Another band with the same name as mine is getting popular

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Latest post Mon, Mar 24 2014 1:44 PM by ca19lawyer2. 6 replies.
  • Mon, Mar 24 2014 2:47 AM

    • gutfeeling
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    Another band with the same name as mine is getting popular

    Both of these bands started relatively at the same exact time but on different sides of the country. My band however put out a release first that we've sold to people in our region and outside of our region. If we file for a trademark will it hold up in court over theirs if they may have played shows and registered more internet presence before us? They put out a release about six months after us but with a bigger label and now they're getting a lot of buzz, we're still working our way up.

     

    We don't want to get into a hairy legal situation but we just want to know if we'll have a case if they come after us in the future. Any advice would be greatly appreciated!

     

    Also, if we have evidence that we sold our release before they put out their record do we even need to file for a trademark at this time? Couldn't we just wait and file for one in the future that would still backdate to our first sales of the first release?

  • Mon, Mar 24 2014 3:00 AM In reply to

    Re: Another band with the same name as mine is getting popular

    Now is the time to see a trademark lawyer. The exact details will matter a lot, like exactly when each of you started using the name, where, when (if at all) the other band registered its name as a trademark, etc. The longer you wait to find out where you stand and what your options are, the more expensive and troublesome it will be to resolve it. 

  • Mon, Mar 24 2014 3:27 AM In reply to

    • gutfeeling
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    Re: Another band with the same name as mine is getting popular

    I get that but at this point and time we just wouldn't be able to afford it unless they were giving out free advice. From my research they haven't filed for a trademark yet. From what I've looked at on the USPTO website all the trademarks have a "First use in commerce" date. But at this point what is considered commerce? They played a few shows before us and made a facebook page before us. But we recorded songs before them and released them as a physical release that was sold to customers well before they did.

     

    It seems like a hard thing to really define. This isn't like most band name disputes where there are years in between one band starting and another. This is just an odd occurance where it's like who has it "first" if we started so close together? The ones who sold a release first or the ones who played live first?

  • Mon, Mar 24 2014 4:51 AM In reply to

    Re: Another band with the same name as mine is getting popular

    gutfeeling:
    It seems like a hard thing to really define. This isn't like most band name disputes where there are years in between one band starting and another. This is just an odd occurance where it's like who has it "first" if we started so close together? The ones who sold a release first or the ones who played live first?

    And that's why you need to consult a trademark lawyer. All the details are going to matter. There isn't a simple, easy test here to determine who would prevail should the two bands end up later in a conflict over the use of the name. It may even be the case that in some parts of the country you would have the better claim and the other band would have the better claim in other areas of the country. That then raises difficult issues if you both have aspirations for national reach. Many lawyers will give you a brief initial consultation for free, and even if you have to pay for, say, an hour of the lawyer's time to get an intial assessment of where you stand, that may be very well worth while. The problem here is that if you get into a trademark dispute later, that could be very costly, not only in terms of direct litigation costs, but also if you you lose there may fees for infringement you'd have to pay and costs to rebuild your band's reputation under a new name. Acting as early as possible in these things is the best way to hold down the potential costs. This all assumes you really want to keep the name. If you are willing to change it to something else that no one else is using, well, that would avoid future conflicts, too.

  • Mon, Mar 24 2014 12:11 PM In reply to

    Re: Another band with the same name as mine is getting popular

    gutfeeling:
    at this point and time we just wouldn't be able to afford it

    That's too bad.

    Because the first band to come up with the money for a lawyer has the better chance of winning the name.

     

    • The right of the people 
    • to keep and bear arms,
    • shall not be infringed.
  • Mon, Mar 24 2014 1:39 PM In reply to

    Re: Another band with the same name as mine is getting popular

    gutfeeling:
    If we file for a trademark will it hold up in court over theirs if they may have played shows and registered more internet presence before us?

    I don't know what "registered more internet presence" means.  In any event, one does not "file for a trademark."  Federal trademark rights exist by virtue of using a trademark in interstate commerce.  It's not clear from your post which band used the mark in interestate commerce first.  Regardless, you can register your band name as a trademark with the U.S. Patent and Trademark Office.  However, if the other band can establish prior use, then your registration won't matter.  You also should check (at http://tmsearch.uspto.gov/bin/gate.exe?f=searchss&state=4802:81ynw6.1.1) to see if anyone else has already registered the name.

     

    gutfeeling:
    Also, if we have evidence that we sold our release before they put out their record do we even need to file for a trademark at this time?

    Since you're aware of the other band and that the band is gaining popularity, not at least looking into this would be rather foolish.

     

    gutfeeling:
    Couldn't we just wait and file for one in the future that would still backdate to our first sales of the first release?

    You can do that.  Registration is not required.  However, it carries significant benefits.

    The way this almost always works is that the bigger band will buy out the smaller band's rights, so you might want to start thinking of a new band name.

  • Mon, Mar 24 2014 1:44 PM In reply to

    Re: Another band with the same name as mine is getting popular

    gutfeeling:
    But at this point what is considered commerce? They played a few shows before us and made a facebook page before us. But we recorded songs before them and released them as a physical release that was sold to customers well before they did.

    With the possible/likely exception of recording songs, all of that stuff is considered to by "commerce."  Whether it's "interestate commerce" (which is what matters for purposes of federal trademark law) is impossible to determine from your posts.  When did the other band make a Facebook page?  When and where did the other band play its first shows?  When and by what means did you "release" your first recordings?

     

    gutfeeling:
    This isn't like most band name disputes where there are years in between one band starting and another.

    Not sure where you got the idea that "most band name disputes" involve situations in which "there are years in between" the two bands starting.  To the contrary, the situation you describe is extremely common.

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