Porn 101: Should I Trademark My Name ?

This is the second in a continuing series of articles about talent protecting their most important intellectual property, their stage name. In “Choosing Your Pornstar Name” ( http://adultbizlaw.com/?p=547 ) I discussed how to choose the best stage name possible. In this article I will discuss the importance of securing a trademark for a performer’s stage name.

There are three types of trademarks in the United States, common law trademark, a state trademark and a federally registered trademark. It is rather easy to get a common law trademark – it just requires the use of  that stage name in commerce – meaning once a performer opens a for-profit website with it and/or just starts using it as their stage name when they are booked into scenes and paid for those scenes. Commerce means the performer has to be using the name to make money. Unfortunately, a common law trademark is rather weak when it comes to protecting a “brand.” Common law trademarks are usually restricted to geographical locations and the industry the name is used in. For instance if you choose “Suzie Suckems” and use that name as your stage name you do have a common law trademark in “Susie Suckems.” Your common law trademark for your name will probably be restricted to the geographically area known as Los Angeles county (if you perform and live there). Also, you would probably only be able to enforce that common law trademark against another performer using the stage name “Susie Suckems” only in Los Angeles county and only as a stage name. Anywhere else the other “Susie Suckems” could use that name as a stage name and you would be unable to prevent her use of it. For instance, if the other “Susie Suckems” traveled to Florida to shoot she could certainly use it there.

A performer can also file for a state trademark, however I have never heard of anyone securing a state trademark. I do not believe that a state trademark provides any advantage over a federal trademark. I would never recommend that a performer-client register a state trademark before attempting to secure a federal trademark. Federally registered trademarks provide much more protection then a state trademark. Therefore, I always recommend that performers secure a federal trademark first. However if you would like to research California state trademarks you can find more information here -> http://www.sos.ca.gov/business/ts/

If you would like to research other state trademark laws you can go here -> http://www.uspto.gov/trademarks/process/State_Trademark_Links.jsp

If a performer does decide to trademark their stage name this is a relatively easy process for an experienced trademark attorney, though it does take a rather lengthy amount of time. Most performers think that once the trademark fees are paid and the paperwork is filed that is all that is necessary and they immediately have their trademark. That is not the case. It can take up to a year or longer to secure a trademark. It is a detailed process and often performer’s stage names are challenged or rejected depending on what the name is or how the trademark description is written. While it may seem easy, it can get complicated if the USPTO’s (United State Patent and Trademark Office) attorneys require additional information or issue office actions against the registration.

A performer can certainly file their own trademark. For more information on how to do so you can look here -> http://www.uspto.gov/trademarks/process/index.jsp

What many performers do not understand is that usually multiple trademarks need to be filed depending on what uses the performer wants to protect. For example, one trademark in Class 41 will not protect that stage name for the use on t-shirts. The manner in which a trademark operates to protect a brand is that a company or performer has to register that trademark for each use that want to protect it for. Quite simply, to protect their stage name on the Internet would be one registration. To protect that same stage name for a line of t-shirts that would be an additional filing. If the performer wanted to protect a wide range of uses many filings would be necessary. For example, the owner of the mark “Fifty Shades of Grey” has filed the following trademarks;

Word Mark FIFTY SHADES OF GREY
Goods and Services IC 003. US 001 004 006 050 051 052. G & S: Soaps; perfumery; essential oils; cosmetics; preparations for the hair, skin, body, face, hands and feet; depilatory preparations; exfoliating preparations; shaving preparations; waxing preparations for the removal of hairIC 004. US 001 006 015. G & S: Candles and wicks for lighting; scented candlesIC 006. US 002 012 013 014 023 025 050. G & S: Goods of common metal; handcuffs; shackles; karabiners; metal grids; metal chainsIC 009. US 021 023 026 036 038. G & S: Recording discs; compact discs; DVDs and other digital recording media; tapes; recording discs; sound recordings; video recordings; recorded films; electronic publications; sunglasses; mobile phones; mobile phone accessories; mobile phone applications and softwareIC 010. US 026 039 044. G & S: Sex aids including ropes; marital aids; benwa balls, being adult sexual aids; adult sexual stimulation aids; vibrators; condoms; massage apparatusIC 014. US 002 027 028 050. G & S: Jewellery; costume jewellery; clocks and watchesIC 016. US 002 005 022 023 029 037 038 050. G & S: Paper, cardboard and goods made from these materials; printed matter; photographs; stationery; calendars; postcards; greetings cards; books; magazinesIC 018. US 001 002 003 022 041. G & S: Leather and imitation leather and goods made from these materials; animal hides; trunks and travelling bags; handbags, rucksacks, purses, wallets, holdalls; umbrellas; whipsIC 020. US 002 013 022 025 032 050. G & S: Furniture; mirrors; picture frames; articles made of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber; mother-of-pearl, meerschaum or plastic; garden furniture; pillows and cushions; mugsIC 024. US 042 050. G & S: Textiles and textile goods; bed and table covers; rugs; duvets; covers for pillows, cushions or duvetsIC 025. US 022 039. G & S: Clothing; footwear; headgear; lingerie, men’s underwear, hosiery, bathing costumes; dressing gowns; nightwear; costumes for use in role-playIC 028. US 022 023 038 050. G & S: Games and playthings; soft toys; playing cards; boardgames; gymnastic and sporting articlesIC 033. US 047 049. G & S: Wines; spirits and liqueurs; alcopops; alcoholic cocktailsIC 034. US 002 008 009 017. G & S: Smokers’ articles; matches; lighters for smokersIC 041. US 100 101 107. G & S: Education services; entertainment services; party planning; arranging of parties; hosting social entertainment events; production of films; sporting and cultural activities; arranging of conferences, seminars and symposiumsIC 045. US 100 101. G & S: Marriage guidance counselling; personal relationship consulting

