Trademark & Copyright stuff
Discussion
Hi,
Just wondering if anyone has any experience regarding this.
A friend of mine who writes music has been releasing under his name for many years. Lets call him Pistonheads for arguments sake.
Along comes "DJ Pistonheads" who demands he changes his name.
This DJ then produces some paperwork from the Intellectual Property Office showing he has the trademark to "DJ Pistonheads", and is covered under class 41, which is providing a service as a DJ.
Bare in mind, my mate does not DJ under this name, just produces music, and the name is not the same any way.
He claims he will take legal action, but very quickly also suggested "sending the boys round to sort it out".
So is he just full of hot air and trying to bully him into changing it, or would he have much weight behind him?
Thanks for any advice
Just wondering if anyone has any experience regarding this.
A friend of mine who writes music has been releasing under his name for many years. Lets call him Pistonheads for arguments sake.
Along comes "DJ Pistonheads" who demands he changes his name.
This DJ then produces some paperwork from the Intellectual Property Office showing he has the trademark to "DJ Pistonheads", and is covered under class 41, which is providing a service as a DJ.
Bare in mind, my mate does not DJ under this name, just produces music, and the name is not the same any way.
He claims he will take legal action, but very quickly also suggested "sending the boys round to sort it out".
So is he just full of hot air and trying to bully him into changing it, or would he have much weight behind him?
Thanks for any advice
If he can show he was using that name (unregistered trademark) prior to the other guy registering it, then he's in the clear.
Last section of http://www.inbrief.co.uk/intellectual-property/def...
Last section of http://www.inbrief.co.uk/intellectual-property/def...
https://www.gov.uk/guidance/objecting-to-other-peo...
Assuming he missed the online publication of the trademark application (!), then he needs to decide how much he wants to spend. I suspect published works dating back way before this new blokey, in the field of music might have had some sway then, but not sure how much now without getting lawyery.
Assuming he missed the online publication of the trademark application (!), then he needs to decide how much he wants to spend. I suspect published works dating back way before this new blokey, in the field of music might have had some sway then, but not sure how much now without getting lawyery.
IANAL but I deal with a lot of trademark stuff at work. First thing your mate needs to do is put the letters TM after his name on any of his work.
My understanding is:
If your friend DJ Pistonheads has been using his stage name for a long time, can demonstrate this with tangible historical record (i.e. release dates of his music) marketing (his name on posters for club nights for example), good will (in that he has played several times for say, the same venues under that name) and therefore reputation then whether or not this new chap owns the trademark is moot as others have suggested. As long as your friend's history can be demonstrated to pre-date this new pretender's registration date.
Reply to the pretender's cease and desist letter would include
I am DJ Pistonheads. I have been playing and releasing music under that name since (insert year). I have built both reputation, history and goodwill under this name all of which is documented with physical and digital record. My use of this name pre-dates your registration by ** years.
On this basis, I have no intention whatsoever of relinquishing my use of this name as I consider it my own trademark whether registered or otherwise. Registration of a trademark in law does not automatically offer you rights to a name over persons whose use of the mark may pre-date your own. If offers you protection for copyright of those that may follow. See the difference between the TM symbol and the ® symbol.
As such, please do not contact me again and you are also instructed to cease and desist your own use of my trademark. If you wish to make this a legal matter, be on notice that I will present my own evidence to the court as a counterclaim my own ownership of this trademark and request that your registration be struck off. Furthermore, on the subject of your threats to 'send the boys round,' I consider this specifically a threat of violence towards my person and to that end, I have reported it to **** Police and forwarded a copy of your communication so that it is recorded.
As I said, IANAL so your mate should check in with one of those if he wants to fight it.
My understanding is:
If your friend DJ Pistonheads has been using his stage name for a long time, can demonstrate this with tangible historical record (i.e. release dates of his music) marketing (his name on posters for club nights for example), good will (in that he has played several times for say, the same venues under that name) and therefore reputation then whether or not this new chap owns the trademark is moot as others have suggested. As long as your friend's history can be demonstrated to pre-date this new pretender's registration date.
Reply to the pretender's cease and desist letter would include
I am DJ Pistonheads. I have been playing and releasing music under that name since (insert year). I have built both reputation, history and goodwill under this name all of which is documented with physical and digital record. My use of this name pre-dates your registration by ** years.
On this basis, I have no intention whatsoever of relinquishing my use of this name as I consider it my own trademark whether registered or otherwise. Registration of a trademark in law does not automatically offer you rights to a name over persons whose use of the mark may pre-date your own. If offers you protection for copyright of those that may follow. See the difference between the TM symbol and the ® symbol.
As such, please do not contact me again and you are also instructed to cease and desist your own use of my trademark. If you wish to make this a legal matter, be on notice that I will present my own evidence to the court as a counterclaim my own ownership of this trademark and request that your registration be struck off. Furthermore, on the subject of your threats to 'send the boys round,' I consider this specifically a threat of violence towards my person and to that end, I have reported it to **** Police and forwarded a copy of your communication so that it is recorded.
As I said, IANAL so your mate should check in with one of those if he wants to fight it.
My understanding is that becuase your friend 'Pistonheads' and 'DJ Pistonheads' operate within the same industry, then a consumer could reasonably be confused between the two.
