Band Names

[ZERO HEROES]

What is the name of your state (only U.S. law)? Texas


I have the band name Zero Heroes. There is a new band that has formed in another state called Zero's Heroes. What is the exact process to stop someone from using my trademark?


UPDATE/EDIT.... I appreciate what ya're trying to do, I will be using an attorney (I never said I wouldn't). I want to know the exact process, what lawyer will do to fight this for me. I'm here to be educated, not referred.


Thanks.

 

[The Occultist]

If your group has established itself in a certain region, I suppose it might be possible to prevent a new band in the same region from using the same name, but if this other group is in another state, I don't really think that you have any options here.

An internet search will show you that even today with a few big name artists there are different groups sharing the same name.

 

[ZERO HEROES]

If your group has established itself in a certain region, I suppose it might be possible to prevent a new band in the same region from using the same name, but if this other group is in another state, I don't really think that you have any options here.

An internet search will show you that even today with a few big name artists there are different groups sharing the same name.

IMO, that is a cop out answer. I've spent over $150K on my band to release an album this spring, I'm not going to have some other band ruin it. They're in the US, I'm in the US. I have no problem taking anyone to court to make sure they don't use my band name, I just need to know the steps to follow.

I did some reading.... Do I need to file an injunction? If so, how can I do that?

 

[JETX]

How can I stop them from using that name?

Contact a local attorney who can review YOUR 'rights' on 'your' band name.
IF appropriate, then the attorney can draft a 'cease and desist' letter to the other party.
Any additional steps would depend on the actions of the other party.

 

[ZERO HEROES]

Contact a local attorney who can review YOUR 'rights' on 'your' band name. IF appropriate, then the attorney can draft a 'cease and desist' letter to the other party. Any additional steps would depend on the actions of the other party.

I'd like to know what needs to be done and the steps that will get me to the finish line. I've already contacted them and told them to stop using it. They refused. So an injunction should be the next step, if my research is correct.

 

[JETX]

I've already contacted them and told them to stop using it. They refused.

Of course they do. They know that your 'request' means nothing. That is why you should follow the advice I gave earlier.

Simply, you have two choices:
1) Get an attorney (as suggested), or
2) Continue to allow them to use 'your' name.

 

[ZERO HEROES]

Of course they do. They know that your 'request' means nothing. That is why you should follow the advice I gave earlier.

Simply, you have two choices:
1) Get an attorney (as suggested), or
2) Continue to allow them to use 'your' name.

The suggestion was already noted. I'm here to find out the process.

 

[The Occultist]

Situations like this are best handled by a professional. This other group is certainly not going to take you seriously if you've no legal representation, and you'll very likely find yourself unable to argue your case in court without an experienced attorney representing you. The best thing you can do is actually sit down with an attorney versed in such law so that he can analyze all relevant facts and advise your accordingly. Many attorneys will offer free/cheap consultations, so it might even be worth it to sit down with a couple to see what insight they may have to offer.

 

[ZERO HEROES]

Situations like this are best handled by a professional. This other group is certainly not going to take you seriously if you've no legal representation, and you'll very likely find yourself unable to argue your case in court without an experienced attorney representing you. The best thing you can do is actually sit down with an attorney versed in such law so that he can analyze all relevant facts and advise your accordingly. Many attorneys will offer free/cheap consultations, so it might even be worth it to sit down with a couple to see what insight they may have to offer.

No one said I was going to do this myself ;-). I don't want to be rude, but at this point ya'll need to stick to what I'm asking. I appreciate what you're trying to do, but it's not what I want.

I take it you don't know the answer.

 

[The Occultist]

You're right, I don't know the answer. But my advice still stands: you're better off sitting down with somebody that has access to all the information you can offer rather than a bunch of strangers on an internet forum.

The best person on this board to answer your question is likely Div, but I haven't seen him around recently. I hope he is enjoying the holidays, and hopefully he might be by soon enough to hopefully provide an answer you find acceptable.

For that matter, I don't believe I've heard from FlyingRon either.

 

[quincy]

Divgradcurl and FlyingRon are nowhere around and yet you and I are posting away, The Occulist. It must mean our holidays suck.

ZERO HEROES, if you have not visited the US Patent and Trademark Office website, that would be a good first step for you to take. Go to United States Patent and Trademark Office for the answer to the majority of the questions you may have. Div (an IP attorney) may post later to elaborate.

