What if a band in Australia is using a similar band name?

May 8, 2012

Dear Music Lawyer,

My new band is currently considering using a one word band name, however a band in Australia is using the same name but with "The" in front of it. From research it seems they are unsigned, and we would be releasing under an independent record label. Would this present problems legally when we release our album or promote our music abroad? Would it be worth copyrighting our name in the United States?

—Mark

Dear Mark,

You would be wise to change the name now, i.e., prior to investing time and money in marketing and releasing under a potentially problematic band name.

As an initial matter and contrary to popular belief, band names are protected under trademark law, not copyright law. (For more on that topic, please see my March 15, 2011 post here.)

Now, setting aside geography, let's say your band is called "Bananas" and the existing band is called "The Bananas." It's not hard to imagine that consumers are likely to be confused if they are in a record store and see a CD for "Bananas" and assume it is the band "The Bananas" (or vice versa). After all, most record stores ignore the word "The" when alphabetizing. Similarly, a radio DJ may not clearly distinguish between a track by Bananas and a track by The Bananas.

Since preventing consumer confusion is the primary goal of U.S. trademark law, if the existing band was in the United States, you would almost certainly want to change the name because you could wind up in a trademark dispute and/or be prohibited from using your band name wherever "The Bananas" band was already established.

The fact that the band is based in Australia may be helpful, but it would be important to know, among other things, whether the Australian band is using the mark in the United States. For example, do they tour the U.S.? Do they sell music in the U.S.? If so, they may already have superior rights to use the name in the United States because trademark rights in the U.S. flow from use.

Please note that it makes no difference whether the band is signed to a label or not. What matters is that the name is being used to identify a particular good or service.

If you are planning to release or promote your music in Australia, you could also end up with trademark problems because Australia's trademark rights are also based on use. In other words, the Australian band would likely be able to prevent you from using the confusingly similar band name in Australia (or at least the parts of Australia in which they are using the name).

In sum, I would not hang your hat on the word "The" distinguishing your band name.

—Amy E. Mitchell