If you’re a budding music group in Nashville, it may be more beneficial to trademark your band’s name than set up a Facebook page. Karl Braun, an intellectual property attorney, advises his Tennessee-based clients to immediately register their trademark with Tennessee’s secretary of state.
The Tennessee Trademark Act of 2000 governs the state’s trademarks. In accordance with the act, the only way a band can register its name as a trademark is by proving interstate commerce. This helps establish federal protection, as well. And the easiest way to prove interstate commerce is by selling merchandise or CDs on a band’s website. “The stuff actually has to be there and be for sale,” Braun adds. “It can’t just be a sham.”
According to Braun, the band that used its mark in interstate commerce first has priority. “Someone else can go to the Trademark Trial and Appeal Board and have your mark canceled because the challenging mark had been used previously in interstate commerce,” he says.
Braun adds that with a copyright, a person may want to file the registration without telling anyone the idea. With a trademark, however, you want to lay claim to a name before anyone else. “When you’re first offering it for sale in interstate commerce, that’s when your protection begins and where it stems from,” he says.
After you’ve registered your mark, you’ve got to enforce it in order to maintain it. That’s where a lawyer may get involved.
“If you have a competing artist using your name, the first thing I try to do is find out how I can get a physical cease-and-desist letter to them to a physical address,” says Braun. “But often I have to go through the procedures that are provided by Facebook or YouTube, or any of those other services to get notice to them.
“Interestingly enough, Facebook will actually make a determination, on their own, about who has priority,” he adds. “It’s based only on who opens their Facebook account first—when in fact, the actual determination is who used their mark first in interstate commerce. … But my client has an obligation … to enforce their trademark or they risk abandoning their mark. The cease and desist is basically to take down other people using the same name, confusing the general public as to the source of goods.”