Re: how do you protect a name?

On Sun, Mar 14, 1999, Steve Kelfer <cars[_at_]stic.net> wrote:
>
> This question came up on another listserv. I would like to throw it out
> here in hopes someone can spare the details
>
> > How do you go about copyrighting a band name... and how much does
> > it cost?
>
> Reply: In the U.S.A. I don't think you can copyright a band's name. To
> protect the name, you need to register the band as a corporation and
> then your name will be protected by the same laws entitled to businesses
> who incorporate. Note that you won't be able to protect the name
> globally.
>
> Another Reply: For this to work you have to incorporate in all 50
> states, though. If you use the name long enough you might eventually
> be able to trademark it assuming it was novel enough. If you don't
> have the money to incorporate most states have assumed names. These
> are cheap but offer a limited amount of protection.
>
> Followed by this: ... are you saying I can call my new company or band
> General Motors, Inc. and GM can't do anything about it - I mean, if I
> incorporated in a State that GM is not incorporated ?
>
> And the answer is?

No, no, this is all wrong.

A band's name can't be protected by copyright, because titles and short phrases are not protectable under copyright law.

But it can be (and usually is) protected as a trademark. If the band does business in interstate commerce, the trademark is entitled to federal registration; if not, it may be registered within a single state. In either case, or even if no registration is sought, the name is protected by common law trademark rights that arise naturally from the band's actual use of the name. That protection depends upon where the band has provided services under the mark and for how long; and, of course, it does not immunize the band against demands or civil actions that may be brought by prior users of the mark for similar services.

Note the phrase "for similar services". Trademark protection is limited to the specific goods and services with which the mark is used. For that reason, a band may very well be able to call itself General Motors. Much would depend upon whether General Motors, Inc. has its GENERAL MOTORS trademark registered for musical performances in Class 41. (It might, since musical commercials are commonly used by auto companies.)

Note also that, even if General Motors has made no use of the mark for musical services, it may have an action for trademark dilution. As the owner of a famous mark, General Motors would be entitled to bring a claim that a band's use of the same name dilutes its trademark. Whether such a claim would be successful or not would depend on how the court applied several factors.

Regarding corporate registrations: (1) you do not have to be a corporation in order to own a trademark, (2) to the best of my knowledge a company cannot incorporate in more than one state, and (3) protecting a corporate name on the corporate register of one or more states is emphatically not the same thing as protecting a trademark right.

Bob Cumbow
cumbr[_at_]perkinscoie.com
206-583-8566 Received on Mon Mar 15 1999 - 19:26:44 GMT