With album revenues down, artists must brand

LEGAL ENTERTAINMENT

As album revenues continue to decline, musicians must find alternative means to make ends meet. Many artists are branching out of music and general merchandising to start businesses in related industries. To market and monetize on any situation, artists must protect their brand — their name, image and likeness. The most important aspect of an artist’s brand arguably is their name: Fans will remember it, repeat it, shout it. This can be the artist’s legal name, stage name or their logo. The key is to create a memorable brand and impression on fans that’s exclusive to that particular artist. A strong brand opens licensing opportunities, but technology allows for easy counterfeiting and misuse of an artist’s name. Artists must actively protect their brand to prevent unfair business practices, dilution and other types of infringement.

Federal law provides protections for a name or any related trademark. Protection is granted through actual use in commerce in association with goods or services. Registration solidifies trademark protection and grants owners the power to file for infringement in federal courts; it acts as a bar to subsequent applications with similar names in similar services; it serves as constructive notice; and most importantly, it serves as prima facie evidence that the mark is valid. Each right granted aides the artist in protecting their brand from misuse. Any third-party use of a similar mark within similar services will dilute or otherwise harm a trademark. Even after registration, the owner of the mark must continuously monitor any use of confusingly similar trademarks.

To register, an artist must file (or have an attorney file) an application with the United States Patent and Trademark Office (USPTO). There are two main categories of applications, one for use in commerce (“1(a)”) and one for an intent to use (“1(b)”). The application requires owner and correspondent information. The owner may be the artist themselves or possibly a holding company since the trademark will be an asset. The application is not a “catch all” — the artist must apply for specific “classes” of goods and/or services. Not all classes need be registered for at once. However, there is a risk that another person will file an application for a similar mark in the classes desired to apply for in the future, thus preventing an artist from acquiring rights in those classes.

If filing a 1(a) application, the USPTO requires the applicant to send in proof of the trademark being used in commerce in connection with the services. If filing a 1(b) application, the applicant must file proof of use within six months or file a six-month extension (up to five extensions allowed), effectively putting a hold on a trademark for up to three years.

Once filed and after review, the USPTO will either publish the application for opposition which allows others to oppose the registration of the mark, or the USPTO sends an office action denying the application and allows the applicant to remedy the issues. Application proceedings are no simple task and take time. More times than not, the application process has some sort of hiccup.

For example, last year Kylie Jenner (of Kardashian fame) filed a registration for the mark KYLIE in connection with a variety of services including, perfumes, musical recordings and entertainment services. However, well-known pop musician Kylie Minogue filed a notice of opposition with the trademark office. Minogue opposed the trademark registration as it is similar to her registered trademarks KYLIE in the same services and thus would likely confuse consumers as to the source. Minogue argued such confusion would damage her KYLIE brand.

In this type of situation, the parties can go through the USPTO and battle similar to litigation, which can last years. The more common, and cheaper, route is to negotiate to have the applicant register a different mark, or possibly, work out some sort of license or co-existence. The KYLIE opposition proceeding was suspended twice for negotiations. Earlier this year, Minogue withdrew her opposition. The assumption is that the parties reached some sort of agreement.

Anyone can attempt to register a trademark similar to a registered mark. This is just one of many examples of how important it is to monitor your trademark — and how important it is to conduct research prior to filing an application.

When choosing a trademark, an artist must make sure to choose a name that is not so similar to another’s as to confuse consumers, even when it’s a name. Jay-Z and Beyoncé recently filed an application for registration through their holding company for their daughter’s name BLUE IVY CARTER for a long list of goods and services. Their application was opposed by a New England-based company called Blue Ivy Events for being confusingly similar to their BLUE IVY registered trademark. The opposition was just filed in May, so there won’t be a determination any time soon. A likely outcome would be identical to the KYLIE situation, unless the couple can argue that BLUE IVY and BLUE IVY CARTER are not confusingly similar. But since the trademarks are to be registered in similar services, Blue Ivy Events has a strong case. The parties had started a face off in 2012 when the couple first attempted to register the name. Unfortunately, after Blue Ivy Events filed the opposition, the couple failed to file the appropriate paperwork. This time around will be different, since the couple responded to the opposition. As of now, it looks like the parties are moving forward in discovery. This proceeding may take some time even if it ends in settlement.

Registering and protecting your trademark is significant for an artist’s brand and overall marketing success. Choosing a distinguishable mark creates a memorable brand. This opens the doors to licensing and merchandising opportunities. With advances in technology, the need to be aggressive against infringement increases as the ease of selling counterfeit merchandise and engaging in false endorsements continue. Even after registration, monitoring an artist’s brand needs to be a top priority throughout their career.