Ask the Commish
Q. My buddies and I are in a band and we’re thinking about naming ourselves The Rolling Moans and getting a trademark. My dad says we would run into “intellectual property issues. Can you even trademark band names? What about our name?
A: While the USPTO prohibits its employees from answering questions before an application is filed about whether the USPTO will register a particular mark, I can discuss the application process.
You can trademark a band name. A band name may function as a service mark if the name is used or intended to be used by the band to identify live performances. The USPTO has registered many band names for “entertainment services in the nature of performances by a musical group.”
An application for registration of a band name is examined like any other application filed with the USPTO. A USPTO examining attorney will review the application for compliance with rules, statutes, and fee requirements.
If there are no problems with your application, the USPTO will send you a letter that tells you the status of your mark as it proceeds toward registration. However, if there are problems with the application, the examining attorney will send a letter detailing any refusals and requirements. You will have an opportunity to respond to the letter.
The most common reasons that the USPTO refuses registration are:
- The mark is confusingly similar to another registered mark or to a mark from an earlier-filed application. The examining attorney’s review will include a search of USPTO records for potentially conflicting marks.
- The mark merely describes the goods or services (like a trademark for “trousers” where the goods are pants).
In addition, any party who believes it may be harmed by a mark’s registration may file an opposition of the mark, before publication, or petition to cancel, after registration, with the Trademark Trial and Appeal Board (TTAB).
The TTAB handles, among other things, proceedings brought by parties seeking to prevent the registration of another party’s trademark or seeking to cancel the registration of a trademark.
For general information about the registration process, please see the “Trademark Basics” section of the ustpo.gov website, which includes instructional videos, the “Basic Facts About Trademarks” publication, frequently asked questions and answers and timelines for trademark processing, to understand what to expect in the overall process and when.
Editor’s note: This article appears in the March 2011 print edition of Inventors Digest.