By Katy Gaspar
Pearl Jam tribute band, Pearl Jamm, recently received a cease-and-desist letter requesting a change of name and logo, the turning over of domain names, and the destruction of all unsold merchandise. Is this within their rights?
To begin, what is a trademark?
Generally, a trademark is a design, word, phrase or symbol that identifies and sets apart one party’s goods or services from another’s. Although registration of a mark is not required, it does provide many advantages: legal presumption of ownership, public notice of ownership, the right to use the federal registration symbol, the ability to bring an action concerning the mark in federal court and the use of the U.S. registration to obtain registration in other countries. A trademark application can be filed online, and USPTO approval can take up to 18 months. Trademark infringement extends beyond the physical mark itself; if there is an unauthorized use of a trademark on or in connection with goods and/or services that could cause confusion or deception, it could qualify as trademark infringement. This means that if someone is utilizing a mark similar to a registered trademark that may confuse the ordinary person from being unable to distinguish the two, an infringement may have occurred.
So, does Pearl Jam have any trademarks for their name and logo?
Yes. When the band formed, their word mark, PEARL JAM, was registered/published with the United States Patent and Trademark Office on January 30th, 1995. Their logo was later registered on May 17th, 2011. Both trademarks have been renewed at the appropriate times.
What is a cease-and-desist letter with trademark infringements?
A cease-and-desist letter states that infringement of a trademark is occurring/has occurred and demands the party such infringement.
Why did Pearl Jam send a cease-and-desist letter?
With the tribute band’s recent surpassing of 10,000 followers and a tour scheduled for June, it is clear that Pearl Jam feels as if their fans could be easily confused by the use of their name and logo. The words “Pearl Jamm” when spoken aloud, are pronounced the same as Pearl Jam, and save the extra “m” in Pearl Jamm, the words are identical. Such similarity in both the pronunciation and spelling would no doubt create confusion for the ordinary person. Similarly, Pearl Jam’s trademarked stick figure logo is also being used in accordance with Pearl Jamm’s image, located on merchandise and the website.
Was Pearl Jam right to send a cease-and-desist letter?
Almost certainly. Pearl Jam has legal recourse to sue another business entity that utilizes their likeness to further their own business ventures. In the scope of trademark law, when marks are similar and the goods/services for which they represent are related in such a way that consumers may mistakenly believe they come from the same source, there are grounds for trademark infringement. In this case, the tribute band’s name was strikingly similar to the original band’s, and the logo was almost identical, fulfilling all requirements for trademark infringement. As such, a cease-and-desist was appropriate.
How does Pearl Jamm feel about the situation? Does it matter?
Pearl Jamm has spoken publicly about the cease-and-desist letter, stating that during the pandemic, the move was incredibly “aggressive and extremely insensitive” and that their “hearts have been broken.” The tribute band also claimed that Pearl Jam had even recognized and approved their name and logo in the past, making the letter unexpected and even more hurtful. Pearl Jamm went on to say how difficult it would be to go through a name change while still maintaining their fans, especially while dealing with present pandemic issues. The band also asserted that they are already suffering financially due to COVID-19, and that this situation will further negatively harm them. However, while some may argue Pearl Jam’s timing and actions are unethical, nothing legally prevents them from following through with this action. The harsh reality is that no matter the timing or past praise given, Pearl Jam is not in the wrong for the ask of a name and logo change, handing over domains and destruction of unsold merchandise.
What happens next?
Since receipt of the cease and desist, Pearl Jamm has decided to change their name to “Legal Jam” and has stopped using their infringing logo, therefore avoiding further conflict. If Pearl Jamm had not stopped using the infringing name and logo, Pearl Jam could have sued Pearl Jamm, likely with success. In order to do this, Pearl Jam would have to serve two documents on Pearl Jamm: a complaint that sets forth the claims made against Pearl Jamm, and a summons that includes identification of the court in which they are being sued, a case number and when a response to the complaint is necessary. The service of these documents is usually made through personal delivery or by delivery to a registered agent of the business/band.
Why is this Important?
In general, trademark law is crucial in enabling trademark proprietors to develop goodwill for their service/product and to ensure others are unable to benefit or exploit the brand. When the general public could be easily confused or unable to distinguish between two marks, infringement may be occurring. With this general knowledge of trademarks and infringement, avoiding common infringement situations should be easier to prevent.
ABOUT THE AUTHOR. Katharine Gaspar is a Los Angeles native currently studying Music Business and Legal Studies as a Junior at Belmont University in Nashville, Tennessee. She is an active member of several student organizations on campus including Grammy U, Service Corps, Belmont University Pre-Law Society, Young Entertainment Society, Belmont University Copyright Society and Women in Entertainment and is currently interning with Shrum Hicks & Associates PC, as well as with Quay Entertainment. With passions in the fields of entertainment law and live events, she looks forward to starting a career in the entertainment industry.