The importance of trademark registration for record labels cannot be understated.
As with any music business venture, the name of an independent record label is likely to be colorful and distinctive. The record label is likely to utilize a creative and eye-catching logo in all of its marketing and product packaging.
Those brand identifiers need to be protected with trademark registration in order to ensure that music fans are not confused as to whose are products are being.
Trademark registration will ensure, even when album and single releases are conducted through online storefronts and platforms such as Spotify and iTunes, that no other record label will infringe upon your branding.
In fact, given the large-scale distribution of music through electronic media and not only in hard copy (vinyl, CD, cassette) formats, trademark registration and brand protection are more important than ever. With one click, a new record label can release an album worldwide through Spotify, for instance, with instant access by anybody. Anywhere.
This system of instant distribution also carries the possibility of instant trademark infringement.
What Is Trademark Registration?
First, a basic question: What is trademark registration? How is the process unique for record labels?
Trademark Registration as Property Interest
Trademark registration is an intellectual property ownership right. That is, it is a “property” that can be transferred, sold, or assigned (with restrictions) like any other property. But it is not, obviously, something you can hold in your hand.
It is property that has been created by law.
In the United States, that law comes by way of the Federal Lanham Act, otherwise known as the US Trademark Act. It also comes, as much of U.S. law does, by way of what is called the “common law.” The Common Law is non-statutory, judge-made law. That is, it is the result of a set of legal rules defined in rulings made by judges that bind and guide later judicial decisions.
Copyright and patent protection are also intellectual property rights.
What Does Trademark Registration Protect?
A trademark is, by definition, a “mark” used in “trade.” That is, it is a record label name, logo, or slogan used to identify your music and record production and distribution services to consumers.
When a music-buyer sees your company’s logo, they know that record or CD on which it appears has been released by your company. Because that customer knows from experience that your record label only signs high-quality music artists, he or she makes the purchase with confidence.
This is brand loyalty.
As an example, this author, as a teenager, was a big Dead Kennedys fan and would buy anything released by the independent record label Alternative Tentacles. Alternative Tentacles’ bat-in-a-circle logo on an LP or EP jacket made that potential purchase immediately attractive, back then, regardless of whether or not the band was itself known.
Trademark registration exists to give your record label the exclusive right to use its logo. And name. Any other record label using the same or confusingly similar name or logo would be guilty of trademark infringement.
With a registered trademark, your record label has standing to sue infringers in US Federal Court. You can issue take-down demands on Spotify, YouTube, iTunes, Amazon, and on other platforms. You will be able to serve cease-and-desist letters upon infringers to avoid litigation to begin with.
A registered trademark, importantly, prevents future record labels for filing and registering trademarks for confusingly similar names and logos.
No business has market value without a registered trademark that can be enforced in court.
Differences from Copyright and Patent Registration
Trademark registration is different from copyright and patent registration in a couple of crucial ways.
First, these different intellectual property interest arise from different US Statutes. Second, they protect different things.
A copyright registration protects a creative work “affixed” in “tangible” form. That is, it exists to protect the right of an artist or author to exclusively earn revenue from a work that has actually been created. (It’s not just an idea!)
To register a copyright, you must actually compose and write down and/or record the rock opera … You can’t just imagine it or write in your mind, Mozart-style. The sheet music or a recording of the rock opera is submitted to the US Copyright Office for registration.
Patent registration, on the other hands, protects an invention, system, or process that is unique, new, and not “obvious.” Patents are registered with the US Patent and Trademark Office (USPTO).
Trademarks are also registered with the USPTO—but a trademark is not an invention. It is a mark used in commerce as a “source-identifier.”
That is, a trademark identifies your record label as the source of your products or services in US commerce.
Trademarks Must Be In Use & Unique!
What are the requirements for a record label to register its trademark with the USPTO?
- Use In Commerce Required
You don’t have to use a copyright registration for anything to complete and retain the registration. A trademark, in contrast, must be “in trade.” That is, you actually have to use it in association with a product or service transacted in interstate commerce in the US to register it.
If you stop using your record label name or logo in commerce—you lose the trademark registration, moreover.
What is use in commerce, exactly? This means that you must reach customers across Michigan’s or another state line with your product or service. A trademark cannot be merely decorative or ornamental, such a logo printed on the front of a t-shirt and not the shirt’s hang-tag. It must, again, identify your record label as the source of a product or service.
Each product or service that your trademark identifies to consumers must be specified in your USPTO trademark registration application.
Every product or service that can be transacted, in fact, has been sorted into 1 of 45 different “International Classes.” Your trademark registration application must identified which Class you are claiming use within.
The USPTO will charge you a filing fee based on the number of Classes attached to your application.
- Must Be Unique
Additionally, your record label’s name or logo must be unique. This has 2 meanings: (1) no one else should have registered that name or logo; and (2) the mark cannot be merely descriptive or generic.
Likelihood of Confusion Trademark Concerns
Obviously, you cannot register a trademark if another record label has registered it first. Further, you cannot register a trademark if any mark that may be likely to confuse consumers as to who is selling what has already been registered, either.
Many first-time trademark applicants make the mistake of running simple searches on Google or Yelp or DuckDuckGo and the USPTO TESS register for exact-hit conflicts only. When they find none, they presume all is well.
However, this is not always the case. A mark may be confusingly similar when it stands any chance of presenting confusion. What is “likely” to confuse is often in the eye of the beholder. That is, you may think it’s all good. The USPTO Examiner assigned to your record label’s application may have quite a different opinion.
