Can Auto Company Use Same Name as Band?

Dear Rich: A musician friend of mine has had a  musical project for 20+ years. He uses a name that he made up (not a real word) and he has included the name on several albums (on several different labels). He has achieved some international acclaim. Well, along comes a Korean automobile company, announcing that they have a new camper/car with the same name. I would hope he has some claim to the name, as he has widely published it for decades now. Did he have to file an official application for a trademark for that name? I know of a band that was paid several thousand dollars to give up its name to another band. Can my friend go to the auto company and get them to basically pay him for the use of the name? Alternatively, and perhaps more reasonably, should he simply be staking a claim to the name to prevent the auto manufacturer from coming after him and claiming some kind of bogus trademark infringement?

Your friend isn't the first musician to share a name with an automobile. Consider REO Speedwagon, The Valiants, The Road Runners, The Avantis, The Mustangs, The Rivieras, The Ferraris, The Lincolns, and our musical favorites, Galaxie 500. The difference is that in your friend's case, he was using the name before the car existed. 

Is there a claim against the car company? Even though your friend may have invented the name and used it first, we don't believe he has a trademark claim against the car company. That's because trademark disputes are resolved using a likelihood of confusion standard. Are purchasers of the Korean car likely to be confused as to whether it originated with your friend's musical project? Are consumers of your friend's records likely to be confused into thinking that the source for the music is the Korean car company? Because the categories of goods are so different (and don't compete with each other), and because purchasers of cars and music are discerning enough to distinguish between the two, we think that consumer confusion is unlikely. 

Money from the car company? Because confusion is unlikely, the car company need not pay your friend for the right to use the name. The example you mentioned -- one band paying off another band for the right to use the name -- differs from your friend's situation because consumer confusion is much more likely when two bands have the same name. That doesn't mean car companies can name their vehicles, The Beyonce, or the Beatles. Using a famous band's name implies endorsement and violates unfair business and right of publicity laws.

Should the name be registered? Federal trademark registration offers benefits but is not mandatory. If your friend's right to the name is challenged, the most important factor will be evidence of where and when he used it in commerce -- for example, advertisements, reviews, discography, etc.

Record Label Trademark: What's the Proper Class?

Dear Rich: I am trying to trademark my record label name, but am stuck on which class of goods best describes what I want to sell as a label. I plan on selling vinyl records and digital downloads. Which goods class would be most appropriate?
International Class 009 (IC 009 - Electrical and Scientific Apparatus) is your best choice if you are applying to federally register your record label trademark. Your goods and services (G&S) would be, "musical sound recordings." A trademark examiner -- the government lawyer who examines your application -- may require a more descriptive listing of goods and may even suggest certain goods, for example, "pre-recorded phonograph records, and downloadable music sound recordings."

Teach a man to fish dept. There a few ways to determine the proper class. One method is to search the ID Manual at the USPTO website. Type in your goods or services -- for example "recordings"-- and the search will uncover the relevant classes. Alternatively, when you apply online for a federal trademark using the TEAS system, you will be offered the chance to search for your class (and copy and paste the information into your application). Finally, you can either find (or confirm) the right class by searching the trademark database for other companies that sell similar products.  For example, we chose Basic Word Mark Searchand searched first for "Polygram" and then, "CBS Records." The registrations appeared and confirm Class IC 009. Note, record labels that also offer recording studio services may want to add a second class (IC 041 - Education and Entertainment Services).

Band Wants to Use President's Name

Dear Rich: I read your Music Law book, but it didn't have the answer to my question. I'm the leader of a covers band. As a side project, some members created a group called Trumpelstiltskin and the TrumPets. The bass player's wife is a paralegal, and she said we could get in legal trouble for using the president's name. I can't believe that's true. 
If your band is making a statement with its music -- that is, providing an opinion, commentary, parody, or another form of protected speech -- you are most likely free to use the name based on the free speech protections provided in the First Amendment. Equally important, despite their rights under trademark and right of publicity laws, most presidents don't chase after typical uses  (or abuses) of their name or persona.
That being said ... Your paralegal friend may be referring to the fact that you won't be allowed to register your band name at the USPTO. For example, in 2017 an individual sought to register DONALD AND THE TRUMPETTES for purposes of a website and a blog. The Trademark Examiner rejected the application unless Trump's consent was provided. (The application was abandoned.) However, registration is not mandatory, and an inability to register does not preclude your use in commerce.
Two final thoughts: (1) If your band does generate sufficient publicity (for example, make it on to Fox News) you may hear from one of Trump's lawyers (presumably, one that's not in jail). After all, Trump is the first president with a trademark portfolio. (2) As to "TrumPets," beware that the sound-alike term, Trump Pets,  may eventually become another of the president's marks.

Does A Federal Trademark Applicant Need Physical Presence in U.S.?

Dear Rich: Can a non-U.S. citizen obtain a federal trademark application?
Yes, a non-U.S. citizen or company can register a trademark in the U.S. However, if the foreign-applicant doesn't reside or have a physical presence in the U.S., the applicant will have to  appoint a domestic U.S. representative -- that is, someone residing in the U.S. (typically a trademark attorney) who is appointed to receive notices and correspondence regarding the trademark and application. Keep in mind we're only talking about applications for U.S. registration -- that is the foreign citizen or company must be using the mark on goods or services within U.S. borders (or have a good faith intent to use it). A non-U.S. citizen or company that has registrations already issued in the applicant’s home country (that cover the same mark and essentially the same goods and/or services) can also seek federal registration under Section 44(e) of the Lanham Act.