How To Understand Naming Issues

How To Understand Naming Issues
In the music business, your artist or band name is your brand name. But if you share the same or a similar name with another artist or group, the cost, both financially and musically, can end up being more of a hassle than it's worth. As the Vancouver-based duo of Jenny Galt and Vicky Sjohall (aka Cherrybomb) discovered, no matter how far you want to take your band, it's important to investigate your choice of name before you use it.

In July, just months after readying their first full-length album for release, Cherrybomb's lawyer got a letter from a Saskatchewan-based cover band, also calling themselves Cherrybomb. The Saskatchewan group had applied for a trademark, threatening the Vancouver Cherrybomb "because they're pissed that we were affecting their business," Sjohall says. By definition, a trademark is a word, symbol or design, or combination of these, used to distinguish the wares or services of one person or organisation from others in the marketplace.
Initially they wanted to fight it, but after discovering two more Cherrybombs, one in the UK and one in the U.S., they backed down. "The reason why we didn't fight is because to do this three times over and go to United States and go the United Kingdom would [take] a ridiculous amount of money."

Money is what trademarks are about — protecting a name directly tied to earning a living or providing a service. In the music business, it prevents anyone from profiting from merchandise, promoting concerts or selling albums under someone else's name. Sjohall says this name game dilemma has set the band back a year and has had "massive financial implications."

"Every single thing that has our name on it has to be redone," she says. "We were excited to starting pushing the album, start doing some touring, start making some money. We can't do anything until our name is changed."

Once that's done, she estimates it will cost $12,000 to reprint copies of the album, purchase a new domain name and get back to where they were in July. "And that doesn't even include the cost of getting everyone we've reached over the past six years to realise [that] we've changed our band name," she adds.

Trademark law revolves around two major concepts, territory and priority: where you use the name and who uses the name first. In Sjohall's situation, she says they stood a good chance of winning a dispute because to apply for Canadian trademark, "You have to be using it within the entire territory [not just in one province]. Technically, we are using the name in Canada a lot more." But the Saskatchewan Cherrybomb also had proof that they had used the name six months before her band did and again the legal costs would have been astronomical for an independent band.

Each country handles trademarks differently and once you're outside the territory you own the trademark in, it means little. In Canada, the Canadian Intellectual Property Office (CIPO) issues trademarks. This arm of the government is where you can apply for and search the list of trademarks approved, registered or rejected. According to the site, it costs $250 to $300 to apply and $300 to register.

"If it is filed correctly, approved without changes, and it is not opposed, you should receive the notice of allowance about 20 months after filing," the site says.

Paul Sanderson, of the entertainment law firm Sanderson Taylor, knows a lot about trademarks. In 1995, he forced then popular British grunge band Bush to release their records in Canada under the name Bush X because his client, Domenic Troiano of '70s rock band Bush, had acquired exclusive Canadian rights.

Sometimes it's as simple as adding numbers to the end of your name — as Death From Above 1979 (previously known as Death From Above) did when the New York-based DFA Records threatened a lawsuit — or it's a complete name change, like laptop wizard Manitoba changing his name to Caribou. But if you choose a name that someone else has the rights to, be prepared to go to court, Sanderson says.

"And if you think $1,500 to $2,500 [the cost to register a trademark with Sanderson Taylor as your legal representative] is expensive, wait until you go into litigation, it's tens of thousands of dollars in legal costs and up."

According to Sanderson, "whoever used [the name] first has the best case for having ownership. Who applies for it has the best procedural right, which means they get their application processed first," but adds, "that doesn't mean they are going to be the winner in the end. And things can transpire from there, whereby name rights are transferred or bought out or it's litigated, depending on how valuable the name is."

In the Bush/Bush X case, Troiano eventually reached an agreement that allowed Gavin Rossdale's group to use the name in Canada without the X, in exchange for $20,000 (donated to charity) from each of band member.

How much is a name worth, anyway? Sanderson says it's hard to pin down because "you can't really go to a textbook and say it's worth x amount. But the more you've used it and the more widely you're known by it, the more difficult it will be to change that name, so the dollar value is going to go up."

Both Sjohall and Sanderson agree that the best protection is for a band or artist to be proactive. "The best thing you can do is search as widely as you can and try and figure out if you're going to be the proper party to claim rights to the name," Sanderson says.

There are myriad ways to search for names including trade directories, local directories, SOCAN or you can pay a fee to search a website like bandname.com, a worldwide online band name registry. But both also acknowledge that no search is foolproof. "The more you search the more you're going to find but at the end of the day, searches can be defective or incomplete," Sanderson says.

"By far, the best thing a start-up group/artist can do is to try and register the name in [Canada]. Why? Because a valid trademark registration is a very good form of insurance," he says. "It's a preventative legal act." In the end, he says the next best way to avoid the hassle is to tap into the creative juices and come up with an original name, one that isolates you from the pack. "The more unique the name, the better."




Frequently Asked Questions

Do I need a lawyer to file for a trademark?
The CIPO website includes a tutorial and instructions that will lead you through the process of filing the necessary paperwork in order ensure the quickest resolution. "Some bands do it themselves and can affect a valid registration," Sanderson says. "There is a certain amount of technicality to make sure the application complies with the trademarks act and regulations and some people are not that inclined. People will call up and ask what it costs and when you walk them through the procedure and mention the sum of $1,500, well, that could go a long way to paying for their next release."

How can I prove that I (or my band) used the name first?
Sjohall says that after they pick a new name and ensure that no one in Canada is using it, the first thing they'll do is "have a show immediately and keep that evidence." Whether it's a ticket stub or promotions material, you need to have something that has the name and the date on it. "That's the most valuable piece of evidence — the first date you used your band name with a show."

I want to use my band name in other countries, what then?
At the CIPO website, it says that if you plan to export your wares and services to another country, the first thing to do is search that country's trademark directories in order to find out if someone else owns the rights to your name. If you want to have exclusive rights to use your name in another country, you will have to register your name there, which can be very expensive.

Someone else is using my trademarked name. What do I do?
While a Canadian trademark entitles you to exclusive, national rights to that name, Sanderson says, "You still have to enforce it." The way you do that is with cease and desist letters — telling said artist to stop using your name because you own it legally — or if that doesn't work, you can get a lawyer and sue. Sanderson also wants artists to know that, "A trademark trumps a website or a domain name. Only a trademark registered federally will give you the right to use that name nationally, exclusively."