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Trademarks

Can You Trademark a Book Title? Understanding the Basics and Exceptions

A trademark may be able to protect your book title, but it is more difficult than you think. Generally, a trademark typically will not be granted to protect a book title, there are some exceptions. You may be able to obtain trademark protection of your book title if your title is distinctive enough, a part of a series, or an overall part of your brand. 

New Domains Equal Continued Problems With Cybersquatting

Cybersquatting occurs when an entity (a person, a company, etc.) intentionally buys up the domain name of a specific business and then holds on to it, with the intent of selling that domain to the business for large profit later. If you own a trademark and find that the domain name cooreponding with your trademark has been taken, it is possible that you may be the victim of cybersquatting. 

An Intro to Trademark Licensing - How Can a Trademark License Agreement Help Your Business Generate Income?

Trademark licensing is the process where a trademark owner agrees to give another person or company permission to use its trademark, in a commercial setting, in exchange for a fee. There are many reasons why licensing a trademark can be very advantageous. Trademark licenses are complex with several points to be negotiated. An attorney who is well acquainted with trademark licensing is invaluable in providing information regarding licensing requirements and advice in creating and negotiating a trademark license.

Registering a Trademark - The Six Step Process of Applying for a Trademark in the US

Applying for a trademark can be done without a trademark lawyer. However, it is highly recommended that you strongly consider hiring one to assist you with your application. A trademark can be one of the most valuable assets in your company's intellectual property portfolio and having your application done correctly can help you in ensuring your protections are in order. All and all, the trademark registration process is a six-step process that can last anywhere from six months to 24 months to complete. In this blog post by Cordero Law, we go over the six steps to help you understand what you will be facing in the trademark process.

Cease and Desist Letters: What Are They, and What Should You Do?

Receiving a sternly worded letter from a law firm on behalf of another person or company ordering you to stop doing something can be stressful, especially if you are not familiar with "cease and desist" letters. Although they can be unsettling, cease and desist letters are fairly common.

Four Ways to Legally Protect Yourself as a Music Artist

The music industry is a lot different than how it was years ago.  With the increasing power of social media, the independent revolution has flurished.  More often than not, artists are self releasing their music and becoming celebrities over night.  And while the rise of the independent world has a multitude of benefits for the artst, there are some drawbacks. 

With no label behind them, artists often overlook the legalities surrounding their careers - a decision that could cost millions.  In this article, I will identify four key legalities to think about once you decide to take your career to the next level. 

TRADEMARKS

Trademarks are used to identify the owner of a particular good or service (think a logo or brand name).  A trademark lets the consumer know where the product or service is coming from by giving the owner a monopoly on its usage.  In plain english, when a person (or company) owns a trademark, only that person (or company) can put out products or services that contain that trademark.  For musicians, a stage or band name is often registered by the artist as a trademark.  

Don't believe me?  Look closely at the title picture I use in this article - it is a trademark listing for the word "50 Cent" from the United States Patent and Trademark Office.  If you do a trademark search for the name of your favorite artist, more likely than not, you will find at least one trademark in that artist's name.  Just as a random soda company wouldn't be able to sell soda under the name Coca Cola, having a trademark over your artist or band name can prevent others from benefiting off your hard work.  

Additionally, while trademarking your artist or band name is highly recommended, it is also just as important to do a trademark search to make sure that someone else doesn't already have the rights to your name.  Unless your artist name is extremely unique, it is possible that someone else may have rights to your name (or a very similar name).  Before you spend thousands of dollars into marketing, have a trademark attorney research your stage name to make sure someone else doesn't have a trademark for it.  And if no one does, make the investment and register for that trademark.  

COPYRIGHT

Copyright is a form of protection very dear to musicians.  The copyright owner is the only person that can reproduce, distribute, perform, or display the copyrighted music.  In short simple terms, a copyright allows the owner to make money off their creations (and more imporantly in some cases, prevent others from making money off them without permission). 

While in the US, a copyright is automatically given to the person that creates a work of art at the time it is created, formal registration is often still highly recommended.  A formal registration with the US Copyright Office gives the owner an official notice as to when registration took place and the ability to bring a lawsuit in federal court - both of which could come in handy some day if you are ever sued for copyright infringement or need to sue someone else for illegally using your work.  As such, it is highly recommended that an artist register all of his/her songs with the US Copyright Office in order to gain formal copyright protection.  

For a more detailed overview on copyrights, please feel free to A Musicians Guide to Copyrights and Protecting their Work in the U.S.

PUBLISHING

Music publishing deals with the ways artists can make money off of their copyrights (as mentioned above).  From registering with a performance rights organizations (ASCAP, SESAC, or BMI) to setting up your own publishing company, there are a lot of ways to ensure that you get what's due to you as a music artist.  If you don't take the time to set up your publishing the right way, you could be missing out on a lot of money that is supposed to be coming your way should your music go viral.    

For a more detailed introduction on music publishing, please feel free to read: Music Publishing 101: The Basics of Music Publishing

CONTRACTS

I know a lot of musicans.  I also know a lot of musicians that hate contracts (in fact I am pretty sure it’s the exact same number of people).  Having a lawyer look over your contracts and paperwork is essential.  A good entertainment lawyer has seen contracts time and time again and knows exactly what to look for (and more importantly, what shouldn’t be there).  Unless you have some legal training, save yourself the headache and get a lawyer you can trust. 

