A lesson in band name protection . . .

[lpaul626]

This is a follow up post to another post of mine from earlier this week.

I've played in a fairly busy cover band for the last 2 years. Things have been going well and we've been built a decent following.

About a month ago, a new band made up of former members of other popular bands suddenly surfaced with the same name and same format. Given their former connections, they're now booked at top rooms including certain top rooms represented by a popular agent. They also have sponsorship.

I registered for and was granted the servicemarks (i.e., trademarks) within the state (and a neighboring state) for the band name. We can also clearly prove we've been using the name for the last year and a half.

This past week, we reached out to both the band and the agent to let them know we fully intend to legally protect our "servicemarks". The agent quickly got back to us (of course!) saying he told them about us and provided us with an email exchange where one of the members asked about us and he told them there already was a band with the name. They obviously ignored it. They've also ignored our attempts to contact them and they're obviously trying to steamroll us.

I'm a lawyer and I've dabbled a bit in trademark/servicemark law. I've already gotten the legal processes going. But, I have to say, this is a first for me. IMO, a pretty unprofessional and ****ty thing to do especially when these people have been around for a long time. I've played in bands since I was a kid and I/we've always conducted ourselves professionally. I've always endeavored to be respectful of other musicians/bands as well.

One thing that was obvious while going through the registration process, is that very few bands have registered their "servicemarks" at least in my state. Might be a good idea for those who value their band name and are looking to protect their "investment."

Update (10/14) - I just heard through the grapevine that they may be modifying the name by appending an additional designation to the name. For instance, instead of "rock band" it might be "rock band CA" with the state abbreviation. Question to consider is whether this is sufficient and would alleviate any "confusion" in the marketplace which is the intent of the servicemark laws.

Update (10/19) - Thought I'd refresh with an update. I just heard that they're planning to change their name merely by switching the two words in the name. So for instance, rather than "Rock Band", they'd now be known as "Band Rock". Curious to get everyone's thoughts as to whether this would be acceptable to you?

 

[slayerbear17]

keep us updated. Curious to see how it all ends.

 

[Eskimo_Joe]

Take it to 'em brother

 

[Hackubus]

Wouldn't a phone call where you say "I'm XXX, I play in the XXX band, which you've recently taken to calling your band by the name of XXX also, and I'm also an attorney..." put the fear of the deity of their choosing into their hearts?

 

[lpaul626]

Wouldn't a phone call where you say "I'm XXX, I play in the XXX band, which you've recently taken to calling your band by the name of XXX also, and I'm also an attorney..." put the fear of the deity of their choosing into their hearts?

Sure! But the only apparent means by which to contact them is via Facebook. We asked the agent and he said he has only dealt with them via FB. So I sent a few messages through the main FB page and a few to their individual FB accounts stating just what you've mentioned. I also included my number and email address and asked them to contact me "to resolve so as to avoid legal action." I know they get them because originally our singer attempted to contact them and they were responding to her claiming they "didn't know", "no big deal", etc etc. Once I started with the threatening legal action, they stopped responding. Nothing since . . .

I do know when and where they'll be for their first gig in our state though (they're just over the line) for service of process purposes.

 

[loudboy]

I would say a visit to one of their gigs, w/a letter on your letterhead would get their attention.

If they still blow you off, I'd send letters to the managers of the venues they're playing, apprising them of the situation and vaguely insinuating that they may have to be involved in any legal action you may have to take against the band, if they don't cease and desist from using your name. <g>

The last thing a bar/venue owner will want is to have to get involved in something like this and this other band will become poison.

 

[lpaul626]

I would say a visit to one of their gigs, w/a letter on your letterhead would get their attention.

If they still blow you off, I'd send letters to the managers of the venues they're playing, apprising them of the situation and vaguely insinuating that they may have to be involved in any legal action you may have to take against the band, if they don't cease and desist from using your name. <g>

The last thing a bar/venue owner will want is to have to get involved in something like this and this other band will become poison.

Thanks for the tip! Great thought! In fact, I've already put a constable on notice about serving them at their first gig with a C&D letter.

I like the last part as well. I hadn't thought of that.

 

[Jon C]

Thanks for the tip! Great thought! In fact, I've already put a constable on notice about serving them at their first gig with a C&D letter.

I like the last part as well. I hadn't thought of that.

This is not legal advice, of course, but once you put a venue on notice that they are hiring a band violating a registered service mark, you may (may - do your research) have a cause of action against the venue for tortious intereference with your band's contractual rights, as well as liability for facilitating the violation of the service mark under whatever IP rights/ right to damages exist under that cause of action.

