You Wanted The Best, You Got the Best: KISS’ Big Deal and the Importance of Trademark Registration to Protect Your Brand

Admittedly, it has been some time since I put up a post on this blog regarding a substantive legal topic that wasn’t merely a link to a podcast or radio appearance, an article for another publication, or a video to a presentation I’ve given.

But when the band which has been your favorite since you were 13 years old in 1988 sells its intellectual property rights for $300 Million, and you handle some trademark law, you have to say something right?

The band in question is, of course, KISS, the self-proclaimed “Hottest Band in the World.” Fresh off of their “End of the Road” farewell tour, the now 50 year old band recently sold its intellectual property rights to a Swedish company, Pophouse Entertainment Group.

Some news outlets have misreported this sale as being the sale of the band’s music catalog. It is, in part, but not in the same sense as some other artists who have owned the rights to their master recordings and ultimately cashed them in for big paydays. KISS sold its publishing rights years ago, and the music rights involved in the Pophouse sale largely consist of the band’s artist share and a handful of master recordings pertaining to some more recent releases. In other words, Universal remains the owner of the master rights to the great majority of the band’s music catalog.

So, you ask, what did KISS get $300 Million for? In a word, its brand. Why? Because KISS legally protected said brand.

KISS, or more precisely, founding members Gene Simmons and Paul Stanley, has taken great steps over its 50 year existence to protect its brand – the name, the iconic “KISS” logo, and of course, the famous makeup designs of The Demon, The Star child, The Spaceman, and the Catman (FYI the photo you see in this post of the handsome dude in KISS makeup isn’t Paul Stanley, but rather yours truly at age 18). It is these images and names which have fueled a marketing and merchandise empire which is unmatched by any other musical artist. How did they do it? By registering trademarks for these iconic names and images.

Trademarks Defined

A trademark is any individual or combination of words, phrases, symbols or designs that identifies or distinguishes the source of goods of one party from those of another.  A service mark does for services what a trademark does for goods.  The golden arches mean “McDonald’s,” even if the name “McDonald’s” does not appear.  Likewise, NBC often displays its quintessential “peacock” and plays its three-toned chimes without ever displaying the letters “NBC.”  These symbols, and even sounds, identify in consumers’ minds particular goods and services.

A trademark is different from a copyright and a patent.  A copyright protects the contents of an original artistic or literary work, and patent protects a new and novel invention.  

Trademarks protect the intellectual property that owners create to identify goods and services, not the goods and services themselves.  Trademarks can also exist indefinitely (subject to ongoing use and renewal requirements), while patents typically expire after 20 years, and copyrights generally expire 70 years after the death of the creator.

Registering Your Trademarks

In the United States trademark system, trademark rights accrue through “use,” not registration.  This means that if you have already begun to use a mark as a trademark, you rights began to accrue as of that date of “first use” (this is commonly referred to as having “common law” rights).  Rights under Federal law begin to accrue on the date of your first use in “interstate” commerce (most businesses satisfy the “interstate” requirement, including making goods of services valuable through a website). These rights allow you to protect your trademark from infringement by others who would attempt to use the same mark or a similar mark after your date of first use.  Hence, anyone who “uses” a mark has a legal trademark under the common law.  Conversely, an owner has a “registered” trademark when the mark is listed either on the Principle Register or the Supplemental Register of the United States Patent and Trademark Office (“USPTO”).  

Benefits of Trademarks

Simply put, a trademark is a way of creating a brand for one’s products.  A service mark, like the NBC chime sounds, does for services (e.g., software programming services) what a trademark does for goods (e.g., musical instruments).  Regardless of the type of business, trademarks and service marks help to establish a company’s brand equity.  An easily identifiable mark instills trust, confidence and loyalty in the product for the consumer, what is often referred to as “goodwill.”  A brand’s value to a company can range anywhere between 10% and 70% of the total value of the company.  For instance, a 2001 estimate measured the market value of Coca Cola’s brand at $68.9 billion, IBM at $52.7 billion, and Microsoft at $65.1 billion.  In KISS’ case, the market value of its trademarks made up a large part of the $300 Million sale price paid by Pophouse. Trademarks and service marks are necessary to build brand value, and registration of your marks provides you with tools to protect and enforce your marks.  