 

You can see that the owner of the mark wanted to protect their trademark for all possible uses, not just for a book or movie. More than $5,000.00 was paid just in registration fees for all of those uses in addition to the actual attorney’s fees paid for each filing. I often caution performers from trying to file too many registrations at once. It is often better to secure the main use first and then move towards additional uses as business opportunities allow. Otherwise it may be a rather expensive experiment to determine whether you can even secure the trademark for the first use.

For example, if your performer name is “Trixie Minaj” you may have difficulty in securing even the first trademark. Especially, if you have given interviews early in your career that you picked that name because people told you that you look like “Nicki Minaj.” The way the trademark process works is that once your trademark is filed it is reviewed within a couple of months by the staff attorneys at the USPTO. If all of the forms are properly filled out and the necessary samples of the use of the stage name are properly submitted your trademark will eventually be published for opposition. Which then means anyone can object to your trademark, if for some reason, your trademark is too close or infringes on their intellectually property. In this example, you can be assured that Nicki Minaj has attorneys that do nothing more than watch to see if anyone has tried to secure a trademark using her name. Once they do find it you can assume they will object to your trademark. If you have filed your trademark request in 10 different categories for 10 different uses you will probably lose all of those filing fees as well as the attorney’s fees paid on those trademarks. Thus, I always recommend that a performer try to get just one trademark first and then expand.

You might be asking why do I need a trademark anyway. In the realm of porn and pornstars the most common benefit of having a trademark is preventing others from securing domain names using a performer’s stage name. For example, if a you had a trademark on your stage name “Susie Suckems” you could force anyone using the name “Susie Suckems” in their website domain name to turn that domain over to you. If you had to purchase the domain name “www.SusieSuckemsXXX.com” because someone else was already using the domain name “www.SusieSuckems.com” for their website and they were posting photographs and videos of you on it you could then legally challenge their ownership of that domain name. Now if the other “Susie Suckems” was a country singer and her website had her music on it then you would probably not be successful since there would be no reason for a potential fan to confuse the country singer Susie Suckems and the pornstar Susie Suckems. The legal theory behind trademarks is to prevent potential fans/customers from confusing two marks in different industries. For example there are several companies legally using the trademark “Delta” in their names – Delta Airlines, Delta Faucets and Delta Dental. Obviously, the reason for this is that they all use the name Delta in different industries and there is little chance that people would think that Delta Airlines are now manufacturing faucets or filling cavities.

If there is a chance of consumer confusion between a performer and the person or company using their domain name there are two challenges that could be filed. The first is a UDRP action which is where a performer can file a request with the company that runs the assignment of domain names (ICANN) to have that domain name transferred back to that performer from the person that is using it without their permission. That person would have the opportunity to tell ICANN why they believe have rights to use the performer’s trademark in their domain name. If ICANN decides in the performer’s favor they have the power to simply seize the domain name and return it to that performer.

If the person or company is using a performer’s domain name for a membership website and is making money from off a performer’s trademark he/she can file a trademark infringement lawsuit against that person or company. A trademark lawsuit is much more expensive to defend for the person or company using the trademark. That alone may force them to turn over the trademark to the performer and if warranted, pay money as part of the settlement. Many infringers do not want the expense of litigation to try to keep a potentially domain name. However, be aware that with a UDRP action the performer only gets the domain name back. They do not get any monetary damages. Trademark lawsuits are complicated and can get rather expensive very quickly. I usually recommend that for domain name issues that most performers seek to have the domain name returned to them using the UDRP action option. It is much less expensive and much quicker.

Trademarks and protecting a performer’s stage name is vital to his/her long term success in the industry. It is what uniquely identifies a performer and is often “highjacked” by others looking to cash in on your success. It is strongly recommended that all performers seek out legal counsel and additional advice as to trademarks and their stage names. Failure to do so will ultimately cost that performer money and may result in others profiting where they shouldn’t. This discussion is much more complex that what I have touched upon in this article. A complete discussion of trademark law would require volumes.

 

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