Trademark Usage

[Mark Fleming]

I would like to file for a trademark for a business in the music industry.  For the sake of this discussion, let's say the name of the trademark is "Hot Mama".  I'd like to form an LLC with the name Hot Mama LLC.  I start with one, and could eventually have several DBA's such as Hot Mama Records, Hot Mama Music Publishing, etc.--the trademark name, followed by a modifier.

My question is, is it correct to simply trademark the name "Hot Mama" in the appropropriate class, instead of trademarking each DBA name? Sounds right to me, and it sounds safe enough from others who would want to trademark Hot Mama anything else in the same class.

The class for a record label is 09, right?

[JSonnabend]

Trademark rights (and registrations) are based on actual use, and cover only the actual marks used.  Thus, if your music products are branded under the dba name, then that's the trademark and that's what needs to be registered.

From your question, it sounds like you are confusing company registration with trademark registration.

- Jeff

[Mark Fleming]

Thanks for the reponse.

Let me ask it another way with a real life example.  I see that EMI (the record label and more) has trademarked "EMI" in Class  09.  I didn't see one for "EMI Records".  That doesn't mean that anyone else could now go and use "EMI Records" could they?

But, we know that they are using EMI Records already so it's in use, although not registered for Trademark.  So--and here is my main question really--could someone else go and start using the mark "EMI Musical Hits" or "EMI Hot MP3s" (as examples) since the exact phrase is not registered by EMI?  Would not the "EMI" mark registered in the appropriate class disallow the use of this or EMI-anything in the same Class?

[JSonnabend]

Mark -

You cannot use any mark that would be confusingly similar to an existing mark.  All of your EMI examples would likely be considered infringing.

- Jeff

[Mark Fleming]

Perfect! Thanks. Then I will trademark "Hot Mama" (not the real name), not :Hot Mama Records.".

[clarklawyer]

Taking a comment about a hypothetical trademark as advice
concerning a real trademark is risky.  Whether similar trademarks
are confusing is a very fact driven analysis.  While I agree
with Jeff's remarks concerning "EMI",  his comments do not
necessarily apply to "Hot Mama" much less to whatever mark
"Hot Mama" corresponds to in real life.

Before you spend money, I'd recommend getting some real legal
advice.

[Mark Fleming]

If you're still around....

I'm still kind of confused as to the Class I should be thinking of filing in.  I see that most record labels are filing in Class 009. But, don't they also need 041 (musical publishing services; recording studio services...) and 035 (promotion, product and distributorship in the field of sound and/or visual recordings, management of performing artists...)?

If I had to choose one to start, I suppose it should be 009 since I see the other record labels doing it, but the others seem appropriate as well.

[JSonnabend]

Filing for a TM registration is not as simple as registering a domain name, for example.  I've had more clients than I care to count come to me a year after filing -- and royally screwing up -- there own tm applications.  I agree with Isaac's advice: don't be penny wise and pound foolish, hire a TM attorney.

- Jeff

[Mark Fleming]

Filing for a TM registration is not as simple as registering a domain name, for example.  I've had more clients than I care to count come to me a year after filing -- and royally screwing up -- there own tm applications.  I agree with Isaac's advice: don't be penny wise and pound foolish, hire a TM attorney.

- Jeff

I've registered trademarks before--I know they are in no way anywhere similar or as simple as a domain name. LOL!

I'm surprised no one can answer the question of the Class.  I've pretty much answered it myself by researching what other record companies have done.

[clarklawyer]

We don't know the details of your business plans, nor are
we expecting/recommending/asking that you post them here.  I
wouldn't attempt to answer your question without knowing that.