Benefits of Registered Trademarks

Common law trademark rights are legitimate, however, registering a trademark through the USPTO is potentially an easy and cost-effective way to establish and enforce trademark rights.  First, registration provides nationwide notice of the registrant’s claim of ownership of the mark and permits use of the Circle-R “®” symbol.  By doing so, it discourages others from using confusingly similar marks and it makes searching for similar marks easy.  The process of registration, as discussed below, also ensures that confusingly similar marks cannot conflict with one’s own marks.  Second, registration treats the mark as if used nationwide as of the application date, instead of the common-law treatment which limits trademark rights to the geographic area of use or reputation of the mark.  Third, registering the mark grants the owner the right to bring an action in federal court for matters concerning the mark, and, in certain cases, obtain significant monetary recovery including attorneys’ fees.  Fourth, registration with the USPTO provides a basis for trademark and service mark protection in foreign countries, and provides protection by U.S. Customs to prevent importation of foreign goods that might infringe on the owner’s trademark rights.

How to Register a Trademark

The process of registering a trademark or service mark begins by filing an application with the USPTO.  The USPTO employs attorneys who will review the application for proper legal and procedural grounds.  In many cased, the examining attorney responds to the application with an “office action.”  The attorney highlights any conflicts with the proposed mark, or any other objections to granting registration in the office action.  The applicant has the opportunity to respond to any conflicts or problems noted in the office action within six months.  After six months, if the applicant does not respond, the application is deemed “dead.”  If the application either receives no objections for registration, or if the applicant overcomes any objections within the six month period, the USPTO publishes the mark for opposition.  Any party, who may contest the registration of the mark, must do so within 30 days of the publication date.  If no one contests the mark, then the USPTO will register the mark, typically 12 weeks following the publication date.  Once you select a mark, the overall USPTO process from start to finish averages between 12 and 18 months. 

Why Use an Attorney to Register a Trademark?

While the steps above may appear to be simple, in reality trademark registration is quite nuanced.  An experienced intellectual property attorney can provide the legal assistance necessary to successfully register your mark, and take full advantage of your portfolio of intellectual property including copyrighted material, patents and trade secrets.   

Trademark attorneys provide a host of services that ensure your mark will reach registration successfully, and your rights in that mark will be protected through all stages of trademark prosecution.  We have extensive experience in:

1) Performing  searches of previously registered marks and other common-law marks to determine the most-effective way to apply for registration for your mark;  

2) Consider registration strategies to help avoid trademark infringement;

3) Filing of the trademark application to help avoid pitfalls, and use legal arguments to persuade the examining attorneys to approve the application for registration;  

4) Responding to arguments made by the USPTO that challenge the application;

5) Investigating potentially infringing trademarks;

6) Working with U.S. Customs to monitor the importation of potentially infringing trademarks;

7) Counseling clients on the importance of policing their marks to avoid abandonment; infringement, and genericide (the process of trademarks becoming part of popular culture, and thus losing their value as trademarks); and

8) Help clients file applications for their trademarks in other countries.

Careful trademark and service mark management can lead to a successful brand development and greatly increase the value of a company or product.  KISS’ story is testament to that. Not only is the Pophouse deal a sound business decision, but by placing their intellectual property rights into a third party, KISS now ensures that its artistic legacy and its iconic imagery will live on well beyond the lives of its members. In fact, the band was already working with Pophouse on a “virtual KISS experience” which will provide future generations who want the best to get the best (virtually speaking, of course).

It should be noted, however, that use and registration of trademarks and service marks can be a complicated and treacherous landscape.  The knowledge of an experienced attorney can help navigate the terrain of trademark law, and lead to an outcome of branding success.