Trademarking a Band or Musician Name: Goods/Services IDs

Musician and recording artist names are arguably one of the most complicated topics in trademark law. Just ask the Bernie Sanders campaign.

One of the first trademark applications I ever filed was for a teenager who produced hip hop beats and rapped over them, before I knew what goods/services a musician’s trademark should be registered for. In case you’re new to this field, trademarks must be registered for specific goods and services identifications (“IDs”) that are categorized into 45 classes. I filed for “music composition services” in Class 41, the education and entertainment class.

I then spent the next eight months trying to fix that massive error, ultimately filing a new application after being refused by the USPTO several times. Music composition services means writing songs to be performed by other artists. This is a very difficult service to submit a specimen for. I thought I was finally saved when I found a listing on a beats-making website by my client where he was offering a beat for sale. Even this got rejected because my client wasn’t composing custom music for other artists, he was composing music and then selling it to other artists. 

I finally ended up having to file a new application at my own expense for the correct goods/services IDs, ones that are easier to submit specimens for. Similar issues can arise if you file for music production, music recording, music publishing, music video production, etc. These are all meant to be services performed for recording artists, not by the recording artist, so they should only be filed for if the artist offers these services in that way, and only in combination with goods/services IDs that are easier to provide specimens for (more on those soon).

Other music-related goods/services IDs that can trick you include records, digital media, sound recordings, downloadable audio files featuring music, and the like in Class 9. These IDs are generally meant for record labels or audio companies, not artists, and the USPTO may demand that you show evidence of a series of records under the same trademark as well as additional evidence that consumers will consider the trademark to be the source identifier for the goods. It’s a nightmare to deal with. 

See the below excerpt of a refusal I received when I filed for a rock band’s name using the goods ID of “Digital media, namely, CDs and downloadable audio files featuring music” in Class 9 (my client specifically requested this ID):

FAILURE TO FUNCTION REFUSAL – NAME OF PERFORMING ARTIST

Registration is refused because the applied-for mark, as used on the specimen of record, merely identifies the name of a featured performer(s) on a sound recording; it does not function as a trademark to indicate the source of applicant’s goods and to identify and distinguish them from others.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051-1052, 1127; see In re Polar Music Int’l AB, 714 F.2d 1567, 1572, 221 USPQ 315, 318 (Fed. Cir. 1983); In re Arnold, 105 USPQ2d 1953, 1957 (TTAB 2013).  Sound recordings include musical and other performances presented in recorded or electronic form.  See TMEP §1202.09(a).

The office action also included several paragraphs describing what kind of evidence I could use to overturn the refusal. However, buried at the bottom was a line saying I could get approval simply by including the following statement verified by a signed declaration: “The applicant produces the goods and controls their quality.”

This statement was so simple and easy to submit that it made pointless the paragraphs of detailed descriptions of possible evidence that came before it.

All refusals of this sort for musician names seem to include this same loophole. I’ve seen lawyers get these office actions and completely miss their easy way out, asking their clients for mountains of new evidence to submit. There’s just something about the way the USPTO writes hundreds of words about what evidence you need to submit that makes the reader assume there’s no way a simple statement could serve in place of that evidence you just got done reading about.

Why doesn’t the USPTO just forget all the evidence and tell the applicant to submit the signed statement? I don’t know, but make sure to look for this loophole if you get a refusal like this.

With that said, even with this easy way to overturn certain refusals for music goods in class 9, you’ll get much broader protection if you file in class 41, which not only covers the music you release, but your performances of said music.

Recommended Goods/Services IDs for Bands and Musicians

Here is a list of goods/services IDs I recommend filing for if you want to register a musician name or band name as a trademark. As useful as this list may be to you, I still recommend hiring an attorney to handle your trademark application for this particularly complicated variety of trademark.

In the below list, anything in brackets represents an open-ended part of the ID that I recommend you fill with the word “music.” The first two, live musical performances and online audio recordings featuring music, are the most important ones. Those are the essential services associated with musical acts. All of the below IDs are in Class 41 (Education and Entertainment):

1. Entertainment services in the nature of live musical performances and/or Entertainment, namely, live performances by a musical band
2. Providing online non-downloadable visual and audio recordings featuring {music}
3. Providing on-line videos featuring {music}, not downloadable
4. Providing online music, not downloadable
5. Providing a website featuring non-downloadable audio recordings in the field of {music}
6. Entertainment information services, namely, providing information and news releases about a musical artist
7. On-line journals, namely, blogs featuring {music}
8. (If the artist also produces beats) Music production services
9. (If the artist also writes music) Music composition services

The above goods/services IDs are very easy to provide specimens for showing use in commerce. An event flyer photograph/scan or online ticket-buying page screenshot works for live musical performances, a screenshot of a YouTube music video should work for on-line videos, screenshots of Spotify, SoundCloud, iTunes, or Bandcamp listings (ideally at least two albums or releases to avoid the refusal noted above) should work for online non-downloadable audio recordings, a screenshot of the artist’s promotional homepage should work for information, news releases, and blogs. 

Keep in mind that even if you file for all of the above-listed IDs, you only need a specimen for one of them because they’re all in the same class. Just send in a flyer for a concert or take a screenshot of one of your online music listings and you’re done!

If you’re worried about somebody else registering a very similar name for records or downloadable music in Class 9 because you only registered in Class 41, relax. Because records and downloadable music are highly related to non-downloadable music, which you listed on your application, your trademark registration in Class 41 should block this later-filed application in Class 9.

By the way, after all the additional fees at our expense, and hours of arguing with the USPTO, the second application for my young rapper/producer client reached registration. A few months later, his father reached out to let me know that his son had ditched the old stage name and would need to file an application for a new name. Great! More motivation for me not to screw up next time.