Power of Trademark Rights

Example of a Trademark in Action: Sublime®

Sublime was one of the most popular rock bands in the 1990s. The California group, composed of singer-guitarist Brad Nowell, bassist Eric Wilson, and drummer Bud Gaugh, was known for its unique blend of punk, ska, and reggae-influenced rock. Their self-titled third album included the singles “Santeria”, “What I Got”, “Wrong Way”, and “Doin’ Time” and took the band to national prominence. Unfortunately, frontman Brad Nowell died of a drug overdose on May 25, 1996 just as the album was being released. The two surviving members issued some posthumous Sublime releases and formed a new band that failed to achieve nearly the same notoriety or success. Allmusic biography.

Thirteen years after Sublime’s collapse, Wilson and Gaugh reunited, added frontman Rome Ramirez, and began performing Sublime songs under the same band name. The reorganized group, which had an almost identical sound to the original trio, made plans for a fall 2009 tour as “Sublime.” Shortly thereafter, Brad Nowell’s family members and representatives of his estate threatened Wilson, Gaugh, and Ramirez with a lawsuit over the use of the “Sublime” name.

It was Nowell’s “express intention that no one use the name Sublime in any group that did not include him.” Billboard. Nowell’s estate was able to enforce this request because Nowell had obtained sole use and discretion concerning the “Sublime” band name through a trademark registration.

On July 6, 1995, less than a year before his death, Nowell had a California trademark attorney file an application for federal trademark registration on his behalf. The filing was made in Brad Nowell’s name exclusively, and Nowell’s two fellow bandmates were not mentioned. The USPTO granted trademark registration in 1997. The trademark, federal registration number 2076786, provides exclusive rights to use the name “Sublime” or a similar variation in reference to “musical sound recordings and prerecorded videotapes and videodiscs featuring music” and related goods or services.

Following Nowell’s death, his trademark rights were transferred to his widow Troy and son Jakob through the filing of an assignment. A second application for registration was filed on August 4, 1997 to add an additional class of goods to the original filing. The “Sublime” name now also covers “posters, books related to music, calendars, decals, and stickers.” Both marks were renewed in 2007 and continue to function as active registered trademarks today. More recently, the Sublime “sun” logo and “cigarette” logo were registered as trademarks protecting clothing items. USPTO TESS database.

By pointing to Nowell’s federal trademark, his estate was able to quickly demonstrate sufficient rights to prevent use of “Sublime” over the goods listed in the trademark registration. The estate obtained a preliminary injunction in a California federal court to immediately stop Wilson, Gaugh, and Ramirez from “represent(ing) themselves as the owners of the Sublime name.” L.A. Times. The new group stopped performing or recording as “Sublime” and began out-of-court settlement discussions with the estate.

To allow the reconstituted band to continue as “Sublime” would imply full endorsement or support from Nowell and his estate. This was against Nowell’s wishes and he had the legal right to prevent such use through a trademark registered to him personally. The estate was willing to allow the two surviving members to “enhance the ‘Sublime’ legacy without the confusion and disappointment that many fans have expressed” over performances as “Sublime” without Nowell. Billboard.

In January 2010, a settlement was announced without the need for a trial. O.C. Weekly. The new venture changed its name to “Sublime with Rome”. The band mainly performs songs by the original “Sublime” and has been called “essentially a carbon copy of Sublime with Mr. Nowell” by critics. Washington Times. However, the new name no longer implies Nowell’s sponsorship and satisfied Nowell’s estate so there should be no more legal disputes. The band toured with 311 in summer of 2011 and released its first album of original music entitled “Yours Truly” in July 2011.

Sublime with Rome does not have a federal trademark registration as of the time of this writing. It is unlikely that the new band will be able to obtain registration of their name because it is too similar to “Sublime.” Trademark rights prevent a later user from adopting and registering a brand name, slogan, logo, etc. that exhibits a “likelihood of confusion” with the originally registered mark. Nowell’s estate has exclusive nationwide rights to use the name “Sublime” musical sound recordings, posters, calendars, stickers, and various clothing items. It is probable that Nowell’s estate could prevent the use of “Sublime with Rome” on musical sound recordings through a trademark infringement suit, though public comments from representatives of the estate suggest satisfaction with the name “Sublime with Rome.”

Disclaimer

The preceding article is meant to illustrate the power of federal trademark protection and demonstrate various usages of a trademark. It is neither sponsored by nor endorsed by Sublime or Sublime with Rome. Sublime® is a registered trademark owned by Jakob Nowell and Troy Nowell. Sublime with Rome™ is an unregistered trademark of the above described band. Background facts were taken from public news sources and databases and are expressed within the boundaries of fair use.

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