How and why to trademark an artist's name

Trademarks, similarly to copyrights, are a form of protection. They tend to protect anything that’s used to brand a good or service. In terms of the music industry, you can protect your name, as well as your logo, song titles, and phrases included in your lyrics or symbols.

As a form of identifier, trademarks are used to help people identify the source of the product or the service. Trademarks aim to prevent any unfair competition, such as someone causing confusion by having a name/logo/slogan similar to yours or entirely the same.

This means that trademark protection legally reassures artists that no other musicians or bands can take advantage of particular identifying factors to confuse the buying public. It may for instance happen that another band performs under the same name as you do, causing misunderstandings among your fans. Instead of buying tickets to your gig, they may mistakenly buy tickets to the other band’s concert. In such a case, trademarking the band’s name will prevent you from encountering such situations.

In many articles and guides that we’ve published, we’ve mentioned the importance of protecting the copyrights in your music. You can read more about it in our guides about music licensing, song covers, or remixes. Just like trademarks, copyrights, too, are a type of property protection.

So, what is the actual difference between trademarks and copyrights? Copyrights are used to protect the creative, original works of art and provide the rights to artistic works that have been created through a tangible medium, such as digital track, tape, disk, or other formats. They are essential for the protection of almost any type of artistic expression. These are namely, in the context of music, sound recordings, and musical compositions, but also lyrics, melodies, arrangements, performances, etc.

While copyrights tend to protect the artistic side of intellectual property, trademarks protect their commercial side aligned with the law. More importantly, however, trademarks are used to protect the unique and specific identification of a brand in our case, the artist or the band, and the product. meaning their name, the album’s or song’s name, slogan, logo, etc. Meanwhile, copyright in music shall prevent unauthorized copying, reproduction, or distribution of a specific piece of work.

Additionally, copyright is generated automatically upon the creation of work. However, one needs to take additional steps to ensure that the copyright is enforced. (Note: this very much depends on where you are based - e.g in Europe, no further registration is required to enforce the copyright protections, but in the USA, you need to register the copyright with the Copyright Office). Trademark protection needs to be applied for.

As said before, the ultimate benefit of trademark protection is that it prevents unfair competition and the chance of confusing your audience. More than that, a registered trademark allows you to have more protection than the one given to you by ‘common law’. With trademark protection, you may be legally entitled to financial remedies and compensation in case of potential infringement.

Furthermore, trademarking your song/album’s name or a particular part of your lyrics may turn out to be profitable to you, especially when it comes to merchandise. It’s fairly common for unauthorized brands and companies to produce pieces of merchandise with lyrics and phrases of various artists.

What they may not know though, is that the artists are often legally entitled to these lyrics because of a registered trademark. This gives the trademark owners the ability to stop the illegal production and sale of goods and even request compensation for potential financial loss (which is possible only with official trademark protection).

Trademarks are also beneficial should the artist be accused of infringement. That’s because registering for a trademark automatically prevents you from infringing on an already existing mark as the whole process is supplemented by thorough research on the topic.

This means that a trademark can defend you against the chance of both being infringed on by somebody and being alleged to infringe upon someone else. It may therefore be convenient to register your trademark as soon as you decide to use it. That's because, upon its registration, a trademark will give you the right and priority of usage.

The only serious disadvantage of trademarks is their cost, depending on several factors set by the respective trademark office. These are, for example:

• United States Patent and Trademark Office (USPTO) for the US;
• European Union Intellectual Property Office (EUIPO) for European countries; or
• European Patent Office (EPO), which deals with the concept of patents across European countries.

According to the USPTO, these factors include the application filling option (Standard vs. Plus; electronic or not), the application filling basis, the number of marks, the number of classes of goods or services you include (the higher the number, the higher the cost), and other possible costs.

Moreover, you must take into consideration that you need to maintain your registration at regular intervals, which also implies additional fees. To register a trademark for one international class with USPTO can generally be around $275-500. You can check the exact price on their website.

The cost of registering a trademark with EUIPO depends on factors such as the type of class of goods or services, type of application (electronic or not), or type of mark (collective/trade/certification mark). Additional costs may comprise renewal costs, opposition fees, fees for inspection of files, and more. For example, only the basic fee for an electronic application for an individual EU trademark costs 850€. You can see the overall list of EU trademark fees on their official website.

Besides national trademark offices, such as the EUIPO and USPTO, numerous national and international organizations deal with trademarks. One of them is also the World Intellectual Property Organization (WIPO) based in Switzerland. The WIPO provides an international trademark system, the so-called Madrid System. The Madrid Scheme allows for a convenient and cost-effective form of registering and managing trademarks globally.

Through the system, individuals can apply for trademark protection in up to 128 countries while filling out one application and paying one set of fees. The members of the Madrid system, meaning the 128 countries, include the USA, as well as the majority of European countries. Registering a trademark with the system's Madrid Protocol, therefore, means that you’ll file for international protection of your mark beyond the borders of your country.

The cost of international trademark registration with WIPO includes the basic fee, which is set to be 653 CHF. However, there are additional costs that depend on where you want to protect your mark, and how many classes of goods/services will be included in your registration. You can find out more about the Madrid system and the registration fees on their page.

