Where an examiner at the U.S. Patent and Trademark Office requires a disclaimer of a rock band’s name because it is primarily geographically descriptive of the origin of the applicant’s goods and/or services under Section 2(e)(2) of the Lanham Act, and thus an unregistrable component of the trademark, bands may be able to overcome the refusal without agreeing to a disclaimer.
A declaration of use of the mark in commerce for five years under Section 2(f) may be acceptable as prima facie evidence of acquired distinctiveness. If not, the Examiner may require additional evidence, including news articles and evidence of sales that show substantially exclusive and continuous use of the mark in commerce for at least five years to support your claim that the name of the band, although a geographical location, is well-recognized and has become distinctive of the applicant’s goods and services.
Further, there are numerous geographic band names registered on the Principal Register without disclaimers and it might be helpful to cite them. Here are some examples:
- FLO RIDA Reg No 3503646 (the musical artist was born and raised in Florida and has a residence in Florida) – Principal – cl 9, 41
- LINKIN PARK Reg No 2573289 (Lincoln Park is the name of a park in Santa Monica, near where the band Linkin Park is from and after which the band is named) – Principal – cl 9
- LINKIN PARK Reg No 2836832 – Principal – cl 16
- LINKIN PARK Reg No 3025082 – Principal – cl 25
- LINKIN PARK Reg No 2606999 – Principal – cl 41
- KANSAS Reg No 1117885 (the band is from Kansas) – Principal – cl 41
- CYPRESS HILL Reg No 3611552 (the name of a street in South Gate, California, where the band originated) – Principal – cl 9, 25, 41
- CYPRESS HILL & Design Reg No 3611553 – Principal – cl 9, 25, 41
- ALABAMA Reg No l300962 (the band is from Alabama) – Principal – cl 41
- ALABAMA & Design Reg No 1299918 – Principal – cl 41
- BOSTON Reg No.1730705 (the band is from Boston) – Principal – cl 9, 14, 15, 41
- BOSTON & Design Reg No. 1734444 – Principal – cl 9, 14, 15, 41
- CHICAGO Reg No 1975020 (the band is from Chicago) – Principal – cl 9
- CHICAGO Reg No 1006060 – Principal – cl 9
- CHICAGO Reg No 1026198 – Principal – cl 16
- CHICAGO Reg No 1005654 – Principal – cl 41
- CHICAGO & Design Reg No 1006059 – Principal – cl 9
- CHICAGO & Design Reg No 1026734 – Principal – cl 16
- CHICAGO & Design Reg No 1126406 – Principal – cl 25
- CHICAGO & Design Reg No 1005131 – Principal – cl 41
- GORKY PARK & Design Reg No 5688232 (the name of a central park in Moscow where the band originated) – Principal – cl 9, 16, 25, 35, 41
An applicant’s geographically descriptive band name may be registrable on the Principal Register without disclaiming the name if you can persuade the Examiner that band names are often geographical terms and that the applicant’s name is well-recognized and presents a separate and distinct commercial impression apart from being a geographical place, through at least five years of continuous use.