Who We Are
Bay State IP is a full-service Boston-based Intellectual Property law firm where our Boston Patent Attorney and Boston Trademark Attorney represent clients across the country from Massachusetts to California and abroad, ranging from individual inventors and start-ups to mid-size Corporations. Our experience working with a variety of clients in conjunction with our manageable size provides us the ability to tailor our services/strategy to meet each individual’s specific needs.
The foundation of our firm is the exceptional client relationships we maintain as we are able to provide quality services at competitive rates that fit within every client’s budget. Our team at Bay State IP is personally invested in each client’s IP needs starting from our initial evaluation through the grant of a patent or registration of a trademark and enforcement thereof. Finally, through our strategic alliance with our corporate and litigation counsel, we are able to offer our clients a myriad of services beyond Intellectual Property, including high-level litigation services.
The Federal Copyright Act grants copyright owners exclusive rights in their works. This includes the right to public performance. Public performance of a work does not only mean live performances, but includes playing music via CDs, playlists as well as over the radio and in addition to showing television to the public. Business owners, including food establishments, are subject to this rule, requiring the owner to pay a licensing fee in order to play music or TV for their customers.
Many business owners obtain a blanket license to play music in their establishments through performance rights organizations, or PROs. The three major PROs consist of ASCAP, BMI and SESAC. A blanket license will allow you to play any of the songs covered under the license the particular PRO grants to the business. For example, this may require that a business owner will need to obtain multiple license through different PRO’s to cover a broader base of songs and music, if the business owner seeks to play music outside of the license of a single PRO. That being said, one benefit of utilizing a PRO is the large library of music that a business owner may utilize to customize one or multiple playlists, or for broader protection if live music is part of their business. However, a blanket license is not inexpensive and there may be many songs that are unnecessarily included in the license that would never be played in the business establishment.
Alternatively, some business owners utilize services such as Mood Media (formerly Muzak). Services like Mood will create custom playlists for your business and the subscription service covers the licensing fees. Under this approach, business owners may find this to be a cost effective way to ensure they are not infringing on an artist’s copyright. However, there are drawbacks under this licensing scenario, namely that license may not cover the right to live performances or TV broadcasting, in addition to being limited to a specific set list which may become repetitive over time.
There are some exceptions to the rule, where restaurant owners would not need a license to be allowed to play the radio or TV. First of all, the rules apply when the work is intended to be received by the general public, therefore radio or TV played only for employees may be entitled to license-free use in most cases. A restaurant may also be exempt if they do not charge to hear the music; live music, CDs and other methods of playing music do not fall under this exemption. The exemption also applies to restaurants who wish to play radio or TV for the public that are less than 3,750 square feet with no more than four TVs in the entire establishment, and to larger businesses as long as there are no more than four TVs, no more than one TV in any one room, no TV bigger than 55”, the audio is played through no more than six total speakers or four in any one room and as long as there is no cover charge. Non-food establishments meet a similar exemption, however, the square footage determination is more or less than 2,000 feet.
Playing music or showing TV in any business may be costly, however, attempting to get away without a license could end up costly exponentially more. If you want to increase your business through the appeal of music and television, it is worth it to make sure you are legally covered. A copyright attorney, PRO representative or licensing service are great resources to make sure you are not infringing on the copyrights of another and protect you from costly litigation and fines down the road.
After what came sometimes be a years-long process, you’ve finally received your registration certificate. Congratulations! Now what do you do?
First of all, use that ®. Once a trademark is registered, the owner will want to put the world on notice that their mark is in use and it is registered with the United States Patent and Trademark Office. This saves the owner the extra step of having to notify an infringing party that the mark is protected and that they do not have permission to use it. The ® put the public on notice as the USPTO will not enforce the rights associated with your mark against a potential infringer. If an owner believes their mark is being used unlawfully, they should contact a Trademark Attorney to go over the best options to resolve the matter quickly and cost-effectively.
A Trademark registration has the potential to last indefinitely, as long as the required filings and fees are timely submitted and continued use is shown.
The first time a filing is required is between years five and six after the date of registration. This type of filing is called a declaration of use under Section 8 of the Trademark Act. A sample showing use of the mark is required with this filing, not unlike the specimen required during the six-month acceptance period prior to registration. At this time, an owner can also file a declaration of incontestability under section 15 of the Trademark Act, as long as they meet the minimum requirements. This status, if acknowledged by the Trademark Office, makes it harder for challengers to contest the validity of the mark later on, as it conveys a presumption that the mark is entitled to a presumption of validity.
The next required filings happen between years nine and ten. An owner is required to file another declaration of use, along with a specimen showing use, under section 8 of the trademark act. The owner is also required to file a renewal application under section 9 of the Trademark Act. The USPTO has made this type of filing easier by combining them into one easy form. Once this filing is complete, maintenance is only required every ten years.
If during either of these filing periods, years five to six or nine to ten, the Owner needs additional time, there is a six month grace period for each. However, like most grace periods or extensions with the USPTO, you will be required to pay for the extra time. The easiest way to remember to keep up with these deadlines is to set reminders now unless you work with a Trademark Attorney who would docket and alert you of the upcoming renewal periods.
In summary, as long as you are using the mark in commerce and submitting the necessary renewal documents and fees, maintaining registration of a mark is a fairly straightforward process.