Of course, don't expect any venue you do this to, to want to book your band, lol.

Interesting & frustrating situation, keep us posted.

 

[orogeny]

good mojo your way

 

[lpaul626]

Of course, don't expect any venue you do this to, to want to book your band, lol.

Thanks and agreed! Which is why I'm more sensitive to this option.

You raise another good point. The agent who books the venues was quick to get back to us to point out that he told them and that it has nothing to do with him. He said it was between us.

This agent books all the top rooms and we haven't worked with him yet. I obviously don't want to burn a bridge with him (he also provided support that he told them about us). I think technically, depending on the law (which I need to follow up on), we may have a tortious interference claim (or something similar) against him which may be worth "casually mentioning".

 

[Jon C]

Thanks and agreed! Which is why I'm more sensitive to this option.

Yeah, you also might have to worry about them talking to other venues that you may already be in or could go in, and trying to blackball you.

Good luck.

 

[BCy2k]

Name & trademark issues can get really interesting.

The drummer in my band was/is in a band called, "Stillwater", which was a southern rock band signed to Capricorn records. When that movie called "Almost Famous" came out, their fictional band in that story was also called Stillwater. I have it on good authority the producers worked things out amicably with the band ahead of the film's release.

In another interesting case I know of, there's a cover band I know that sort of committed mutiny against their leader/founder. They essentially fired him, then promptly registered the bands well known name in the state they reside as theirs. Well, the leader claimed prior ownership of the name. Sued his former band mates, who then changed their name, but continued to gig with great success built on their well earned reputation under their old name.

This is a (really good) cover band mind you, that does a lot of high profile corporate type gigs. I still don't think they've resolved their legal issues, but the rejected band leader has finally reformed a new band under the original name that brought the litigation about. Kind of astonishing for them to lawyer up over a name involving cover bands for sure, but the incarnation of the band I'm familiar with (comprised of the mutineers) played both political conventions back in 2008, and again (both) in 2012. They're what I'd call a really successful cover band at the top tier of what can be made in their particular scene.




.

 

[loudboy]

Kind of astonishing for them to lawyer up over a name involving cover bands for sure, but the incarnation of the band I'm familiar with (comprised of the mutineers) played both political conventions back in 2008, and again (both) in 2012. They're what I'd call a really successful cover band at the top tier of what can be made in their particular scene.

A really good function band can make way more $ than a mid-level "signed" band, over the long run. At $3-5K a pop, and 150-200 gigs/year, you're talking about a lot of dough...

 

[ungarn]

Sell them the name!

 

[trancedental]

Sell them the name!

This is what usually happens in England, The Stone Roses guitarist John Squire started a new band & called The Seahorses with a major record deal. A London band already had the name in use at regular gigs over a few years.

The original band supposedly gave up their name for a few thousand pounds.

 

[JoeP]

Show up early at the venue they are booked at and set up to play. The venue us getting band named XXX....right?

Probably the venue couldn't care less who it is, as long as it is the band name. And tell them you'll set up at every gig they have as long as they continue to use your name.

 

[lpaul626]

Update - I just heard through the grapevine that they may be modifying the name by appending an additional designation to the name. For instance, instead of "rock band" it might be "rock band CA" with the state abbreviation. Question to consider is whether this is sufficient and would alleviate any "confusion" in the marketplace which is the intent of the servicemark laws.

Curious to get everyone's thoughts?

 

[JoeP]

Sounds like they are trying to do the absolute minimum to get by, while still getting over on you guys.

I'd say all or nothing. Complete change or lawsuit...

 

[Jon C]

That's not going to cut it for me, still way too much potential for confusion, dilution of the established band's reputation, etc.

I'd be confused: are the affiliated with your band? A franchise (lol)? A licensee (lol)?

That would not work for me ...

 

[lpaul626]

That's not going to cut it for me, still way too much potential for confusion, dilution of the established band's reputation, etc.

I'd be confused: are the affiliated with your band? A franchise (lol)? A licensee (lol)?

That would not work for me ...

Good points! That's the way we're leaning.

No affiliation with us and I don't even know them. For some reason, they chose our name and decided to move forward with it. There are some really accomplished players in the band which surprises me even more (unprofessional).

As an aside, what's making matters worse, is that we justifiably let our bass player go this week. He and his GF now have a vendetta against us and they're "fueling the fire" with this other band (disparaging remarks on FB, encouraging them to stick with the name, etc. - also very unprofessional but that's one of the reasons he was let go).