Recording Artist Servicemark/Trademark Infringement. What can I do?

I am a recording artist. I registered my professional name as a service mark/trademark with the USPTO. It was filed in Dec. '07 and was fully registered in July of '08. I have used the name in commerce since 2001 and can show various releases from then until now. Recently, another artist started to release songs under my trademarked name. They have released on I-Tunes, Amazon, YouTube and many other major online distribution outlets. I have also released songs on some of the same distribution outlets. This of course is causing huge confusion not to mention a loss of sales for my current releases. I have written to I-Tunes regarding the infringement. I have clearly shown that I have the exclusive rights to the name by providing a link to the USPTO website where my registration is displayed.

I am registered in the following classes:
IC 009. US 021 023 026 036 038. G & S: Compact discs featuring musical sound recordings and visual recordings featuring music. FIRST USE: 20010928. FIRST USE IN COMMERCE: 20010928

and also:

IC 041. US 100 101 107. G & S: Entertainment in the nature of live musical performances by a performer or group. FIRST USE: 20010928. FIRST USE IN COMMERCE: 20010928

I-Tunes contacted both record companies that released the songs. One company apparently said they would make a name change (when I asked the Apple rep when the name change would take effect, she wrote back and said "she was under the impression that it had already been done). The other company claimed that it had rights to the name. When pressed for more information (such as: what was the basis for them claiming rights to my trademark), I was advised by I-Tunes that they could not become an arbiter in "these situations", so I should therefore contact the labels directly. I have not done so, as doing so may put me at risk for a declaratory judgment.

I have invested considerable amounts of time and money developing my brand, and really feel that my rights are being stripped away from me. I'm not an attorney, but it seems to me that I-Tunes has a responsibility and may be liable as a third-party. I only requested that the songs be removed on I-Tunes in the USA. These labels would still be able to use my name outside of the USA.

At this point I don't know what move to make. How can I go up against I-Tunes when they're selling my songs too? But more importanly... "Why would I-Tunes feel that they should even suggest being an arbiter when they are clearly in conflict. It's a win-win situation for them...

I really need some good advice.

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Answers (2)

Oscar Michelen

Oscar Michelen

Contributor Level 7
Cease and desist letters and notices should be sent to all parties as soon as possible - that would include iTunes; the labels, the offending artist and all other distributors. If they ignore the cease and desist letters and notices then you can bring a federal injunction to make them stop. I would be glad to discuss this with you over the phone in a free consultation 1-800-640-2000
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Clark AD Wilson

Clark AD Wilson Avvo Pro

Contributor Level 5
It is a trademark owner's responsibility to police his/her mark against potential infringing parties. Otherwise, the mark runs the risk of becoming "generic" and unprotectable. You should speak with an attorney who has experience in these matters. I practice in Atlanta and work for a firm which handles these types of matters. Please contact me at your convenience.
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