Commonlaw tdmk band name established. Want to register. Another party began infring

[musicman1]

FLorida, US

I did a trademark search and search of all music sales and streaming outlets as well as major social media sites a few years back to verify that no one was using a particular short phrase as the name for a musical entity. My search showed that although the phrase appears in many places, no one was using it as their name for any sort of commercial use describing an entity. Think "Friends With Benefits", for instance, as a band name. No one was using it as such.

I started using it at that point, and it has been in persistent use for music sales and streaming for a couple of years now in nearly every major music sales, streaming, and video outlet around the world. In addition, I have used it on many prominent social media networks, etc. In each case, I have used the same logo containing the wordmark followed by the TM symbol.

A year ago, another entity who's M.O. is to create soundalike recordings with the intention of tricking listeners into accidentally streaming or purchasing their identical version began infringing. They did so not because they wish to persistently use the mark, but rather because the phrase happened to be the name of the song they were copying, and they simply chose the song title as the band name in a poorly researched one-off. I presented them with a cease and desist in defense of the mark, and they agreed to take it down and rename the "band."

A year later now, the same exact situation has unfolded. Another entity is using it as a one-off simply because it matches the song title. I understand that in their case, even HAVING a band name is detrimental since the entire purpose is to fool searching listeners. Apparently, they know enough to realize that they can't use the original artist's name or they would be sued for infringement. Their attempt to have no discernible identity and maximize keyword relevance for those seeking the original track has, however, caused them to land on my mark instead.

So... I have not registered as I did not have the money last year. I have been making money from the music lately, and do have the funds. Here's the current situation.

1 I need to stop the infringing party ASAP (They are appearing as me displacing my own tracks and directly costing me money)

2 I need to register the trademark federally

I have read up all I can about the filing process, legal opinions, etc, but not sure what particulars are about filing application WHILE infringement is in process. Does this affect my application somehow? Is there a certain order in which I should proceed? I have sent a cease and desist to the infringer's aggregator (who they use to be listed in itunes, etc), but they have not responded, and have not forwarded their client's contact information (what they have listed only leads to me).

It's about as well established a case of commonlaw trademark as I could hope for (established unique and persistent commercial use in nearly all of the exact same outlets in which they appear.) Only concerns are the fact that it is a common phrase outside of this context (Again, "Friends With Benefits" is probably a good example of it's use and ubiquity), and that it is not yet registered. Looking to fix that.

Please don't just answer that I need an attorney. If I could afford one, I wouldn't be on here, so despite your best intentions, I promise such "advice" is of no use to me as it is simply not an option. I've barely got the filing fee, but I have personally handled more complex legal maneuvers in the past, and am more than willing to do all the research necessary to do it right. Need practical advice on exactly which order in which I should be proceeding, and whether and how the current infringement affects my application process.

thx

 

[quincy]

FLorida, US

I started using it at that point, and it has been in persistent use for music sales and streaming for a couple of years now in nearly every major music sales, streaming, and video outlet around the world. In addition, I have used it on many prominent social media networks, etc. In each case, I have used the same logo containing the wordmark followed by the TM symbol.

A year ago, another entity ... began infringing ... I presented them with a cease and desist in defense of the mark, and they agreed to take it down and rename the "band."

A year later now ... Another entity is using it as a one-off simply because it matches the song title ...

1 I need to stop the infringing party ASAP (They are appearing as me displacing my own tracks and directly costing me money)

2 I need to register the trademark federally

I have read up all I can about the filing process, legal opinions, etc, but not sure what particulars are about filing application WHILE infringement is in process. Does this affect my application somehow? Is there a certain order in which I should proceed? I have sent a cease and desist to the infringer's aggregator (who they use to be listed in itunes, etc), but they have not responded, and have not forwarded their client's contact information (what they have listed only leads to me). ...


... Please don't just answer that I need an attorney ...

First, I am going to recommend you see an attorney.

Second, you need to send another cease and desist letter to the infringer and hope that this latest infringer will stop using your name as the previous entity did.

