Using Location With Trademarking A Band Name

[wizzkidder]

I had a scenario I wanted to present to you and possibly you can give me your input on.

Our band name is Three Hour Tour. We are a cover band here in Southern California. In Decatur, Illinois there is a band called Three Hour Tour and they compose original music, have released albums, etc. They have registered Three Hour Tour as their trademark and/or service mark. They sell records and some other merchandise. We don't. We're a cover band. We perform music that other artists have made famous.

We've been getting grief from them about us using the same name. Calling ourselves Three Hour Tour Band apparently doesn't make us "legal" for using the name. We were thinking about using Three Hour Tour SoCal or Three Hour Tour Southern California and actually trademarking (or service marking) that name. Since we cannot get our money back if the trademark application is rejected, I am trying to do some research first to find out if we can get approved for using Three Hour Tour with our geographic location in the name. I know this has worked for other bands in the past but these bands are in different countries. The Charlatans (here in the US) and The Charlatans UK for example. Can this type of naming be used and trademarked if we are in the same country as the other band? By using our state or area of the state in our band's name?

Since we are a band that performs but doesn't sell anything, do we need only a service mark since we provide a service but don't sell any merchandise? Can we register something that way?

Any help you can offer would be greatly appreciated.

Thank You!What is the name of your state (only U.S. law)?

 

[cyjeff]

I recommend changing the name of your band.

 

[The Occultist]

Are their albums/merchandise available in your state?

In and of itself, the name of a band cannot retain trademark protections. This other band, however, with their merchandise floating around, likely do retain some sort of protections, putting yourself in a potentially liable situation.

Even if your trademark application is approved, that will not prevent the other group from launching a lawsuit, and even winning the lawsuit.

Without contrary insight from Div or Quincy on the matter, I agree with cyjeff: change the name of your band. And the suggestions you put in where you keep the same name but add words on to the end? Don't recommend that at all. Completely change your name. That is my advice.

 

[wizzkidder]

Thanks for your prompt replies. This helps a lot. Please elaborate if you can on how these other bands, who put their geographic location into their name, got away with using the same name (The Charlatans (here in the US) and The Charlatans UK for example). Was it because they were in two separate countries? These are/were professional bands who have put out records and other merchandise. Does this not work for our band because we are in the U.S. just like the other Three Hour Tour?

In regards to the reply by The Occultist, I would have to say yes that their merch is available in our state (California) however I have not seen any. Being that this is an electronic world we live in, their merchandise is available for purchase on the Internet (their website, iTunes, and other online stores).

 

[quincy]

Unless the Charlatans in the UK registered their trademark or conducted business in the U.S. under their name, there is nothing to prevent another group from using the name Charlatans in the U.S. or elsewhere. Because there are two groups with the same name, however, the UK Charlatans could potentially be prevented from selling their merchandise under the Charlatan name in the U.S., just as the U.S. Charlatans could potentially be prevented from selling their merchandise under their name in the U.K.

And, if the Charlatans in the UK become so popular with the worldwide consuming public as to distinguish their group among all others (as The Beatles or Black-Eyed Peas have), then it is possible for them to entirely prevent the use by others of the name.

An example: If Detroit's soda pop brand "Faygo" wishes to expand the sales of their soda pop into Australia, but Australia already has a soda pop company operating under the name "Faygo," Faygo could be allowed to sell its soda pop in Australia, but they would have to use another name besides Faygo to sell it, or risk a trademark infringement suit from the Australian company. If, however, Faygo registered their brand in Australia and marketed it prior to any Australian company's use of the mark, then Faygo could prevent any Australian company from infringing on their mark.

And it is now possible for a U.S. company to register their trademark in other countries through their registration application with the USPTO.

A trademark arises from its use in commerce and trademark law essentially revolves around consumer confusion. If a mark (or a band name, in your case) has become known by the general consuming public as a distinguisher for a certain product or service (type of music), then another's use of the same or a similar mark (band name) can potentially be prevented through an infringement suit. But a lot of factors go into deciding whether an infringement action can be successful.

Whether one is likely to be filed against you in your case, or whether an infringement action taken against you could be successful, is unknown and it would take a review of all of the facts, preferably by an IP attorney in your area, to determine this.

Certainly the easiest and cheapest thing to do would be to change your name to something that is uniquely your own, as already suggested by cyjeff and The Occulist. If, however, your band has built up a reputation in your area and you feel a change of name would be detrimental to your band, you may be able to retain rights to the name, at the very least in your own geographic area. But I suggest you consult with an attorney in California and go over the legal risks you may face in keeping the name of your band the same as the band in Illinois.


Where the heck is divgradcurl, by the way??

 

[The Occultist]

it would take a review of all of the facts, preferably by an IP attorney in your area, to determine this.

Or a judge, but that's the expensive route!

Where the heck is divgradcurl, by the way??

He disappears every so often (I'm sure he does have a life outside this forum!), but he is usually more than happy to return to respond to incorrect post made by one of us! He will usually not post in a thread where a correct answer has been posted unless it's to add more detail to the topic. However, we should definitely NOT take his lack of presence to mean that we are correct! I've seen him dig up month-old threads to correct our sorry butts on the matter!

 

[FlyingRon]

How about "The Full Gilligan"?
That's what my wife (who runs the tours for a museum) calls a Three Hour Tour (A Three Hour Tour).

 

[The Occultist]

How about "The Full Gilligan"?
That's what my wife (who runs the tours for a museum) calls a Three Hour Tour (A Three Hour Tour).

bwa ha ha ha ha ha ha!!!!!!!