Registering your trademark with the USPTO makes it easier for you to protect your band's name against infringers, and it also provides notice to others that the name is taken, but it is the use of the mark in commerce that confers rights in a mark. The site provided above will tell you what the requirements are for registration, how to file an application to register your mark, and the costs involved in registration. It will also advise you on the benefits of registration. Registering your mark is something you can do on your own, without an attorney, although having an attorney advise you is recommended.

You may also want to check to see if the other band has registered THEIR name.

You have the burden of establishing your rights to the name and enforcing your rights to the name. You may sue to prevent the other ZERO HEROES from using your name and, for this, as has been advised countless times already by the forum members, you would be wise to consult with an IP attorney in your area. Unless your mark is well known (recognized by the general consuming public as a designation for your band alone), you may have a difficult time preventing the other band's use of the name ZERO HEROES. A cease-and-desist letter will not work if the other ZERO HEROES know they have an equal or greater right to the name.

If you sue to prevent the other band's use of the name, a court will look at how long the name ZERO HEROES has been used by both groups, the extent to which they have been used, the geographic reach of the use, the extent of the sales under the use, the recognition of the name in connection with the bands, and whether either mark has been registered with the federal government.

The court will look at whether the other name is being used on a competing good or service, whether consumers are likely to be confused by the same or similar names, and whether the marks are being used in the same part of the country or distributed through the same channels.

If the court finds that you have not been damaged by the other use of the name, the court may allow the other band to continue its use of the name - although, perhaps, and depending on all of the facts, in a more limited way. Or, and again depending on all of the facts, you may be prevented from using the name, or limited in your ability to use it.

I recommend you visit the USPTO website, check back here for additional posts (hopefully from divgradcurl), and consult with an attorney in your area to review the facts of your situation and to see what, if any, steps you can take to prevent the other band from using the name you wish to claim as yours alone.

As a final note: becoming educated is a fine goal, ZH, but being snippy with the forum experts here is not the best way to accomplish that goal. Your comments on the other site about FreeAdvice are interesting, by the way.


Edit to add:

FlyingRon stated in Zero Heroes' other, now-closed, thread that the "Zero Heroes" trademark was cancelled. Joe (aka Don Draper among others)'s "mom" filed for registration with the USPTO in May of 2001, the first use of the "Zero Heroes" mark was in September of 2001, the registration date for the mark was November 2002. The mark's registration was cancelled on June 27, 2009, because it was not renewed in 2008 as required. Joe needs to file again, if he has not already done so, to have a valid federally-registered trademark.

There are actually more than just the one additional "Zero Hero" group (and variations thereof) in the U.S. The one Joe is apparently referring to in this thread is located in Minnesota. This group has been performing under the name "Zero's Heroes" for some time. Other groups using the same or a similar name are located in other states (Maryland and Connecticut, for two). At least one of the groups has registered their name with their state. Even if these groups do not have federal registration, they may still have legally protected rights to their names under state registrations and common law.

I would be interested in hearing what divgradcurl thinks the odds are of an injunction being issued against these other groups, considering the June 2009 cancellation of Joe's mark, the state registration of the name by another group, and/or the use of a similar mark by other groups recognized in their areas under this name. Div?

 

[divgradcurl]

Cancellation of the mark is largely irrelevant to the question of whether or not an injunction can be issued, if the mark was canceled as a result of failing to comply with administrative requirements (as opposed to cancellation for substantive reasons). Cancellation of the mark in this case simply means that the OP will have to prove that his mark is valid and enforceable in the relevant locales, instead of relying on the presumption that the mark is valid and enforceable.

A preliminary injunction (the first injunction usually sought in a trademark case) requires a showing of four factors -- likelihood of success on the merits of the case (which will include a showing that the trademark is valid and enforceable in the relevant locales, as well as a showing of infringement), irreparable harm (this is usually presumed if there is a showing of likelihood of success on the merits), a showing that the harm to the plaintiff if the injunction is not granted is greater than the harm to the defendant if the injunction is granted, and that an injunction is in the public interest. All of the factors cited may be relevant to prove (or oppose) one or more of the four factors here, but none are dispositive, and there is no way to estimate whether or not an injunction would be successful based on the facts as given here.

As far as the state and common-law rights others have, it will require figuring out who gained what rights when to determine whether or not the OP has rights that trump the rights of the other parties. There is no way to determine that without all of the facts.

 

[The Occultist]

Div! Glad to hear from ya. Hope your holidays went well!

 

[quincy]

Thanks, divgradcurl!

I understood that more information would be necessary for any definitive answer to the situation here, but the response you provided is exactly what I was interested in knowing.