In the DJ world, your brand is everything. One of the best ways to protect your brand is through a trademark.
What Is a Trademark?
A trademark is a word, symbol, or phrase that identifies a company’s products and distinguishes them from those of another company. The term “trademark” can also refer to a service mark, which serves a similar function and identifies a company’s services. The following are examples of some popular trademarks.
What Does a A Trademark Do?
The purpose of a trademark is to protect a company’s brand. It does so in two ways:
1) Prevent Customer Confusion—it helps a customer identify a particular company’s product or service, so that they avoid purchasing another product/service (which may be of inferior quality).
2) Protect the trademark owner’s reputation—it provides a legal recourse against a competitor who sells a product/service under a similar name.
Sue is a mobile DJ and operates in her market under the name “DJ Sue Every1,” which she has trademarked. Karen is another DJ in the same market and she decides to start a mobile DJ company called “DJ Sue 1.” Sue can file a claim for trademark infringement, because Karen’s company name can confuse potential customers.
What Law Governs a Trademark?
While trademarks are governed by both state and federal law, the federal Lanham Act provides the most extensive trademark protections.
Trademark Strength/Level of Protection
The level of protection that a trademark provides depends on its distinctiveness. In other words, its strength is relative to how unique it is. Trademarks are broken down into four categories, each of which offers a different level of protection.
An arbitrary mark has a meaning that is unrelated to the products or services on which it’s used. For example, “Tractor” commonly means a type of motor vehicle, which is unrelated to a DJ software.
A fanciful mark is a made-up word, such as “Serato,” which is associated solely with the underlying product.
Arbitrary and fanciful marks are inherently distinctive and are afforded the most protection. inherently distinctive and offer the highest level of protection
A suggestive mark implies the nature of the goods or services. For example, “Beats” is suggestive of a musical beat. These marks require consumers to make a mental leap to associate the word with the product. While they are inherently distinctive, suggestive marks provide less protection than arbitrary/fanciful marks.
A descriptive mark describes, rather than suggesting, a characteristic or quality of the goods or services. For example, “Rekordbox” describes a DJ software which is used to organize music like a box of records.
Because these marks are not inherently distinctive, they are only protected if they have a “secondary meaning.” A descriptive mark acquires secondary meaning when the public associates the mark with a specific company, rather than the underlying product or service. In other words, “Rekorbox” has acquired secondary meaning, because DJs associate the term with a particular DJ software, rather than all record boxes in general.
A generic mark describes the general category to which the underlying product or service belongs and is not distinctive. Accordingly, these marks are not afforded any protection. For example “DJ” is a generic term and cannot be trademarked. It is worth noting that trademarks can become generic through the widespread public use of the trademark to refer to a general category of products or services. Some famous examples of this include “app store,” “escalator,” and “video tape.”
First to Use v. First to Register
Under federal law, the rights to a trademark can be obtained either by being the first to use the mark in commerce or by being the first to register the mark with the U.S. Patent and Trademark Office (USPTO). To borrow from our example above, if Sue was the first to provide DJ services under the name “DJ Sue Every1,” then she would have priority over the trademark in connection with DJ services in her market or where she has established a reputation. On the other hand, by registering the trademark, the protection would extend outside of Sue’s market. In addition, registration provides a legal presumption of ownership as well as public notice of ownership.
It’s worth nothing that it’s not necessary to have already used a trademark in commerce in order to register it—its also possible to register a trademark by establishing a bone fide intention to use it in commerce.
How to Check if Something is Trademarked?
How to Register a Trademark
You could register a trademark yourself or hire a professional service to do it for you.
The first step would be to check whether a mark is already registered or whether there is a pending application.
To register a mark, you would need to file an application with the USPTO. The application will specify the basis: already in use or intent-to-use (or if you own a foreign registration of the same mark). Generally, the application will contain three elements:
1. A drawing of the mark
2. Identification of the goods or services associated with the mark
3. A specimen showing the mark as actually used in U.S. commerce with goods or services
After filing, the application will be reviewed by an examiner, who will determine if it complies with trademark laws and whether it conflicts with prior registrations or applications. Once the examiner approves the application, it will be published in the “Official Gazette,” which will start a 30 day period within which a third party may file an opposition to the application. After this period closes, if no one successfully opposes the application, then the USPTO will register the mark and issue a certificate of registration. The registration will remain valid as long as the mark continues to be used in commerce and may be renewed every 10 years.
The owner of a trademark can enforce their rights by filing a lawsuit. That can be a lengthy and expensive process. One prominent example of this is Carol Baskin’s trademark infringement lawsuit against Joe Exotic.
In the context of the DJ and entertainment industries, a more practical approach is to file trademark infringement claims with all of the social media platforms on which the infringing material is present. For example, if Karen has an Instagram profile for “DJ Sue 1,” then Sue can submit a claim for Instagram to disable this profile.
The following are the links to the trademark infringement pages for some of the major social media platforms:
A DJ’s brand is everything, so it’s necessary to do all that you can to protect it. It’s prudent to check the USPTO’s website to determine if a mark is already registered or if there is a pending application. While anyone can register a trademark, there are also professional services on-line that can do it.
This article is provided for general informational purposes only and should not be construed as legal advice. This article shall not be construed as creating an attorney-client relationship, and an attorney or other professional specializing in the field should be consulted.