Going "All Out" on Trademarks

John Rich initially became popular in country music as a part of the duo "Big & Rich". This name also accurately describes his approach to trademark applications for a name he has been quoted as prizing and that now graces Lower Broadway in downtown Nashville - REDNECK RIVIERA and RR REDNECK RIVIERA (In the latter stylized design mark, the two letters "R" are stacked vertically on top of one another. The bottom "R" is upside down".).

Celebrities are always helpful case studies for entertainment law. Taylor Swift made news in her early years of popularity with a merchandise trademark enforcement bust at some sort of concert event. Frankly, some celebrities' legal teams handle branding and trademark issues better than others. I applaud Mr. Rich and his team on their investment into the two above-referenced marks. But I wouldn't necessarily recommend this approach to my clientele.

It is intriguing to see how developing creatives in Nashville approach the world of applying for mark registrations. In my years of practicing entertainment law, I have applied for numerous marks for clients and consulted with numerous others who chose not to file for registration. I am always surprised that the clients who seem not to need to apply are eager to invest in the process. Those who really should be doing it are the most reluctant to move forward and many times choose to hold off to their own detriment.

The decision to file an application is both a legal and a business decision. Not to mention considering any industry politics that may apply to the particular situation. John Rich, mostly through his company Rich Marks, LLC, has twenty trademark or service mark registrations and six other applications that have not registered yet. For those not registered, it appears at a glance that he is not using them at this point. Keep in mind that a mark must be used to be registered. An applicant may "clear rights" through an "intent to use" application, but such an application will not register under until the applicant uses the mark. At various intervals after the USPTO issues a "notice of allowance", a modest fee is due to keep the application alive pending use.

You may wonder why so many REDNECK RIVIERA registrations are necessary when there are just two names being registered. The law requires a list of the particular goods or services on or in connection with which the applicant uses or intends to use the mark. Goods and services are categorized into international classes - 34 for goods, 11 for services for a total of 45. The USPTO treats the various classes as separate applications subject to the fee of either $225 or $275 for online filing.

So for Mr. Rich, barbecue sauce is a separate application from restaurant and bar services, entertainment services - live music concerts, retail souvenir store services, distilled spirits, beverageware, meat, cigars, beer, sunscreen, and clothing. For now, it adds up to 20 certificates of registration. A North Carolina company also owns an active REDNECK RIVIERA registration for a stylized design mark for business consulting services in the agricultural field. This illustrates one reason for the various classes. The same registered name may be allowed if there is no likelihood of confusion based on use for separate goods/services.

Based on my review of the marks that Mr. Rich has applied for but that are not registered as of now, look for wines and cocktails, food condiments, and fruit drinks to bear the REDNECK RIVIERA mark in the months ahead.

And be assured that it is pretty much a given that you will only need to file one application to secure the name you currently use. As your brand develops, be sure to talk to your attorney from time to time about possibly applying to protect other goods and/or services.




Location: Nashville, TN, USA

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