Tag: distinctiveness

trademark disctiveness

Can You Copyright a Band Name?

It is one of the most common questions artists, entrepreneurs, and other content creators ask. It is also based on a fundamental misunderstanding of how intellectual property works. While both copyrights and trademarks give owners exclusive rights, they protect entirely different things for entirely different purposes.

You just finished a killer garage rehearsal with your new band. You finally agreed on the perfect name, and you are ready to launch a website, release an album, and book your first gig. Naturally, your first instinct is to protect your new brand before someone else steals it. So, you call up a legal professional and ask: “Can you copyright a band name? If so, how?”

It is one of the most common questions artists, entrepreneurs, and other content creators ask. It is also based on a fundamental misunderstanding of how intellectual property works. While both copyrights and trademarks give owners exclusive rights, they protect entirely different things for entirely different purposes.

If you want to protect your music, your brand, and your business identity, you need to understand where copyright ends and trademark begins. I will start with the short answer first.

Can you copyright a band name? No. Copyright ownership cannot be claimed in the name of a band or any other kind of name. Copyright protection does not exist for titles, slogans or short phrases, either. In some cases, trademark rights can be claimed in a name, title, slogan or short phrase, but copyright cannot be.

Names, titles, slogans and short phrases are too short to qualify as “expression”, and they do not meet the low threshold of human creativity required for a copyright. Instead, identifying a brand is the core of trademark law.

What is the difference between a copyright and a trademark?

Copyrights and trademarks are both types of intellectual property, and they both give their owners exclusive rights, but they protect different interests, for different purposes. Copyrights protect creative expression. Trademarks protect brand identifiers.

  • Copyrights protect creative expression. They protect interests in the output of human minds, things like music, lyrics, artwork, website text, photographs, sound recordings, music videos, and other kinds of expression.
  • Trademarks protect brand identifiers. They protect names, logos, slogans, and domain names used to identify goods or services. The purpose of a trademark is to act as a source indicator and prevent consumer confusion in the marketplace.

The USPTO has a handy reference chart explaining how the kinds of intellectual property differ: Patent, Trademark or Copyright.

When does a copyright actually come into existence?

You get a copyright when, and only when, all of the following things are present:

  1. Human expression. Copyright protects expression, not facts or ideas. And the expression must be created by a human, not by an animal, a machine or natural forces.
  2. Originality. The work must be independently created. Copyrights cannot be acquired by copying someone else’s work.
  3. Creativity. People frequently conflate the “originality” and “creativity” requirements, but they are really different things. Band names are a great example. You could come up with a completely original name, one that nobody else has ever used before, and yet still fail the creativity test. “Smashing Pumpkins,” for example, was a completely original name. No band had ever used it before. But it does not get copyright protection. Why not? Because the courts and the Copyright Office have decided that names, titles, slogans and short phrases do not involve a high enough level of creativity.
  4. Fixation in a tangible medium. The work must be fixed in a tangible medium of expression. This means it exists in a sufficiently permanent or stable form so that it can be perceived, reproduced, or communicated for more than a transitory period. Examples include writing lyrics on paper, recording an MP3, or painting on canvas.

When all of these requirements are met, copyright protection is automatic. You do not need to register your work with the U.S. Copyright Office for the copyright to exist, but you generally do need to register it if you ever want to file an infringement lawsuit in court.

Why You Actually Need a Trademark for a Band Name

Getting back to the difference between trademarks and copyrights: when it comes to protecting a band name, a song title, a short phrase or a slogan, a trademark is what you need.

Trademarks do not have to be particularly creative. Look at IBM. It’s just an acronym for “International Business Machines.” Nevertheless, it is a valid trademark. As I reported in a previous blog post, even the word “The” is a registered trademark now.

You might be asking, “Well, how can someone claim the exclusive right to use the word ‘the’? Virtually every book, story, and article that’s written has “the” in it. Are all these writers guilty of infringement?

The answer is no. And that is because a trademark only gives its owner the exclusive right to use it as a source identifier. Unlike a copyright, it does not give its owner an exclusive right to use the mark as creative expression.

The 5 Core Requirements for a Trademark

The requirements for a valid trademark indicate the limited scope of its enforceability. To secure and maintain a trademark, you must satisfy five elements:

  •  Use in commerce
  • Source identification
  • Distinctiveness
  • No likelihood of confusion
  • Nonfunctionality.