Important note: To be able to file an international trademark application, you must first apply for a national trademark with your home IP Office (Office of origin). This ‘fundamental trademark’ will then become the basis for your international trademark registration.

Although the duration of trademark protection can vary, the most common duration period is 10 years. Afterward, the validity of the trademark can be prolonged indefinitely as long as the trademark is still used in commerce. You will need to pay renewal fees to prolong the validity of your trademark.

Sometimes it happens that the trademark owner decides not to use the trademark anymore. In such a case, after three years of not being used in commerce, the trademark falls through, after being presumed abandoned.

The first step in the process of trademarking your or your band’s name is to carry out a search, to simply find out whether your respective name qualifies for trademark protection. In other words, you need to find out whether the performing name you've chosen is already in use by another artist. A Google search will give you some initial insights and information.

Bear in mind that proposed names that are too similar to those already in use cannot be legally protected either. That’s because such names are considered by the trademark laws as ‘confusingly similar'. This means that they can cause confusion among members of the public who could then mistakenly stream or purchase music that they thought was performed or recorded by someone else.

While Google may be great for initial search, it’s just the first step before moving to the trademark database of your home IP Office. It can also be the office of the territory where you currently live in. This step is crucial and extremely beneficial as you will find not only the already registered trademarks but also the applications for trademarks that are currently pending.

Additionally, you can also search the WIPO’s Global Brand Database which comprises more than 52,210,000 records from around 73 national and international database collections (including trademarks, the appellation of origin as well as official emblems). You can simply look through marks in markets that are interesting to you and see if a mark similar or identical to yours already exists and is registered.

Below, you can see a list of relevant national trademarking registry offices:

• UK: GOV UK
• USA: United States Patent & Trademark Office (USPTO)
• Europe: European Union Intellectual Property Office (EUIPO)
• Canada: Canadian Intellectual Property Office (CIPO)
• Australia: Australian Government IP Australia (IPA)
• Brazil: National Office of Industrial Property (INPI)
• South Africa: Companies and Intellectual Property Commission (CIPC)
• Chile: Instituto Nacional de Propiedad Industrial (INAPI)
• Mexico: Mexican Industrial Property Institute (IMPI)
• India: Intellectual Property India (IPI)

If both Google and database search seem to indicate that your pre-determined name is truly unique, then you're ready to rock! Now, it’s time to move to another step which is to fill in your application form! There is key information that you should have prepared in advance to fill in the form correctly (without being signed off of your session for taking too long to complete the process).

The class in your trademark application refers to the category that you want your trademark to cover. Naturally, there are plenty of different trademark classifications and only particular ones are suitable for professionals from the music industry. Connected to the number of field categories is also the description. Individual classes may have several different descriptions to choose from. it’s therefore important to select the one that's relevant to you.

The classification numbers, and particularly the descriptions (lists of terms) may differ depending on the IP office of the area/territory where you’ll register your trademark. However, generally speaking, the classes that may be of the greatest importance to you will be those covering the topics of music recording or live and public music performances.

For example, in both the UK and USA, the class n. 41 is concerned with music recording, music production, and live and public music performances, such as concerts or online streaming. Classification n. 9 is dedicated to recorded or pre-recorded music, both in physical (CDs, vinyl, cassettes, etc) and downloadable formats. Finally, class n. 35, according to the American USPTO, is concerned with music retail.

After choosing the appropriate class, you need to select the relevant class description or term that most accurately and correctly describes the service or good that you offer. For instance, the USPTO has a separate database for pre-determined and pre-approved class descriptions that you can search to find the most suitable one.

You are also allowed to create a specific description of your own but that one will give the trademark examiners more reasoning to more precisely investigate your application. This can make the whole process more lengthy and complicated.

If you're unsure about the category and or its description, it may be a good idea to get in touch with professionals more familiar with the field of trademarks. This can include managers, music or trademark attorneys, or lawyers in entertainment services. Although this may add to the final cost of the trademark, some legal advice in this regard may be worth it. Remember that it’s very important to get this information right.

Another important piece of information to provide in your application is the formatting of your name, which can include only standard character form or, additionally, some special characters, such as numbers or symbols. For example, the Canadian rapper who pronounces his name as ‘baby no money’ writes his name as ‘bbno$’. The American rapper, A$AP Rocky, also officially uses a dollar sign in his name.

After going through the previous steps, there are still some fields missing that need to be filled in. These are mostly concerned with personal and good/service information.

Firstly, you need to provide the ownership information, aka who will be the owner of the trademark. If you're a single artist then it will be an easy choice. However, if you trademark the name of a band, make sure that you all have shared ownership of the mark. Additionally, you’ll also have to provide the correspondence information, meaning the contact details to the person, whom the examination attorney can get in touch with in case of a potential issue with the application.

Finally, you’ll be requested to produce detailed mark information and provide some evidence of use. The evidence of use refers to documents or files that show that you’re already commercially using the chosen name. These are, for example, promotional and advertising material, like posters or flyers with your designed logo, or branded merchandise. If you’re not using the name yet, you can select the option of ‘intend to use’ in your application.

After filling in and submitting your application, it’s time to wait. We would recommend checking the status of your application once in a couple of weeks. For trademarks to be approved and registered, it can take from 3-4 months to a year or more!