Dear Doc:
I’m THRILLED that TayVis is/are engaged. But my question is about how Taylor protected the name of her latest album legally before she announced it on the podcast. Can you clue a fan in?
Signed,
A Devoted Swiftie
Dear ADS:
As you referenced, Taylor Swift announced the name of her new album, “The Life of a Showgirl”™, on her now-fiancé’s podcast. Certainly, she wanted to keep the title of the album (and presumably the song of the same name) secret until the announcement, but also needed legal protection against the inevitable copycats and pirates.
How Taylor Swift Protected Her Album Title with a Trademark
It turns out (with a bit of snooping) that the day before the announcement, TAS Rights Management, LLC filed a federal trademark application at the U.S. Patent and Trademark Office (USPTO) for the mark THE LIFE OF A SHOWGIRL for a wide range of goods and services related to entertainment, music and merchandise. The description of the goods and services to which this mark will be applied is vast (too large to reproduce here!).
Taylor, as you might expect, timed her filing perfectly…not too early to spill the beans, and not too late to permit the pirates to sneak in applications ahead of her announcement. This is one strategy for trademark owners. Under the Paris Convention, Taylor will have six months to file the same trademark, for the same goods and services, in any Paris Convention country, and claim the benefit of her U.S. filing date. This puts her far ahead of the queue in relation to any copycat applicants.
Another common strategy is to file for registration under a newly-created entity, such as an LLC with a name that is not connected to the identity of the owner, to avoid detection by the copycats. Technology companies do this all the time. They also use code names for their projects to stay “off the radar.” There is a famous story about Apple developing a new computer under the code name “Carl Sagan.” When that name leaked to the press, the actual scientist of that name objected, and had his lawyers write a “cease and desist letter” to Apple, which promptly changed the code name of the new Power Macintosh 7100 computer to “BHA” (for Butt-Head Astronomer). A libel suit followed (The Doc suggests that you search for what that means on your favorite Internet search site.). Also, see our article on “Submarine” trademarks.
One important note: Taylor didn’t need a trademark registration application before commencing use of her mark; she just needed to determine that the mark was free to use. She would have had her attorneys do a search (very quietly) under a nondisclosure agreement with a search firm. That search would have been done in increments, because trademarks are territorial and each country has its own registration database. Any confusingly similar marks that turned up would then be evaluated by counsel to determine the risk that they presented to Taylor’s new mark.
Trademark Protection Strategies for Your Business
Do you have an album about to “drop”? A new product with a cool name? Contact the attorneys at LW&H before you’re ready to go to market. They can help you to avoid the pirates and file your application when you “ARRRR” ready to go.
Until next month,
The “Doc
— Lawrence A. Husick, Esq.