1. Use in Commerce & Source Identification

“Use in commerce” means the mark must be used commercially. If you market musical performance services under a particular band name, you might be able to claim trademark rights.

It must be used for the purpose of identifying the source of your musical performance services, though. Merely using something as a band name isn’t enough. For example, if you and some friends have formed a band to practice in a garage, but you haven’t actually started seeking gigs and have no definite plans to do so, choosing a name is not enough. To get a trademark, you must use the name commercially. That does not mean you have to be a commercial success. It just means you need to have begun selling your services, such as booking performances.

2. Distinctiveness and No Likelihood of Confusion

“Distinctiveness” means your band name must distinguish your band from others. If you name yourselves, “A Jazz Band,” you will probably fail this test. Descriptive terms generally lack distinctiveness. Arbitrary or completely made-up names have a much better chance. If you mention Pearl Jam, or the Rolling Stones, or Nirvana, everybody knows exactly which band you mean.

Distinctiveness is directly related to the requirement that the name must not cause a likelihood of confusion among consumers. You won’t get trademark protection if you call yourselves Counting Crows, for instance, because consumers will confuse you with the existing band.

3. Nonfunctionality

The nonfunctionality requirement means that a trademark must not serve a utilitarian purpose other than being a source identifier. For example, you can’t claim the sound of a drum as a trademark for your band. As great as it might be to claim the exclusive right to use the sound of a drum and put other bands out of business, you cannot do that because it serves a fundamental musical function.

You often hear people say that a band has a “trademark sound,” like the wailing sounds that Jimi Hendrix produced on his guitar. In reality, no one can claim trademark rights in a particular musical sound or style, though, as those are functional elements of musical performances.

Once you have a trademark that meets these requirements, you should apply to register it as a trademark. This can be started even before you begin using it in commerce, so long as you have a definite plan to start using it soon.

Key Takeaways for Musicians and Bands

And so the key takeaways from all of this are:

  • Copyrights protect expression; trademarks protect brand identifiers.
  • You cannot claim a copyright in a name, title, slogan or short phrase, but you might be able to claim a trademark.
  • If you want to claim a copyright in a song, you must fix it by writing it down or recording it.
  • To claim a trademark in a name, you must use it in commerce as a source identifier.
  • Choose a distinctive name that does not simply describe your music and is completely different from other bands.
  • Protect your trademark by registering it.

Ready to Protect Your Band?

Navigating the intersection of copyright and trademark law can be challenging, but taking the right legal steps early protects your creative work from copycats. Whether you are ready to book your first commercial gig, launch a website, or officially register your band name and other brand identifiers, securing your intellectual property is the smartest move for your band. Contact me if you need help registering a trademark or protecting your creative works.

Visit my extensive Copyright FAQs page.

Longstanding and Emerging Legal Issues in Trademark Law

Trademark law protects brand identifiers like names, logos, words, slogans, and other things, ensuring consumers aren’t deceived about the source of a product or service. It also protects businesses from unfair competition. Core concepts include use in commerce, distinctiveness and the likelihood of confusion, which dictate whether a mark can be registered and enforced.

Whether you’re a startup founder, an artist, or just astudent of the law, understanding trademark law is essential. Here is a breakdown of the fundamentals, followed by some of the biggest trending issues in the trademark world today.

The Fundamentals of Trademark Law

A trademark is any word, name, drawing, graphic, or device used to identify the source of goods or services and distinguish them from others. The four essential requirements for a valid trademark are:

Distinctiveness

A trademark must operate not only to identify the source of a product or service but also to distinguish it from others.

It is evaluated along a spectrum:

  • Fanciful marks: These are completely made-up, invented words, graphics, etc. that have nothing whatsoever to do with the nature or quality of the products or services with which they are associated. These are inherently distinctive, meaning it is not necessary to prove that consumers have come to associate the mark with the source. XEROX and EXXON are examples.
  • Arbitrary marks: These are real words, images of real things, etc., but they bear no relationship to the product or service with which they are associated. APPLE computers is an example. These, too, are inherently distinctive.
  • Suggestive marks: Suggestive marks are marks that hint at the nature or a quality of the product or service, but do not directly describe it. They require some imaginative thought on the part of the consumer to “connect the dots.” JAGUAR for cars and COPPERTONE for suntan lotion are examples. A suggestive mark is inherently distinctive.
  • Descriptive marks. These describe a quality, ingredient, or characteristic of the product or service. Unlike suggestive marks, they don’t merely hint at it; they come right out and directly describe the product or service, or a characteristic or ingredient of it. HOLIDAY INN and INTERNATIONAL BUSINESS MACHINES are examples. Descriptive marks cannot be claimed as trademarks unless they have acquired “secondary meaning.” The burden of proof is on the claimant to show that consumers have come to identify the brand with the claimant’s product or service, and not with other sources of it.
  • Generic marks: These are names for a category of product or service. MILK, as a mark for milk would be an example. No trademark rights can be claimed in generic marks.

