About Trademark

A trademark is a word, phrase, symbol, or design (or any combination) that identifies the source of goods of one party from those of others.  Similarly, a service mark is the same as a trademark except that it distinguishes the source of a service rather than a product.  So, logos like the NIKE swoosh, Coca-Cola in the red/white cursive font, and the red and blue Pepsi circle would be examples of trademarks.  And logos for Meineke or Orkin would be examples of service marks.   Since legislation for both is very similar, the terms “trademark” and “mark” will be used to cover both for the purpose of this article.

In the music world, it is not uncommon for artists to trademark band logos, fonts, or even names.  Some famous examples would be the Rolling Stones lips logo, Prince’s “squggle” sign, and the band name U2 In their particular font.

The trademark application process is fairly complicated, and it is recommended that one seek the counsel of an experienced trademark attorney to help with the process.

  • The first step will be to assemble a list of names and/or symbols.
  • The trademark attorney will then perform a search or “knockout” to see if there any existing marks that are identical or potentially confusingly similar.
  • Once the uniqueness has been established, an application will be prepared and submitted to the US Patent and Trademark Office.
  •  It may take several months for the US Patent and Trademark Office to respond.
  • If there are any changes requested by the trademark examiner, you will have six months to respond
  • If there is no further refusal, or if the refusal is overcome, then the mark will be moved into publication
  • Once the mark is published, as long as no oppositions are filed, the mark will then be registered

 

Trademarks are also subject to carrying degrees of protection based on how the mark is categorized.  The trademark examiner will categorize the mark in one of four general categories:

  • Generic marks
  • Descriptive marks
  • Suggestive marks
  • Arbitraty and fanciful marks

Traditionally, generic marks have little to no protection and arbitrary/fanciful marks tend to have the strongest protection.

Infringement of a trademark occurs when an artwork or graphic bears such a resemblance to the trademark that confusion could arise.  For example, if you wanted to trademark your band named “Rolling Stains” and you used a font similar to the one used by the Rolling Stones, the you could be charged with infringing on their trademark.  Another example is the true case of the underground band Negativeland who titled one of their albums “U2” and used a font very similar to that of the band U2.  Island Records successfully sued Negativeland for trademark infringement, claiming that the average consumer could be misled that the album was recorded by the band U2 and not by Negativeland.

As trademark registration can be a complicated process, it is highly recommended that you seek the advice of an experienced trademark attorney to help you with this process.