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Julian Cordero is an Attorney, Music Producer, and Entrepreneur.  Oh and he blogs too!  Julian is licensed to practice law in New York and is the Managing Member of Cordero Law LLC, a New York City based law firm focusing on Business Law, Entertainment Law, and Intellectual Property.

Trademarks 101: The Basics of Trademarks

What’s a Trademark? 

Trademarks are a form of intellectual property. A trademark is used to identify and distinguish the source of the goods or services that are being represented by the trademark.  We get it, this is confusing.  In the simplest of terms, a trademark is your brand.  

Trademarks can be letters and words, logos, pictures, a combination of words and a logo, slogans, colors, product shapes, and even sounds.  

Do I have to Register? 

Trademark registration is not mandatory.  (Cue Dramatic Music).  In fact, depending on what state you live in, you may have some rights in your trademarks even if you do not register.  Trademarks that are not registered receive what is known as “common law” protection.  This form of protection varies depending on what state you live in, but in general, the protection will be limited to the areas where you are currently using the trademark.  So for example, if you are selling paper under the name Dunder Mifflin in Scranton, Pennsylvania and do not have a federal trademark registration for the name Dunder Mifflin, another company in Florida can start selling paper under the same name.  

While federal registration is not mandatory, it has several advantages and is almost always recommended.  

Benefits of Registration

Registering your trademark with the United States Patent and Trademark Office (or USPTO as the cool kids call it) has many benefits.  Among these benefits are national protection and and increase in the overal strength of your brand.

Nationwide Protection

Registering your trademark with the USPTO gives you the exclusive right to use your trademark nationwide.  So for example, if our friends at Dunder Mifflin had great lawyers advising them to register their trademark with the USPTO, they could prevent that other paper company in Florida from stealing their name and benefiting from it.

Stronger Brand, Less Problems

While not necessarily a legal consideration, from a business standpoint, unless you plan on being a small mom and pop business that caters to a small selection of people, it doesn’t make sense to not protect and strengthen your brand from the start.  Think about it, you are going to be spending valuable time and resources to promote your brand.  Do you really want to spend all that time and money only to be told years down the line that you need to change your brand?  This is a huge waste and in some cases, can cripple a business.  Trust me, it happens way more than you think.  

Strength of Trademarks

All trademarks are not created equally.  In the trademark world, there are a few categories to describe different trademarks.  The categories are (in order of strength: fanciful, arbitrary, suggestive, descriptive, and generic.  

Fanciful

Fanciful trademarks are the (insert the name of your favorite signer or band here, because you clearly think they are the best) of the trademark world.  A trademark is fanciful if it was invented for the sole purpose of being a trademark, such that it has no other meaning whatsoever.  

Examples of fanciful trademarks are: Exxon, Kodak, and Xerox.  

Arbitrary

An arbitrary trademark generally has some type of dictionary definition before being adopted as a trademark.  However, the trademarks is used in connection with products or services unrelated to that meaning.  Because of this secondary meaning, arbitrary trademarks are very strong marks.  

Examples of arbitrary trademarks are: Apple (for computers) and Shell (for gas stations).  

Suggestive Marks

Suggestive trademarks are marks that suggest a quality or characteristic of the goods and services. While these marks are not as strong as fanciful or arbitrary marks, suggestive marks are one of the most common form of trademarks registered.  The reason for this is due to the marketing advantage of being able to associate a trademark with a particular good or service.  

Examples of suggestive marks are: Microsoft (for computers), Blu-ray (for disks), and PlayStation (for video game counsels).   

Descriptive Marks

Descriptive trademarks are used to merely describe the services or goods where the mark is being used.  A descriptive trademark cannot, by itself, be registered as a trademark because it is inherently weak.  It is possible to register descriptive trademarks if you can achieve a secondary meaning for the trademark.  Secondary meaning means that although the mark is descriptive on its face, consumers are able to recognize the mark as being able to indicate a source of goods or services.  

Examples of descriptive trademarks are: Sharp (for televisions), Digital (for computers), and International Business Machines (for computers).

Generic Marks 

Generic trademarks are not trademarks at all.  The reason for this is because a generic mark is a common name for products or services.  Giving this generic mark any type of protection would essentially create a monopoly, such that the public would suffer greatly if only one person or company would be able to use that mark.  

Examples of generic marks are: salt, smartphone, and social network.  

How Much Does it Cost? 

Trademark registration fees depend on a variety of different factors.  For an updated fee schedule, visit the USPTO Website.

Advice Going Forward

At first glance, the trademark application looks simple.  However, trademark applications are ridiculously complicated.  (Yes, ridiculously complicated is fancy legal term).  Once you start to get into the specifics of the application, it is easy to get lost, confused, or discouraged.  Because of this, the MAJORITY of trademark applications become abandoned or get denied.  

Having an attorney can greatly minimize the risk of your application getting denied.  While results cannot be guaranteed (and if an attorney is guaranteeing results, you should probably run away), having an attorney is your best bet.  

If this is not possible (we get legal costs can be expensive sometimes) it is important to educate yourself as much as possible before going through with the application.  

Trademark fees are nonrefundable.  Don’t make the mistake of randomly submitting a trademark application without either hiring an attorney or educating yourself on the process first.  The USPTO provides numerous sources of information on the trademark application process and should be the first website you visit when deciding to apply for a trademark without an attorney.

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Julian Cordero is an Attorney, Music Producer, and Entrepreneur.  Oh and he blogs too!  Julian is licensed to practice law in New York and is the Managing Member of Cordero Law LLC, a New York City based law firm focusing on Business Law, Entertainment Law, and Intellectual Property.