UK pop quintet ONE DIRECTION is facing legal action from a US band of the same name, claiming that it had the name registered in the US first, and was famous enough that it is confusing to the public, even across the Atlantic.
Despite this being a US trademark issue, Canada has similar laws and regulations. If a band named One Direction in Canada were to appear in the next while, the US band (and the UK band) would also have potential action against it. Famous trademarks cross borders all the time, despite no commercial presence in that country (for example, think of how famous Victoria’s Secret was in Canada for years, despite not having stores here yet).
The UK band filed for its trademark in the US on May 11, 2012, claiming priority back to November 11, 2011. The US band had filed their trademark on February 14, 2011, claiming priority since October 2, 2010. The US band was therefore first to register in the US, and also has the first priority date.
There are a few potential outcomes. First, if the US band wasn’t famous enough that it’s influence and status crossed the Atlantic, it might only be able to protect its name in the US (as it has a registered trademark), but the UK band wouldn’t want to miss out on the US market so the UK band would likely need to take action in any regard, either by attempting to challenge the priority of the band or its registration, or by negotiating a settlement. Second, if the US band was famous enough to cross the Atlantic, then the struggle for the UK band is even larger, and likely the UK band may have to change its name. Third, the UK band may attempt to settle with the US band, and either purchase the US band’s name or sign a co-existence agreement that may allow the UK band to continue using its name despite the confusion.
When registering a trademark, and specifically in the entertainment industry, it is important to not only search the trademark registry, but also a number of secondary sources including the Internet and indie charts to see if band names are already in use. It is equally important to choose a unique name, and to be the first to register.
For more information or to register your band name, contact me today.