Thus, your best shot at “clearing” a trademark prior to filing a USPTO trademark registration application is to retain an experienced Michigan trademark attorney to conduct a professional trademark clearance search for you.
Descriptiveness Trademark Concerns
To register a name or logo as a trademark, it cannot be generic or merely descriptive. That is, it can’t just describe the product or service you’re selling. It cannot simply describe the geographic area in which you’re conducting business (or from which you’re importing products).
For example, a record label called “The Detroit Music Production Company” is merely descriptive. That is an unregistrable business name. (Unfortunately, businesses in Metro Detroit, Michigan, seem all want to call themselves “The Detroit X Company.” This is a terrible idea that says more about Detroit’s brand than the companies’.)
A generic trademark is even less unique than that. “Record company” would be a generic record label business name, for instance.
This is not usually an issue for record labels. Any industry in which “Alternative Tentacles” is an unsurprising business name does not have a widespread descriptiveness issue.
However, it can still happen. How unique is SST, for example? Any company which utilizes a person’s name or initials, numbers, or other characters runs a risk here.
The Trademark Registration Process for Record Labels
Once your Michigan trademark registration lawyer clears your record label’s name or logo, the registration process itself takes approximately 1 year. Step 1 is the drafting and filing of the trademark registration application itself. A non-lawyer will populate the USPTO application fields with, potentially, entirely the wrong information.
It is vital, for instance, that you properly identify the owner of the trademark.
The proper identification of the Classes used is required. As is an accurate but also not too expansive OR restrictiveness description of your record label’s goods or services.
These are just examples. A trademark lawyer will maximize the odds that your application will not be filed with easy, avoidable errors.
USPTO Examination
Step 2 is—waiting. Quite a lot of it, at this point in time. Currently, as of this writing, the USPTO is taking more than 9 months to examine new trademark registration applications. A good Michigan trademark attorney will ensure that your application’s progress is monitored and that your receive regular updates as to its progress.
When the USPTO does finally review your record label’s application, the Examiner will either approve it for Publication—or not.
If not, this means that an Office Action refusal will be filed. You will have 3 months to respond to this Office Action. If you don’t, your application will be Abandoned by default.
If you do, the Response may require some simple tweaks or revisions to your application only. Or, alternatively, it may require that something resembling the sort of legal brief filed in any Federal civil litigation be filed.
This would be required when the Examiner alleges, for instance, that your mark is merely descriptive or likely to confuse consumers.
If the refusal is overcome, your application will proceed to the Publication phase.
If it is not, it will be abandoned.
Retaining an experienced trademark attorney to assist with the resolution of any Office Action you’ve received is crucial for a successful registration.
What is the Publication Phase?
The Publication phase of the trademark registration process is an opportunity for third parties to cause problems for your record label.
It is, specifically, a 30-day period of time in which third party mark owners or other parties can Oppose registration of your record label name or logo.
If an Opposition is filed, you will be in litigation. You will have 2 options only at this point. The first is to ignore it and have your application Abandoned by default. The second is to file a response before the deadline expires. And maybe negotiating a settlement in the process of litigating a resolution or not.
Oppositions and other Cancellation proceedings are adjudicated before the USPTO’s Trademark Trial and Appeals Board, or TTAB.
The help of an experienced trademark attorney is required for any appreciable chance of success before the TTAB.
Approval of Your Record Label Trademark
Your record label’s application will then be Approved for Registration if there are no Oppositions filed, or if you resolve any that are filed.
If you have filed an “intent to use” application, you will then have 6 months to file a Statement of Use to obtain your registration certificate.
If, instead, you filed an “in-use” application, you will then receive your registration certificate. Now, the USPTO issues these in PDF format only.
After Registration of Your Trademark
Once you register your record label’s name or logo as a trademark, your work is not done.
A trademark owner is obligated to “police” and enforce its mark against infringement. If you don’t watch for infringement and then allow it to continue once you are aware of it, you will lose your legal right to sue others for infringement in court.
Your infringers will have defenses available to them in litigation. Essentially, they will be able to say, “Judge, these guys didn’t care before about our infringement, so they should lose their case now.” And you will.
You must monitor continually for infringement, therefore, as well as for new, infringing and conflicting applications filed by other record labels.
Also, as noted, you must continue to use your mark in commerce to keep the registration valid.
Thus, you must file a new Statement of Use with the USPTO proving this between the 5th and 6th year from the date of your registration. After that, you must file new Statements of Use every 10 years.
You can, after that 5th year, also file a highly advantageous Declaration of Incontestability that makes it very difficult for anyone to ever contest the validity of your record label’s registration.
Why Record Labels Should Contact a Michigan Trademark Attorney
With a registered trademark, your record label will not only build brand value and protect against infringement. It will also give you the right to license, transfer, or sell your company, along with all of the customer good will earned by your brand.
This is what builds fair market value for a record label. It is what a major label will seek to purchase, should that bazillion dollar buy-out offer ever come your way.
However, to maximize the odds of your success, it is essential that you retain the services of an experienced trademark attorney.
Noble Path Trademark Law is a boutique US law practice located in Metro Detroit and assisting entrepreneurs, solopreneurs, artists, musicians, start-ups, and larger enterprises with robust intellectual property portfolios in all industries and in all states with trademark registration, trademark renewal, and Office Action refusal response matters.
We offer virtual consultations, premium customer service, and the expertise you need to maximize your odds of trademark success.