Thursday, April 16, 2009

Trademarks for Music Business Merchandise

Dear Rich: I have a registered trademark for my music business. The registration is in Classes 9 and 16 (for recordings and sheet music). I would like to begin a line of promotional merchandise (mugs, T-shirts, etc.). Would I need to add a new class to my trademark to do this? Congratulations on acquiring federal trademark registrations. The short answer to your question is, 'yes' (or maybe 'no'). Yes, if you wanted the benefits of federal trademark registration, you would need to apply in multiple classes -- for example Class 25 (t-shirts), Class 21 (coffee mugs), and Class 28 (teddy bears). To accomplish this online, you would begin an application using the TEAS system. When you are asked to "Add Goods/Services" enter the search terms for the various merchandise you want to register and check the appropriate boxes (see below) and when done, click "Insert Checked Entries." All of the checked classes will be entered for your goods or services. (If you are selling t-shirts now and intend to sell teddy bears in the future, then follow the online instructions to indicate the different filing basis for each class of goods.)
At between $275 and $325 per class, the Dear Rich staff feels that your registration can get kind of expensive. On the other hand, you can enforce trademark rights without a federal registration. In other words, you don't need the registration in these classes in order to sell the goods. For example, you can stop others from infringing under common law trademark rights, and you can possibly stop others from registering the same name in these merchandise classes by arguing that it is likely that your business will expand to offer merchandise. So, if money is tight, you might want to wait on the registration (or at least register only the class for the item that you find to be most popular). On the other hand, if you're flush with cash (or babies), and business is going well, then the registration may be worth the investment.