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Howard Leib : Trademarks
Howard Leib : Trademarks
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cultivating resources
CHILDRENS' MUSIC AND THE LAW-TRADEMARKS
In this article I'm going to try to explain trademarks. Most people, including most lawyers, frequently refer to copyright when they actually mean trademark. For the record, a copyright is a right of property (i.e., an ownership right) in a work of creativity set out in a tangible medium. For example you can own copyrights on books, songs, recordings of songs, a painting, etc. The only requirements are that the work be original, which is to say not copied from someone else. If two people, totally independently, created the exact same song, both could own copyrights on that song. The purpose of copyright law is to encourage creativity.
A trademark is a group of words, symbols, pictures or a combination thereof which allows the consuming public to identify the source of goods. In short, trademark laws are consumer protection laws. While since 1978 there is only one set of copyright laws, the federal laws (Section 17 of the U.S. Code), there are both federal and state trademark laws. The federal trademark act (Section 15 of the U.S. Code) is also known as the Lanham Act. Federal protection is available to the owner of any valid trademark used in interstate commerce.
A trademark must not be simply descriptive of the product or services with which it is associated. For example, if you perform under the name "The Singer," you would not be able to get a trademark for that mark. The reason for this is the Patent and Trademark Office ("PTO"), the federal agency charged with examining all trademarks, will decide that the phrase "The Singer" is too descriptive of what you do and other performers would need that phrase to describe what they do as well. While I could probably register "Howard the Singer," I would not be able to stop someone else from performing under the name "Harold the Singer."
How does a name or mark become a trademark? Any mark you use to identify your services can serve as a trademark (or in our case, a service mark). If you perform under your own name or under a made-up name those names serve as your trademark. It is the act of using the mark (or logo) to identify your services that creates your rights in that mark.
How does one go about registering a trademark? When we talk about registering a trademark, we usually mean registering it federally with the US Patent and Trademark Office. The first step in the registration process (a process that can stretch over one or two years) is usually a trademark search. A trademark search is a review of marks already out in the market to make sure that you are not infringing upon someone else's mark. The search can be of federally registered marks, federal and state marks, or of all marks the searcher can find, including in phone books, directories, etc. While the federal search alone is adequate if your only concern is the registrability of your mark, for the slight additional cost I recommend the full search, to see what is actually out there. The federal only search won't do that, especially in this area where so few people have registered their marks.
Once the search is done, you should review the results with your lawyer (preferably one with some trademark experience) to make sure that no one out there got to your mark before you. After that you reach the big question, "Should I register my mark?"
There is no magic time at which you must register your mark. As previously stated, in the United States it is your use, not your registration, of a mark which is the significant date as to your rights. Registering your mark has two distinct benefits. It broadens your remedies in a trademark infringement action and it puts everyone else on constructive notice of your mark. This means they are deemed to have knowledge of your mark whether they actually do or not. Just as important, your mark will show up when someone else does a trademark search and should serve to warn them off if their mark is too close to yours.
Against those benefits you have to balance the cost. A trademark search will can run up to $1,000. The registration can be $1,500 or more. Are the benefits worth the cost? In most of your cases the answer will be no. If your are going national or signing a recording deal, the answer may be yes, but otherwise the price probably outweighs the benefits.
If you are not ready to apply for a federal trademark, most of you have some simple and low cost steps you can take to help protect your marks. First, on your logos, tapes, posters, etc. put a small "SM" after your mark. The "SM" stands for service mark (since we are probably talking about using the mark in connection with recording and/or performing services, rather than to show the source of goods) and indicates that you consider the mark to be proprietary, even though it is unregistered.
The second thing you can do is to register your mark with the state in which you live or the state(s) in which you most frequently perform. Most (though not all) states provide a very simple form which you fill in (much like a copyright registration) and return with samples of your mark and a small (usually under $100) registration fee. Your mark is then put on the state register. In most states there is no review of the mark. While a state registration provides little protection, it will insure that your mark turns up on any trademark search which is broader than the federal only search described above. Again, this may serve to keep others from adopting a mark too similar to yours. In most states the forms can be obtained through either the Secretary of State or the Attorney General's office. I hope the foregoing was helpful. You can reach me with questions or suggestions at:
Howard Leib, Esq.
271 Madison Avenue, Suite 200
New York, NY 10016
(212) 545-9559, Fax (212) 545-0909
HowardLeib@aol.com
(ed. Howard's been practicing in NYC since forever, and is the founder of the Children's Entertainment Association.
Visit his sites: http://www.kidsentertainment.com/ and http://www.braincamp.com/
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