Third, you should register your mark now for the additional protection federal registration provides. You do not necessarily need an attorney to help you with the registration although an attorney can make the process an easier one. Go to the USPTO website and follow the instructions on applying for registration: http://www.uspto.gov

Any success with a trademark lawsuit will depend on a likelihood of confusion caused by your use of the trademark and any infringer's use. Should you decide to file an infringement lawsuit, you can file suit in either a state court or, if you have used your mark in commerce, you can file suit in a federal court. Damages awarded can depend on whether the use of your mark can be proved willful (which means, the other entity must know of your trademark and uses it anyway) and will depend on the amount of harm you can prove (which could be negligible). And, of course, you need to prove the infringement.

If anyone else objects to the federal registration of the mark, they can file an opposition to its registration. The fact that you were apparently the first to use the name and apparently have been using it for an extended period of time both work to your benefit should your registration be challenged.

Good luck.

 

[musicman1]

That's pretty much the steps I'm taking. I also tried takedown notices with YouTube and music outlets, but they have so far been rejected saying to contact the uploader. I've spent every penny getting this brand off the ground, so really need to exhaust every low or no cost option.

I have no doubt I would win a case if it were to go to trial based upon all the criteria, but again, it is currently unregistered. I also believe the infringer has no financial motive to fight to keep the name. It's a one-off to them, and not worth them fighting for. They can just change the name and collect the check all the same vs fighting to keep something they had no long term plans for anyway. In a month or two, they'll have moved on and start feeding all their fake streams to some other track.

I have a couple specific issues that need to be addressed, though. The first is that I have no way to contact the infringer directly. I have located their aggregator (who they use to appear on iTunes, Spotify, etc), which is a company out of Germany. The aggregator has not responded to multiple emails asking that they either take down the track or forward the contact information for the uploader so i can send them a cease and desist directly.

So, is there some international version of return receipt mail? What do I do if they refuse to forward the contact info?

Second issue is that I need to get this registered moving forward. I've read every relevant page and much more for USPTO filing, and am confident under normal circumstances that I've got it covered... but still am not clear how current infringement affects my application. Should it be mentioned in the application, should I do everything possible to eliminate the infringement prior to applying? Can't afford to throw away the application fee, and this is the one variable I can't find and answer as to how to address.

Also, there is one small detail I should probably address. There is a difference of a single punctuation mark between my mark and the infringer. I understand this is inconsequential in terms of people mistaking one for the other, but I have decided (having nothing to do with the infringement) to change mine to the alternate version of the same phrase including the punctuation mark. I eliminated it originally because it was stripped in url's and some other online applications anyway, and disregarded by many search engines, but there are some search engines in which people are now being directed to them FIRST when searching directly for me, so it would seem better to use the slightly more common punctuation version.

So... is this an issue at all if I put the alternate punctuation version (inclusion of one punctuation mark) in my application (matching the one they used)? Or is it just inconsequential because it is a generally disregarded distinction? (Think "Jimmys Jams" vs "Jimmy's Jams")

 

[quincy]

I have a couple specific issues that need to be addressed, though. The first is that I have no way to contact the infringer directly. I have located their aggregator (who they use to appear on iTunes, Spotify, etc), which is a company out of Germany. The aggregator has not responded to multiple emails asking that they either take down the track or forward the contact information for the uploader so i can send them a cease and desist directly.

So, is there some international version of return receipt mail? What do I do if they refuse to forward the contact info?

Is the infringer in Germany or in a country other than the US? If so, there is no international trademark law so the "infringer" may not be infringing on your rights at all. Other countries operate on a first-to-register ownership of trademarks, unlike the US which operates on a first-to-use ownership. Trademarks that are used in one country can potentially be used by an individual or entity in another country.

A cease and desist letter can be ignored. It is not a court order. There is no force of law behind it. If an infringer ignores a cease and desist letter, the trademark holder would need to sue to enforce rights.

Second issue is that I need to get this registered moving forward. I've read every relevant page and much more for USPTO filing, and am confident under normal circumstances that I've got it covered... but still am not clear how current infringement affects my application. Should it be mentioned in the application, should I do everything possible to eliminate the infringement prior to applying? Can't afford to throw away the application fee, and this is the one variable I can't find and answer as to how to address.

You can register your trademark even if there is someone else or some other entity using the same or similar name - if the other's use has not been registered already in the same class. The other user can oppose the registration but the fact that the trademark is being used by someone else does not preclude registration of the mark. With opposition, however, the USPTO examiner might find that the other user can continue to use the mark, perhaps in a limited fashion.

