Unregistrable
Brand Names as Banned Names?
This month’s column continues to tap the musical vein begun with last month’s discovery of the improbable confluence of trademark law and the Grateful Dead. Early in my career (at another law firm), a client in the satellite communications industry hired us to stop a perceived existential threat to its trademark rights. An obscure and commercially marginal band from England was riding the backwash of the 1980s British New Wave invasion using the client’s name as part of the band’s moniker. “This cannot stand,” said the client (or words to that effect). Cease and desist letters were sent. A complaint was filed. And the British band folded faster than a bad poker hand. It changed its name to CSA, an innocuous acronym cobbled from the letters of its original and offending name. (Apparently, the British citizens were unconcerned or unaware that their new name was the abbreviation for the Confederate States of America.) Oh, and of course, these trademark hooligans were forced to sign a consent judgment vowing never to violate our client’s trademark rights again.
Years later, attending the last INTA meeting in San Francisco and wandering the thrift stores and taquerias of the Castro, I stumbled into an independent record store (yes, this was before they became extinct). There, among the racks of imports and esoterica, was a boxed retrospective by the band that we thought we had vanquished years earlier. Emblazoned on the cover of this impressive collection wasn’t the substitute name the band had adopted under penalty of contempt, but its original name—with the (by now former) client’s trademark contemptuously plastered all over the packaging. My initial shock turned to nostalgic bemusement as I realized that despite this flagrant breach, the world continued to turn with the client’s communications satellites remaining safely and steadily in orbit, and with barely a rumor of confusion throughout the city of San Francisco and presumably the rest of the civilized universe.
I bought the boxed set, brought it home, and put it on my bookshelf where it remains, unopened and gathering dust to this day.
Now, I don’t mean to minimize the threat or damage caused by unauthorized trademark use and violations of court orders. Yet this brush with the intersection of big business trademarks and small music-business aspirants prompted me to wonder how many other band names are derived from brand names, and have been used without any apparent ill effect on the “real” trademark owner. The list is longer than I imagined:
And here we come full circle. After the initial success of the band known for such hits as “25 or 6 to 4” and “Saturday in the Park,” the actual Chicago Transit Authority took umbrage that its name had been usurped by rock and rollers. The municipality then threatened legal action, forcing this horn and hook-ladened band to adopt the shortened name under which it has enjoyed fame and fortune for over three decades—simply, Chicago. According to Wikipedia, Chicago is one of the longest-running and most successful U.S. pop/rock and roll groups of all time, second only to the Beach Boys in terms of singles and albums. How much higher they might have gotten if their ascent had not been bumped off track by the Windy City’s transit authority, we’ll never know. But at least they had the good sense not to call themselves CTA.
