Two U.S. Musical Artists; One Name

[musicquestion]

Hi, I'm a musician in Los Angeles that has been writing and recording music for a debut EP with a new project of mine since October 2013. I currently have a band name that I want to use and have already had a logo created. I recently discovered that this name is already in use by an artist in Alaska. The genres are different; he is a Pop singer/songwriter and my band is Hard Rock/Metal, yet the names are spelled exactly the same. The artist in Alaska has been using the name since 2011 and has already released two albums independently that are available on Amazon, iTunes, and Spotify. In fact, he plans to independently release a Christmas album this year. I have not found any evidence of touring history. The name is not Trademarked.

Question 1: Is it possible for both our bands to "co-exist" in the market?

Question 2: If I were to get the name trademarked would the other artist still be able to cease and desist my name due to the fact that he has been using the name longer?

Question 3: What are the steps that I should take to legally have the right to use this name?

I do not want to give up the name if possible. I also do not want any conflict with the other artist. My future goal is to perform live and release music on a national level with the support of a record label.

Please advise.

 

[quincy]

Hi, I'm a musician in Los Angeles that has been writing and recording music for a debut EP with a new project of mine since October 2013. I currently have a band name that I want to use and have already had a logo created. I recently discovered that this name is already in use by an artist in Alaska. The genres are different; he is a Pop singer/songwriter and my band is Hard Rock/Metal, yet the names are spelled exactly the same. The artist in Alaska has been using the name since 2011 and has already released two albums independently that are available on Amazon, iTunes, and Spotify. In fact, he plans to independently release a Christmas album this year. I have not found any evidence of touring history. The name is not Trademarked.

The name the Alaskan singer/songwriter is using to market and sell his music IS his trademark. It is the name by which his music is identified by the consuming public.

A trademark is simply a name (or logo or slogan) one uses to identify their product or service. The trademark distinguishes one product or service from another for the benefit of the consuming public, so they recognize the origin of the product or service.

In the US, federal or state registration of the name is not necessary for trademark rights. The Alaskan musical artist has gained rights in his trademark by using the name in commerce, by promoting and marketing his music under this name. And, if he has been selling his music nationally under this name since 2011, he would have reason to challenge any other musician who comes along and tries to use the same trademark to identify their musical product. The first user of a trademark is presumed owner of the mark (although this presumption is rebuttable).

Question 1: Is it possible for both our bands to "co-exist" in the market?

It is potentially possible for two bands with the same name/trademark to peacefully co-exist, if their markets do not overlap and consumers are not confused by the dual use of the name/trademark. If the Alaskan artist, for example, limited his market to Alaska and you limited your market to California, there might not be any conflict with you both using the same trademark.

Question 2: If I were to get the name trademarked would the other artist still be able to cease and desist my name due to the fact that he has been using the name longer?

If you were to start using the name the other artist has been using then, yes, he could send you a cease and desist letter or he could sue you for trademark infringement.

Question 3: What are the steps that I should take to legally have the right to use this name?

You could ask the Alaskan artist to give up the name, or you could offer to pay him for the name.

I do not want to give up the name if possible. I also do not want any conflict with the other artist. My future goal is to perform live and release music on a national level with the support of a record label.

Please advise.

With the goals that you have expressed here, I recommend you pick a name for your band that is unique to you alone and that no one else has a claim to, or you risk the legal conflict you say you wish to avoid.

Having all facts and particulars personally reviewed by an attorney in your area can be smart.

Good luck with your music.

 

[musicquestion]

Hi quincy,

Thank you very much for your response! That was extremely helpful.

 

[quincy]

Thank you for the thanks, musicquestion.

I wish you must success with your debut EP and your music career.