Likelihood of Confusion

The primary legal standard for both registering a mark and suing for infringement is “likelihood of confusion”. This means determining if an ordinary consumer would mistakenly believe that your product or service and someone else’s come from the same source, or are affiliated.

Courts apply a multi-factor test (primarily the DuPont factors) to assess likelihood of confusion. The most critical ones are:

  • Similarity of the marks: Do they look, sound, or convey a similar commercial impression?
  • Relatedness of the goods/services

Courts consider other factors, too.

Two marks may be confusingly similar even if they are not identical. The key is whether consumers would be likely to confuse the source of one with the source of the other.

Use in Commerce

A mark must be used in commerce as a source identifier. Otherwise, a trademark does not come into being. To register a trademark federally with the USPTO, the use must be in interstate or foreign commerce. Purely intrastate commerce will not suffice for federal registration.

Registration

In the United States, trademarks come into existence through use in commerce as a trademark. When all the elements of a valid trademark exist (distinctiveness, etc.) a “common law” trademark exists. The scope of protection a common law trademark affords, however, is limited to the geographic area of trade. To get nationwide protection and the right to use the coveted ® symbol, you must register your mark with the U.S. Patent and Trademark Office (USPTO).

My experience has been that the major stumbling blocks for people who apply to register their trademark with the USPTO are (1) lack of distinctiveness, usually due to selecting a descriptive mark without acquired meaning; (2) likelihood of confusion with another person’s or company’s trademark; and (3) improperly completing the application for registration.

Topical Issues in Trademark Law

Fraudulent filings

The USPTO has implemented rigorous enforcement frameworks to crack down on fraudulent filings. Historically, many trademark owners were in the habit of registering their marks in more than one category of goods or services, either to “keep options open” for possible company expansion into a new product line, or to prevent competitors from doing so. The USPTO is making more vigorous efforts to crack down on registrants who fraudulently claim use in connection with goods or services with which they are not actually using the mark.

Due to a massive influx of suspicious, fraudulent, or automated filings, laregly by trademark mills, the office has cracked down by requiring stricter identity verification and heavily scrutinizing specimens of use. If a brand is caught digitally altering logos or faking mock-ups of their goods in commerce, their registration very likely will be swiftly canceled. Examiners are inspecting specimens of use more closely now, trying to ferret out digitally created mock-ups of trademarks being used in commerce. A false or fraudulent specimen of use is grounds for cancellation of registration.

The Trademark Modernization Act has given the USPTO new and enhanced powers to cancel unused and fraudulent registrations.

AI-Generated Counterfeits

Generative-AI is being used to create knock-offs of digital products. This is creating challenges for owners of trademarks in digital products and services.

Intermediary Platform Liability

Can an online marketplace platform or intermediary website or online service provider be held contributorily liable for facilitating or otherwise contributing to counterfeit and trademark-infringing goods being sold on their platforms?

Phrases Without Trademark Functionality

People are increasingly trying to claim trademark ownership over common words and phrases, such as “Hello. How are you?” The USPTO and courts are rebuffing a lot of these efforts. It is still possible for a phrase to become a trademark, but proof of acquired secondary meaning as a source identifier is needed. Otherwise, an applicant is likely to experience a “failure to function as a trademark” denial.

Read more about non-AI-related legal issues.

Visit my extensive Trademark FAQs page.

Need help with a trademark registration? Contact attorney Thomas James.

Suggestive Trademarks

The line between descriptiveness and suggestiveness is not always clear.

Is that a source identifier in your pocket or are you just being descriptive?

