Many times, an artist or entertainer will wish to register their name as a trademark. This is more difficult than obtaining a traditional trademark registration for a brand name, but can be done if certain requirements are met. However, even if you cannot get a trademark in your name for one reason or another, remember that you still have your right of publicity to rely on to prevent someone else’s use of your name or likeness without your permission.
ConsentConsent is presumed where the individual whose name or likeness appears in the mark personally signs the application.
That’s the easy part.
If you cannot show a series, or can show there is a series but cannot show that the use of your name identifies the source of the series, the mark may be registered on the Supplemental Register but may not be registered on the Principal Register by showing secondary meaning. Except in certain circumstances, this is generally acceptable, because most (but not all) of the protections afforded to marks on the Principal Register are available to marks on the Supplemental Register.
In an application seeking registration of an author’s or performer’s name, you must provide evidence that the mark appears on at least two different works. Such evidence could include copies of multiple book covers or multiple CD covers that show the name sought to be registered. A showing of the same work available in different media, i.e., the same work in both printed and recorded or downloadable format, does not establish a series.Remember that the use of your name on a series of works does not, in itself, establish that your name functions as a mark. The record must also show that your name serves as more than a designation of you as the writer or performer, i.e., that it also serves to identify you as the source of the series.Actual names and pseudonyms of individuals or groups function as marks only if they identify and distinguish the services recited and not merely the individual or group. Your name is only registrable as a mark if you can show that it is used in a manner that would be perceived by purchasers as identifying the services in addition to you as a person. For instance, using the mark on handbills would function as a mark to identify live performances by a comedian, where the mark was used to identify not just the character but also the act or entertainment service performed by the character. Also, where you can show use of your name in conjunction with a reference to services and information as to the location and times of performances, costs of tickets, and places where tickets could be purchased, the name would function as a mark.A showing that your name functions as a source identifier may be made by submitting evidence of either:To show that your name has been promoted and is recognized as indicating the source of a series of written works, you could submit copies of advertising that promotes your name as the source of a series, copies of third-party reviews showing others’ use of your name to refer to a series of works, or evidence showing your name used on a web site associated with the series of works.
Alternatively, you may show that your name functions as a source indicator by submitting documentary evidence that you control the quality of your distributed works and control the use of your name. Such evidence would include license agreements and other documentary or contractual evidence.If you maintain control over the quality of the goods because the goods are published or recorded directly under your control, you may submit a verified statement that “the applicant publishes or produces the goods and controls their quality.”Use of Name on Original Works of ArtDISCLAIMER: The views expressed here are those of the author alone. This article is not meant to replace competent legal advice regarding your particular situation.
Gary Laurie, Esq. is a solo attorney in Clifton NJ. His practice focuses on entertainment and arts law, intellectual property licensing, and general business/contract law in the entertainment industries. He is the immediate past Chair of the Entertainment Arts and Sports Law Section of the New Jersey State Bar Association, and teaches legal courses at Montclair State University and New Jersey City University. He provides volunteer services for the New Jersey chapter of the Volunteer Lawyers for the Arts. You can visit his website at www.garylaurieesq.com or contact him directly at gary@garylaurieesq.com
