Law Tips: Obtaining trademark protection for an artist’s name

njvlaOn the second Friday of each month, NJArts.netpublishes an article on art law written by a volunteer attorney of New Jersey Volunteer Lawyers for the Arts.

Many times, artists or entertainers will wish to register their name as a trademark. This is more difficult thanobtaining a traditional trademark registration for a brand name, but can be done if certain requirements aremet. However, even if you cannot get a trademark in your name for one reason or another, remember that youstill have your right of publicity to rely on to prevent someone else’s use of your name or likeness without yourpermission.

CONSENT

In order to register your name, portrait, or signature as a trademark, the United States Patent & TrademarkOffice (USPTO) requires your written consent —so no one else can register your name as a trademark withoutyour permission. The consent requirement also applies to the registration of a pseudonym, stage name, ornickname, if there is evidence that:

• the pseudonym, stage name or nickname identifies you and you are publicly connected with the goodsor services in the application,
• the pseudonym, stage name or nickname is generally known, or
• pseudonym, stage name or nickname is well known in the field relating to the relevant goods orservices.

Consent is presumed where the individual whose name or likeness appears in the mark personally signs theapplication.

That’s the easy part.

USE OF NAME ON WRITTEN WORKS AND SOUND RECORDINGS

The more difficult issue is that any mark consisting of the name of an author used on a written work, or thename of a performing artist on a sound recording, must be refused registration as a trademark if the mark isused solely to identify the writer or the artist. Written works include books or columns, and may be presented inprint, recorded or electronic form. Likewise, sound recordings may be presented in recorded or electronicform.

However, the name of the author or performer may be registered if:

• It is used on a series of written or recorded works; and
• the application contains sufficient evidence that the name identifies the source of the series and notmerely the writer of the written work or the name of the performing artist.

If you cannot show a series, or can show there is a series but cannot show that the use of your name identifiesthe source of the series, the mark may be registered on the Supplemental Register but may not be registeredon the Principal Register by showing secondary meaning. Except in certain circumstances, this is generallyacceptable, because most (but not all) of the protections afforded to marks on the Principal Register areavailable to marks on the Supplemental Register.

In an application seeking registration of an author’s or performer’s name, you must provide evidence that themark appears on at least two different works. Such evidence could include copies of multiple book covers ormultiple CD covers that show the name sought to be registered. A showing of the same work available indifferent media, i.e., the same work in both printed and recorded or downloadable format, does not establish aseries.

Remember that the use of your name on a series of works does not, in itself, establish that your namefunctions as a mark. The record must also show that your name serves as more than a designation of you asthe writer or performer, i.e., that it also serves to identify you as the source of the series.

Actual names and pseudonyms of individuals or groups function as marks only if they identify and distinguishthe services recited and not merely the individual or group. Your name is only registrable as a mark if you canshow that it is used in a manner that would be perceived by purchasers as identifying the services in additionto you as a person. For instance, using the mark on handbills would function as a mark to identify liveperformances by a comedian, where the mark was used to identify not just the character but also the act orentertainment service performed by the character. Also, where you can show use of your name in conjunctionwith a reference to services and information as to the location and times of performances, costs of tickets, andplaces where tickets could be purchased, the name would function as a mark.

A showing that your name functions as a source identifier may be made by submitting evidence of either:

• promotion and recognition of your name as a source indicator for the series or
• your control over the name and quality of your works in the series.

To show that your name has been promoted and is recognized as indicating the source of a series of writtenworks, you could submit copies of advertising that promotes your name as the source of a series, copies ofthird-party reviews showing others’ use of your name to refer to a series of works, or evidence showing yourname used on a web site associated with the series of works.

Alternatively, you may show that your name functions as a source indicator by submitting documentaryevidence that you control the quality of your distributed works and control the use of your name. Such evidencewould include license agreements and other documentary or contractual evidence.

If you maintain control over the quality of the goods because the goods are published or recorded directlyunder your control, you may submit a verified statement that “the applicant publishes or produces the goodsand controls their quality.”

USE OF NAME ON ORIGINAL WORKS OF ART

In contrast, use of your name or pseudonym on an original work of art may be registered on the PrincipalRegister without a showing that your name identifies a series. Original works of art include paintings, murals,sculptures, statues, jewelry and similar works that you personally create.

If you want to learn more about how to register a trademark in an artist or band name, search for “Beatles” onthe USPTO website (uspto.gov) and review the applications and attendant documentation you find.

These documents are a great source of information on how to properly attempt to register these types ofmarks, and how to respond to potential Office Actions from the USPTO.

DISCLAIMER: The views expressed here are those of the author alone. This article is not meant to replacecompetent legal advice regarding your particular situation. The author can be reached atgary@garylaurieesq.com.

Biography: Gary Laurie, Esq. is a solo attorney in Clifton. His practice focuses on entertainment and artslaw, intellectual property licensing, and general business/contract law in the entertainment industries. He is theimmediate past Chair of the Entertainment Arts and Sports Law Section of the New Jersey State BarAssociation, and teaches legal courses at Montclair State University and New Jersey City University. Heprovides volunteer services for the New Jersey chapter of the Volunteer Lawyers for the Arts. You can visit hiswebsite at garylaurieesq.com or contact him directly at gary@garylaurieesq.com

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