 

A trademark gives its owner an exclusive right to use it in connection with a particular kind or category of products or services. At the same time, though, trademark law seeks to promote competition. To that end, it generally does not allow people or companies to claim the exclusive right to use generic words or words that are used to describe a feature or quality of a product. If someone could claim an exclusive right to use gasoline or unleaded as a trademark for petroleum products, then nobody else could enter the market.

To qualify for trademark protection, a mark cannot be merely descriptive of the product or service. It must be distinctive, in the sense that consumers see it not merely as a description of the product or service but as an identifier of the source of the product or service, that is to say, an identifier of the producer or sponsor of the product or service.

Sometimes a mark that is merely descriptive at first acquires distinctiveness over time. Through advertising and long usage, consumers come to see it as a source-identifier. International Business Machines (IBM) is an example. It is descriptive of the product or service, but over time consumers have come to associate it with a particular source of business machines. In general, though, words and phrases that are merely descriptive do not qualify for trademark protection.

Inherently Distinctive Trademarks

Some kinds of marks are regarded as inherently distinctive, meaning there is no need to make a showing of acquired distinctiveness before trademark rights may be claimed in them. A mark is inherently distinctive if it is fanciful, arbitrary, or suggestive.

A fanciful mark is something that is completely made up. Xerox is an example.

An arbitrary mark is one which, although a real word, bears no logical relationship to the product or service. Apple, as a trademark for computers, is an example.

A suggestive mark is one that hints at but does not directly describe a quality or feature of a product or service.

Why It Matters

A lot rides on whether a mark is suggestive or merely descriptive. If it is merely descriptive, then its first use in commerce will not be as a trademark. Competitors may freely use the same mark until it acquires distinctiveness. If you try to register it with the USPTO, you might get it on the Supplemental Register, but it won’t make it onto the Principal Register. It will not enjoy the presumptions of validity and ownership that trademarks registered on the Principal Register do. Maybe you will be able to get it there someday, but only if you present persuasive evidence of acquired distinctiveness.

Suggestive trademarks, on the other hand, may qualify for trademark protection upon their first use in commerce. And if registered, they get all the advantages of being included in the Principal Register.

Where Is the Line?

The difference between descriptiveness and suggestiveness is not very intuitive. The classic formulation is that a descriptive term directly describes something, while a suggestive term merely hints at it. If a term directly states what a product or service is or does, or literally describes a feature or quality, then it might be generic or descriptive, but it is not suggestive. If a term does not directly describe the product or service, or a quality or feature of it, that is to say, if some additional thought process is needed to get to the intended description, then it is suggestive.

The Jaguar trademark is an example of a suggestive trademark. The product does not literally feature or contain a wild animal. An additional thought process is needed to get to the intended descriptor, which in this case would be fast. Fast would be a merely descriptive mark for a car. Jaguar requires an additional thought process, namely, the idea that jaguars are fast, to reach the intended meaning.

Coppertone is another example. Suntan oil would be a descriptive mark. Coppertone, on the other hand, does not directly describe the product. Instead, it suggests what might happen if someone uses it, i.e., the person may acquire something akin to a copper skin color.

Incidentally, changing the spelling of a descriptive term generally will not bring it into the realm of inherent distinctiveness even if the word, as so spelled, technically is an invented one. Fastt Car, for instance, would almost certainly be treated by the USPTO or a court as a merely descriptive trademark. The relevant question is whether consumers would read or hear it as an adjective, not whether a member of the Spelling and Grammar Police Squad would.

Criticism

Courts and legal scholars have noted that the line between descriptiveness and suggestiveness is not always clear. Professor Jake Linford, for example, has argued that the distinction is “illusory at best,” and that a suggestive mark is “more like a descriptive mark than the law currently recognizes.” (Jake Linford, The False Dichotomy Between Suggestive and Descriptive Trademarks, 76 OHIO ST. L.J. 1367 (2015).)

Nevertheless, the distinction is currently recognized in the law, at least in the United States.

European Union

The European Union appears to take a narrower view of suggestiveness. For example, it denied protection for “How Can I Make You Smile Today?” as a trademark for orthodontic and dental supplies. As certain fast food chains and performing artists can attest, slogans and phrases can easily be claimed as trademarks in the United States. This slogan would clearly fall on the “suggestive” side of the suggestive/descriptive line under the classic formulations of the distinction in the United States.

Read about other alluring trademark legal issues.

Visit my extensive Trademark FAQs page.

 

 

 

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