You'd need to get a trademark lawyer to give you specific advice, but my understanding is that 'DJ Pistonhead', being the one who registered his trademark, will be the one who gets to keep using the name.
As with everything though, it depends on how much money both sides want to commit to fighting to keep the name.
ETA: IANAL
You'd need to get a trademark lawyer to give you specific advice, but my understanding is that 'DJ Pistonhead', being the one who registered his trademark, will be the one who gets to keep using the name.
As with everything though, it depends on how much money both sides want to commit to fighting to keep the name.
ETA: IANAL
esxste said:
My understanding is that becuase your friend 'Pistonheads' and 'DJ Pistonheads' operate within the same industry, then a consumer could reasonably be confused between the two.
You'd need to get a trademark lawyer to give you specific advice, but my understanding is that 'DJ Pistonhead', being the one who registered his trademark, will be the one who gets to keep using the name.
As with everything though, it depends on how much money both sides want to commit to fighting to keep the name.
ETA: IANAL
Not at all.You'd need to get a trademark lawyer to give you specific advice, but my understanding is that 'DJ Pistonhead', being the one who registered his trademark, will be the one who gets to keep using the name.
As with everything though, it depends on how much money both sides want to commit to fighting to keep the name.
ETA: IANAL
Consider this.
Bernie Ecclestone failed to get the Registered Trademark ® F1 for Formula One so you will see that they have the letters TM next to F1 in all the branding.
Now in the unlikely event I was able to register the trademark F1 at a later date in the classes covering motorsport, do you think I would then be able to ask Liberty Media to cease using my trademark? Not at all.
Let me guess, the guy that's getting angry has about 16 soundcloud followers, 7000+ comments saying "follow back" and 3 tracks that a 4 year old could make.
This happened to myself; 2 years under a side alias, and somebody else came along with the same name minus an s as a suffix. Both of us were achieving millions of views on YouTube, neither of us felt annoyed enough to even message the other party...
This happened to myself; 2 years under a side alias, and somebody else came along with the same name minus an s as a suffix. Both of us were achieving millions of views on YouTube, neither of us felt annoyed enough to even message the other party...
E36GUY said:
IANAL but I deal with a lot of trademark stuff at work. First thing your mate needs to do is put the letters TM after his name on any of his work.
My understanding is:
If your friend DJ Pistonheads has been using his stage name for a long time, can demonstrate this with tangible historical record (i.e. release dates of his music) marketing (his name on posters for club nights for example), good will (in that he has played several times for say, the same venues under that name) and therefore reputation then whether or not this new chap owns the trademark is moot as others have suggested. As long as your friend's history can be demonstrated to pre-date this new pretender's registration date.
Reply to the pretender's cease and desist letter would include
I am DJ Pistonheads. I have been playing and releasing music under that name since (insert year). I have built both reputation, history and goodwill under this name all of which is documented with physical and digital record. My use of this name pre-dates your registration by ** years.
On this basis, I have no intention whatsoever of relinquishing my use of this name as I consider it my own trademark whether registered or otherwise. Registration of a trademark in law does not automatically offer you rights to a name over persons whose use of the mark may pre-date your own. If offers you protection for copyright of those that may follow. See the difference between the TM symbol and the ® symbol.
As such, please do not contact me again and you are also instructed to cease and desist your own use of my trademark. If you wish to make this a legal matter, be on notice that I will present my own evidence to the court as a counterclaim my own ownership of this trademark and request that your registration be struck off. Furthermore, on the subject of your threats to 'send the boys round,' I consider this specifically a threat of violence towards my person and to that end, I have reported it to **** Police and forwarded a copy of your communication so that it is recorded.
As I said, IANAL so your mate should check in with one of those if he wants to fight it.
Impressively written letter if you're not a lawyer My understanding is:
If your friend DJ Pistonheads has been using his stage name for a long time, can demonstrate this with tangible historical record (i.e. release dates of his music) marketing (his name on posters for club nights for example), good will (in that he has played several times for say, the same venues under that name) and therefore reputation then whether or not this new chap owns the trademark is moot as others have suggested. As long as your friend's history can be demonstrated to pre-date this new pretender's registration date.
Reply to the pretender's cease and desist letter would include
I am DJ Pistonheads. I have been playing and releasing music under that name since (insert year). I have built both reputation, history and goodwill under this name all of which is documented with physical and digital record. My use of this name pre-dates your registration by ** years.
On this basis, I have no intention whatsoever of relinquishing my use of this name as I consider it my own trademark whether registered or otherwise. Registration of a trademark in law does not automatically offer you rights to a name over persons whose use of the mark may pre-date your own. If offers you protection for copyright of those that may follow. See the difference between the TM symbol and the ® symbol.
As such, please do not contact me again and you are also instructed to cease and desist your own use of my trademark. If you wish to make this a legal matter, be on notice that I will present my own evidence to the court as a counterclaim my own ownership of this trademark and request that your registration be struck off. Furthermore, on the subject of your threats to 'send the boys round,' I consider this specifically a threat of violence towards my person and to that end, I have reported it to **** Police and forwarded a copy of your communication so that it is recorded.
As I said, IANAL so your mate should check in with one of those if he wants to fight it.
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