Legal Question in Intellectual Property in California

Battle of the bands - 2 bands, same name, different states. one w/TM one w/o

I'm in Band 1.

Band 1 - using bandname since 1996. Semi prof, several public performances. Band members 60% full time musicians in band 1 and many other bands. Registers bandname.com domain name 04/03.

Band 2 - Trademarks name being used by band 1, performing in identical music/genre. TM filing date 05/02, Pub for Opposition 12/2002, Registration 03/2003. TM app states ''First Use: 1976, First Use/Commerce 02/01''

Internet searches returns both bands - substantiating timeframe documentation (set lists, statements, etc) for Band 1, available but of unknown value.

Notes - bandname.COM is registered, bandname.NET/ORG/etc are not.

Legal contact from Band 2 claims ''unfair competition, false designation of origin/Lanham Act, trademark infringement and dilution.'' Requests transfer of domain name at no cost, cease use of bandname, destroy all products w/bandname. Also requires draft copies of new product pkging, website, etc as evidence of compliance.

What is band 1's legal & financial exposure & what options are available to protect from legal efforts, protect the domain name and allow future performance as bandname?

Both bands are small potatoes in the scheme of things. Band 1 had no knowledge of Band 2 prior to 10/04


Asked on 10/13/04, 7:13 am

1 Answer from Attorneys
Timothy J. Walton Internet Attorney

Re: Battle of the bands - 2 bands, same name, different states. one w/TM one w/o

If I were in band 1, I would be arguing to change the name of the band. No matter how you slice it, Band 2 had the name first, even went to the trouble of registering a trademark. I have my doubts that you could keep the domain name even if you had unlimited money to spend on lawyers (unless they just have none), but I also question whether any band name is so cool that it is worth spending thousands of dollars to fight over.

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Answered on 10/13/04, 3:13 pm


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