges that Iommi made “false and improper assertions” to the

USPTO by asserting that he, Iommi, owned the “Black Sabbath” mark exclusively when he

applied for a registration.31 The complaint also alleges that since 1997, Osbourne has exercised

quality and control over the goods and services, without any “significant input from Iommi.” 32

Osbourne goes on to point out in the complaint that between 1980 and 1996 the “Black Sabbath”

name produced significantly less revenue than the period between 1969 and 1979, when

Osbourne was singing lead vocals for the group. Furthermore, when Osbourne reformed the

group in 1997 for the “Ozzfest,” he “and people under his control” have been asserting quality

control with regards to the mark “Black Sabbath.” Osbourne asserts that due to his “long

standing and continuous exercise of quality control over the Black Sabbath mark” Osbourne is

entitled to fifty percent of all revenue the mark produces.33

At any rate, the fact of the matter is that Osbourne left the group in 1979 without an

agreement, written or otherwise, on what can and should be done with the Black Sabbath name.

Osbourne also mentions in his complaint that when he left the group he signed nothing indicating

that he was forfeiting his rights in the “Black Sabbath” name. Unfortunately for Osbourne, that

is not necessarily determinative. The concept of “abandonment” in U.S Trademark law forces

31
John Osbourne v. Anthony Iommi, United States District Court for the Southern District of New York, Complaint
for Declaratory Judgment, (visited March 28, 2010) at
http://www.roadrunnerrecords.com/blabbermouth.net/news.aspx?mode=Article&newsitemID=121016.
32
Id. at 2.
33
Id. at 5.
the trademark owner to police the owner’s rights. Therefore, when Iommi filed his “false

application” with the USPTO, Osbourne should have contested the registration. Instead of

contesting Iommi’s registration, Osbourne left the registration on the books at the USPTO

unchallenged for nine years. This tends to contradict the assertions found in Osbourne’s

complaint that he and his management team have assumed “quality control” over the “Black

Sabbath” mark since 1997. Presently, the case is still in litigation, but the lesson for musicians

here should not be ignored. Register the band name with a federal trademark registration, and

clarify ownership of the name to avoid a trademark catastrophe.

In fact, it seems guitarist Tony Iommi should have the stronger argument in the “Black

Sabbath” dispute, should the case be argued in the third circuit. The case of Robi v. Reed, which

was decided in 1999 in the third circuit, concerned ownership to the name of the singing group

“The Platters.”34 The plaintiff, Martha Robi, was the widow of a former member of “The

Platters”, and claimed to have received rights to the name on assignment from her late husband.

She asserted the exclusive right to use the group name against Herb Reed, who was the group’s

founder. Paul Robi, the plaintiff’s late husband, had been a member of group when it achieved

fame. Furthermore, Robi joined the group in 1954, which was a year after Herb Reed joined.

Robi quit “The Platters” in 1965. Reed, on the other hand, had been continuously associated

with “The Platters” since 1953, and the district court noted that he had been “the only member of

the group who remained as the others either left or were replaced.” 35 It was held in 1974 by the

California Supreme Court that the five members of “The Platters” owned the name collectively,

34
Robi v. Reed, 173 F.3d 736 (9th Cir. 1999).
35
Id. at 740.
as a partnership. However, it was decided by the district court that as of the early 1980’s Herb

Reed was the only member of the group asserting his right to use the name. Martha Robi, did

not use the name until 1988, which was well after Reed began using the name in the 1950’s with

the rest of the group. Furthermore, as of the early 1980’s, Herb Reed was the only remaining

member of “The Platters” to use the group name.

The Third Circuit went on to say that it has already been held that a person who remains

continuously involved with the group and is in a position to control the quality of its services

retains the right to use the mark, even if the person is a manager and not a performer. 36

Therefore, Reed was the person who maintained continuity with the group and was in the

position to control the quality of the group’s services. In fact, Reed founded the group, gave the

group its name, managed the group, and was the only member to have continuously performed

under “The Platters” name. In contrast, Martha Robi claimed ownership rights to the name

solely because of an assignment she obtained from her late husband. Furthermore, Paul Robi left

the group and even ceased performing at all for a period of years. Martha Robi had never

performed with the group, and was asserting the right to use the name for performances of other

musicians she had assembled who also had no previous connection to “The Platters.” The Third

Circuit held that when Robi left the group he took no rights to the service mark with him. 37 The

mark remained with the original group and Paul Robi had nothing to assign to Martha Robi.

Robi v. Reed shows us that when a member remains with a group and uses the name

continuously, that member maintains service mark rights in the group name. Moreover, if for

whatever reason, that member is the only remaining member and continues performing under the

36
Robi v. Reed, quoting Rick v. Buchansky, 609 F.Supp. 1522 (S.D.N.Y.1985).
37
Id. at 993.
group name; the remaining member has sole ownership rights to the group name. Robi v. Reed

also seems to be on point concerning the abovementioned “Black Sabbath” dispute. Toni Iommi

has been the only member of “Black Sabbath” to have continuously used the group name,

uninterrupted. Ozzie Osbourne left the group in 1979 and did not use the name for a period of

seventeen years. Also, it is worth pointing out that Iommi should continue using the “Black

Sabbath” name, even during the periods of ensuing litigation and when the litigation begins.

This will prevent Osbourne from claiming Iommi has abandoned the mark.

Talk about brother records v. jaradine page 112 of text

Talk about incontestability also, but briefly.