If we were the first to use the band's name in the marketplace, doesn't that count for something?

There are two ways to help establish ownership in a trademark or servicemark:(1) show first actual usage in the marketplace; and (2) apply to register the trademark on the federal trademark register.

Generally, the first business to use a trademark in the marketplace owns it and can stop others from using it, even without federal registration. Thus, a trademark is generally "owned" by a person or business by virtue of their first commercial use. Formal registration of the trademark with federal agencies - while not required to be the owner of a trademark - affords the legal protection and benefits under the U.S. Trademark laws (the Lanham Act), including the right to sue for monetary damages. However, in case of a conflict between marks, actual use usually takes "priority" over federal registration.

However, priority allows the owner the exclusive legal right to use the trademark (name) in that specific territory only. For example, an LA band that gigs locally only, cannot prevent a Florida band from using the same name if it does not play in Florida. Similarly, a New York (east coast) band could not prevent a Seattle (northwest) band from using the name if it does not play and use the same name in the northwest. However, once the band commercially releases its first record with a major record company and distributes the music and tours nationally, the band’s record and/or its record company may then acquire the national rights to use the band’s name throughout the country, subject to any claims of priority. If somebody is already using the name when the major release occurs, they have "priority" and you cannot stop them from using the same name, even though you may use the name nationally.

(Reprinted with permission of Ruben Salazar, Esq.)