Trademarks and The Business of Securing An Artist’s Brand Name
by Sheryl Nance-Nash
What’s the value of a name? Maybe millions. For rappers and other artists, trademarking a name is one of the savviest business moves he can make. Unfortunately, many rappers don’t make that move. “They don’t think it’s necessary,” says Robert Scott, managing partner of intellectual property law firm Scott & Scott.
That could prove to be the mother of all miscalculations. If you don’t trademark your own name, or infringe on someone else’s you’re wading in dangerous waters. “In March, Rapper T.I. was sued by Akoo International, Inc. a social music television network for his clothing line called Akoo Clothing. The lawsuit alleges trademark infringement of the Akoo International name,” says Scott. “T.I. might have avoided the lawsuit if he attempted to file a trademark for the Akoo Clothing line specifying that his use would be limited to clothing,” he adds.
Similarly, David Ortiz of the Red Sox opened a club in the Dominican Republic called “Forty-Forty”, after he had visited and became aware of Jay-Z’s 40/40 club, points out attorney Erik Pelton, who specializes in intellectual property. “Ortiz quickly agreed to change the name after a lawsuit was filed.”
What then are the first steps to take in trademarking a name? For starters, says Michael Steger, an attorney specializing in entertainment and trademarks, the rapper or manager should have searches performed to see if there is a registered trademark or pending application that would conflict with the proposed stage name, and whether anyone is using a similar name in public in a way that may conflict with the proposed stage name. Clear that hurdle, which can be difficult. “I recall a story about how SKG Dreamworks spent some $40 million clearing its mark, and was sued a week after the name was announced,” says Michael Risch, an associate professor of law at Villanova University School of Law.
Once you’re sure that your name is free and clear, file it with the U.S. Patent and Trademark Office (you can file even before you have begun to use the name), says Pelton. He advises using an attorney for the search and the application. The U.S. Patent Trade Office has online search (but only of their records) and application process. The USPTO filing fee is typically about $275. The application process can take 12-18 months. The application should cover the anticipated uses of the name, including music performances, recorded music and merchandising, for example.
It’s worth the wait. A trademark registration allows the owner to prevent competitors from using a confusingly similar name for competing services or goods. If you are not protected, stopping an infringer is likely to be more difficult and more expensive, says Pelton. If you do not properly clear the name before using it, you may be infringing on someone else’s trademark, which could force you to change names later, he adds. Simply put, protect your brand. “Obtaining a trademark gives you a superior legal right to everyone else to a brand name used in connection with your use of the name.
The trademark registration also gives you the exclusive right to license use of the mark,” explains Scott. Be aware, however, that if a rapper is well known, then common law rights that protect unregistered marks might apply. It would allow a rapper with a national reputation to sue a later appearing rapper using the same name. “This might not undo damage already done to reputation, but it might allow for an injunction against future use,” says Risch.
Like elsewhere in the business side of music, there are plenty of ways to make mistakes. When it comes to trademarks, three to avoid are “failing to use an original and creative name, failing to do a clearance search for a name before using it and failing to register the artist’s name properly, says Pelton.
Scott would add to that list the importance of making sure your trademark registration accurately covers your uses of the name. It’s not hard to do right, it just has to be on the to-do list. “Those with business experience, such as Jay-Z and P. Diddy understand the value of branding and the significance. Jay-Z and Roc-A-Fella own multiple trademark registrations,” says Pelton. A rapper doesn’t want anybody snatching the mike nor should he want anyone snatching his name.