Also, there is one small detail I should probably address. There is a difference of a single punctuation mark between my mark and the infringer. I understand this is inconsequential in terms of people mistaking one for the other, but I have decided (having nothing to do with the infringement) to change mine to the alternate version of the same phrase including the punctuation mark. I eliminated it originally because it was stripped in url's and some other online applications anyway, and disregarded by many search engines, but there are some search engines in which people are now being directed to them FIRST when searching directly for me, so it would seem better to use the slightly more common punctuation version.

So... is this an issue at all if I put the alternate punctuation version (inclusion of one punctuation mark) in my application (matching the one they used)? Or is it just inconsequential because it is a generally disregarded distinction? (Think "Jimmys Jams" vs "Jimmy's Jams")

The addition or subtraction of punctuation marks will not change the protection offered a trademark. McDonald's and McDonalds are both protected from use and from registration by others in the same class.

It is important to remember that the whole purpose of a trademark is to distinguish one business, product or service from that of another. If consumers can be confused by the use of the same or a similar trademark on different products or services, the trademark use by one might be challenged by the other user of the mark.

Again I recommend you sit down with an IP attorney in your area. Perhaps the IP department of a law school can assist you for free.

 

[justalayman]

That's pretty much the steps I'm taking. I also tried takedown notices with YouTube and music outlets, but they have so far been rejected saying to contact the uploader. I've spent every penny getting this brand off the ground, so really need to exhaust every low or no cost option.
)

are you seeking Youtube and others take down the music based on a trademark infringement issue or a copyright infringement issue? Was any media taken down initially but resurfaced?

 

[quincy]

are you seeking Youtube and others take down the music based on a trademark infringement issue or a copyright infringement issue? Was any media taken down initially but resurfaced?

If it were copyright infringement, YouTube would (generally) remove the infringed content upon receipt of a DMCA takedown notice. The fact that YouTube responded as it did to a takedown notice indicates YouTube did not consider it a copyright infringement matter but rather a trademark enforcement matter (or perhaps that could be how musicman1 has been presenting it).

From what I am getting from the posts is that the other user's use of the band's trademark is apparently directing traffic away from musicman1's music to the infringer's music. But it also could potentially be copyright infringement, depending on how "sound alike" the other music is.

The described situation IS a bit confused, though - which is why an IP attorney in his area could be of help (even though musicman1 does not find advice to seek out a personal review very helpful ).

 

[justalayman]

=quincy;3347225]If it were copyright infringement, YouTube would (generally) remove the infringed content upon receipt of a DMCA takedown notice. The fact that YouTube responded as it did to a takedown notice indicates YouTube did not consider it a copyright infringement matter but rather a trademark enforcement matter (or perhaps that could be how musicman1 has been presenting it).

and that is where I was going with it. I can see youtube ignoring a trademark issue but they are obviously required to respond to a takedown request for copyright infringement lest they be considered to be complicit in the crime. I read the post that this other band is not only using OP's name but has in fact copied their song. I suspect OP has made the request based on the trademark issue and not the copyright issue and that is the purpose of my inquiry.

From what I am getting from the posts is that the other user's use of the band's trademark is apparently directing traffic away from musicman1's music to the infringer's music. But it also could potentially be copyright infringement, depending on how "sound alike" the other music is.

exactly and that is where I was headed.

A year ago, another entity who's M.O. is to create soundalike recordings with the intention of tricking listeners into accidentally streaming or purchasing their identical version began infringing. They did so not because they wish to persistently use the mark, but rather because the phrase happened to be the name of the song they were copying, and they simply chose the song title as the band name in a poorly researched one-off. I presented them with a cease and desist in defense of the mark, and they agreed to take it down and rename the "band."

A year later now, the same exact situation has unfolded. Another entity is using it as a one-off simply because it matches the song title. I understand that in their case, even HAVING a band name is detrimental since the entire purpose is to fool searching listeners. Apparently, they know enough to realize that they can't use the original artist's name or they would be sued for infringement. Their attempt to have no discernible identity and maximize keyword relevance for those seeking the original track has, however, caused them to land on my mark instead.

sound alike recordings? identical versions? song they were copying?

Sounds like this other band is recording covers of OP's music but, as you say, it is surely not clear either way.

 

[quincy]

... sound alike recordings? identical versions? song they were copying?

Sounds like this other band is recording covers of OP's music but, as you say, it is surely not clear either way.

HEY, MUSICMAN1! We need some clarification here!