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

On the second Friday of each month, NJArts.net publishes 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 than obtaining a traditional trademark registration for a brand name, but can be done if certain requirements are met. However, even if you cannot get a trademark in your name for one reason or another, remember that you still have your right of publicity to rely on to prevent someone else’s use of your name or likeness without your permission.

CONSENT

In order to register your name, portrait, or signature as a trademark, the United States Patent & Trademark Office (USPTO) requires your written consent — so no one else can register your name as a trademark without your permission. The consent requirement also applies to the registration of a pseudonym, stage name, or nickname, if there is evidence that:

• the pseudonym, stage name or nickname identifies you and you are publicly connected with the goods or 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 or services.

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

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 the name of a performing artist on a sound recording, must be refused registration as a trademark if the mark is used solely to identify the writer or the artist. Written works include books or columns, and may be presented in print, recorded or electronic form. Likewise, sound recordings may be presented in recorded or electronic form.

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 not merely 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 identifies the source of the series, the mark may be registered on the Supplemental Register but may not be registered on the Principal Register by showing secondary meaning. Except in certain circumstances, this is generally acceptable, because most (but not all) of the protections afforded to marks on the Principal Register are available to marks on the Supplemental Register.

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

Remember that the use of your name on a series of works does not, in itself, establish that your name functions as a mark. The record must also show that your name serves as more than a designation of you as the 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 distinguish the services recited and not merely the individual or group. Your name is only registrable as a mark if you can show that it is used in a manner that would be perceived by purchasers as identifying the services in addition to you as a person. For instance, using the mark on handbills would function as a mark to identify live performances by a comedian, where the mark was used to identify not just the character but also the act or entertainment service performed by the character. Also, where you can show use of your name in conjunction with a reference to services and information as to the location and times of performances, costs of tickets, and places 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 written works, you could submit copies of advertising that promotes your name as the source of a series, copies of third-party reviews showing others’ use of your name to refer to a series of works, or evidence showing your name 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 documentary evidence that you control the quality of your distributed works and control the use of your name. Such evidence would 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 directly under your control, you may submit a verified statement that “the applicant publishes or produces the goods and 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 Principal Register 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” on the 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 of marks, 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 replace competent legal advice regarding your particular situation.

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