My band recently picked the name “Matches Malone” to go by. The name “Matches Malone” is a very minor DC comics character. After several online searches I can not find any sign that this name is trademarked. My band has started the processor making t-shirts and other products with this name printed on them. So I need to know if this is ok. Thanks, Dallas

I know how difficult it is to get a group of musicians to agree on a name. However, most bands should do two things. First, have an trademark attorney do a “trademark clearance” (which will include a professional search). Second, file for a trademark at the US Trademark Office.

This is going to add to the start-up cost for the band. It is going to take more than a couple of Gigs to pay for this. However, the name of the band is the most important asset (after your website). It is the way people will spread the word about your band. You will not know who is saying the name of your band, and, you will not be able to contact them should you need to change the name. For these reasons, bands really need to do a little extra, professional trademark work.

There is one other reason that most bands need to protect their name. Most bands become an “overnight success” in just three or four years. In other words, many bands now develop through online marketing in addition to live performances, over a period of time. The exception to this is when there is a real advertising budget, for example, when a band is recording for a label. When a label in involved, they clear the name of the band before the first t-shirt is ever printed.

So, a name-change for a band that is brought on by a trademark problem can be really devastating. It literally can destroy years of marketing work, and, it will most likely happen as you are finally getting the word out about your band. Literally, you will disappear from your local public’s eye as you are forced to change your name. In other words, as you get more successful, and your name gets around more, the more likely a senior trademark holder will complain about your use of your name (if it is improper or infringing.)

If your budget is really, really tight. You might consider self-filing a US Trademark application at the US Trademark Office. The filling fee can be as low as $275 for a single class. If you plan to do more than just live performances, I recommend two classes at double the cost. Then, you can protect both your live performances and sales of pre-recorded music, like CDs, DVDs, downloadable music, etc. A trademark registration that hangs around for five years or longer can become incontestable, if you submit the right affidavits at the right times. If you self file, take your time. Be sure to read the article about avoiding trademark mistakes.

Trademarks do not have to be registered. Trademarks spring from their use under the common law. Most comic book characters are protected as trademarks. It may not matter that you did not find a registration, DC Comics might complain later, much later. Trademarks protect people from becoming confused about who is providing them with stuff. If the public assumes there is some connection between your band and DC Comics, you will have trouble eventually. Even if the public does not make that assumption, DC Comics may still complain (rightfully).

If you are serious about this name, get some help from a trademark attorney. There could be other factors that might indicate that this name would be available.

A large chain department store has used my logo on a t-shirt design that they are now selling at all there store locations and on the internet. My logo was created 3 years ago. It was printed on shirts and has been published on lots of entertainment projects.

You should also document how you found out about this problem. Most of the time, small business owners will learn about situations like yours because one of their customers calls and says “hey, I saw your t-shirt at so-and-so department store — I’m so glad your expanding.” If this is what happened to you, you should document the call in as much detail as you can. If you have a system for recording customer calls, I would keep the recordings (if you don’t, be certain to check with your attorney regarding how to properly record telephone conversations). Whenever a customer of yours buys a competitors products, and believe that the product is yours, that is called “actual confusion” (yes, this is a legal term of art for trademark attorneys). Actual Confusion can be very persuasive evidence in a trademark proceeding.

Beyond this first step, your situation is likely to be complex. If this logo has value to you, you should plan to spend a little time with an attorney. There are several possibilities. Trademarks operate at three levels:

1. the Federal level — throught the Trademark Office registation system;
2. the State level — through each state’s own registration system and state laws; and
3. by action of law — through rulings of the court.

You may have common law trademark rights and state law trademark rights. (I assume you would have mentioned if you had registered your trademark). These rights may be used to bring a lawsuit against the department store chain. The purpose of this lawsuit may be to get the department store chain to stop and potentially, for money damages, if you can prove a financial loss.

Assuming that you have not registered your logo as a trademark, you will also want to have a sample of each of your products and any sales records for them. In particular, you will want to be able to show your attorney when and where you have been selling your product. Copies of all the advertising that you have done  (including historic copies any of your websites, along with server log files of visitors) can be very helpful in evaluating your situation.

There may be other legal ways to acheive your goals, for example, depending on how you have used your logo (and what your logo might be), copyright laws may apply. There are also laws regarding unfair competition and counterfeiting that may apply to your situation.

What to do next depends on what your business goal is, how you are using your logo, and what kind of outcome you would like to pursue.