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Fighting for the right to save Birth Name ACM!
MODERN DAY BATTLE OF DAVID AND GOLIATH: ACADEMY OF COUNTRY MUSIC VS. ACM RECORDS
ACM Records is fighting for its name in a modern day Battle of David and Goliath currently being played out between independent record label/publisher based in New Jersey and the Academy of Country Music, which allegedly wants to steal the title ACM Records to expand its thriving record business. Despite the fact that the Academy of Country Music had its trademark application for the title "ACM Fan Jam" rejected because of alleged copyright confusion with ACM Records' existing trademark, the organization, which is known for its annual awards show televised on CBS, has filed a lawsuit against ACM Records in the Federal Court in Los Angeles, California seeking to prevent the well respected indie music label from continuing to do business under its longtime corporate name,
Founded 20 years ago by Al Cohen and Eve Adams, ACM incorporated in 1991 and registered the company's name in 2008. On February 21, 2011, the United States Patent Offfice rejected an application by the Academy of Country Music for use of the title, "ACM Fan Jam," ruling that the name could easily be confused with the ACM Records trademark. Nonetheless, the Academy of Country Music has continued to use the title, "ACM Fan Jam," to promote live music events and in 2011 began to distribute compact discs under the name "ACM ZinePak."
"We don't have a problem with the Academy of Country Music using ACM as their abbreviation," said the co-owners of ACM Records, "but we will not allow them to infringe on our musical territory. If necessary we may seek an injunction to prevent the Academy of Country Music from distributing products that confuse the public as to their source. The Academy needs to practice what many of their artists preach: America is all about fairness for the little guy."ACM Records represents rock, folk, country and hip hop artists, Trademark Infringement Case. David and Goliath Posted On: April 11, 2013 by Milord A. Keshishian Academy of Country Music Sues ACM Records In Los Angeles After ACM’s Attorney Files TTAB Trademark Opposition
Although the “ACM Awards” trademark is prominently featured on the Academy of Country Music’s website, I was shocked to learn that the Academy only last month filed a trademark application with the US Patent & Trademark Office to register the ACM and the ACM Awards trademarks. Obviously someone has not been reading my article on advantages afforded to USPTO registered trademarks.Without the benefits of a trademark registration certificate establishing its priority rights, the Academy alleges and must now spend resources proving that it has been using the ACM trademark and ACM derivative marks since at least 1974 in association with services and goods in the country music industry. The Academy also alleges incurring, along with its media partners, expenditures of over $30,000,000.00 over the last 22 years in advertising and marketing the ACM marks, making the trademarks famous. ACM Records, like a good trademark owner should, filed and obtained a USPTO trademark registration for the “ACM Records” trademark in 2008. If the Academy had previously filed and registered its ACM trademarks, Defendant’s trademark application would probably have been refused registration by the USPTO examining attorney. Instead, the Academy claims that ACM Records filed an opposition with the Trademark Trial & Appeal Board (“TTAB”) in February of 2013, asserting a likelihood of confusion and dilution would arise from the Academy’s application to register “The ACM Experience.” Thus the Academy seeks declaratory judgment to its rights to register and expand the use its ACM family of trademarks. Although the Academy claims it is the senior user of the “ACM” mark by almost twenty years, its failure to register the trademark may result in a complete bar to its federal and state dilution claims, merely because ACM Records obtained a prior USPTO trademark registration. 15 U.S.C. § 1125(c)(6) provides that the “ownership by a person of a valid registration ... on the principal register ... shall be a complete bar to an action against that person, with respect to that mark, that is brought by another person under the common law or a statute of a State; and seeks to prevent dilution by blurring or dilution by tarnishment...”
No matter the outcome, the lesson to be learned is to register your trademarks with the USPTO because a certificate of registration provides prima facie evidence of validity, ownership of the mark, and the owner’s exclusive right to use the registered trademark. 15 U.S.C. § 1057(b). The registration basically shifts the burden to the defendant to prove that the claims in the certificate of registration are not correct. The case is Academy of Country Music v. ACM Records, Inc., et al., CV13-02448 DDP (C.D. Cal. 2013). Posted by Milord A. Keshishian
ACM Records is fighting for its name in a modern day Battle of David and Goliath currently being played out between independent record label/publisher based in New Jersey and the Academy of Country Music, which allegedly wants to steal the title ACM Records to expand its thriving record business. Despite the fact that the Academy of Country Music had its trademark application for the title "ACM Fan Jam" rejected because of alleged copyright confusion with ACM Records' existing trademark, the organization, which is known for its annual awards show televised on CBS, has filed a lawsuit against ACM Records in the Federal Court in Los Angeles, California seeking to prevent the well respected indie music label from continuing to do business under its longtime corporate name,
Founded 20 years ago by Al Cohen and Eve Adams, ACM incorporated in 1991 and registered the company's name in 2008. On February 21, 2011, the United States Patent Offfice rejected an application by the Academy of Country Music for use of the title, "ACM Fan Jam," ruling that the name could easily be confused with the ACM Records trademark. Nonetheless, the Academy of Country Music has continued to use the title, "ACM Fan Jam," to promote live music events and in 2011 began to distribute compact discs under the name "ACM ZinePak."
"We don't have a problem with the Academy of Country Music using ACM as their abbreviation," said the co-owners of ACM Records, "but we will not allow them to infringe on our musical territory. If necessary we may seek an injunction to prevent the Academy of Country Music from distributing products that confuse the public as to their source. The Academy needs to practice what many of their artists preach: America is all about fairness for the little guy."ACM Records represents rock, folk, country and hip hop artists, Trademark Infringement Case. David and Goliath Posted On: April 11, 2013 by Milord A. Keshishian Academy of Country Music Sues ACM Records In Los Angeles After ACM’s Attorney Files TTAB Trademark Opposition
Although the “ACM Awards” trademark is prominently featured on the Academy of Country Music’s website, I was shocked to learn that the Academy only last month filed a trademark application with the US Patent & Trademark Office to register the ACM and the ACM Awards trademarks. Obviously someone has not been reading my article on advantages afforded to USPTO registered trademarks.Without the benefits of a trademark registration certificate establishing its priority rights, the Academy alleges and must now spend resources proving that it has been using the ACM trademark and ACM derivative marks since at least 1974 in association with services and goods in the country music industry. The Academy also alleges incurring, along with its media partners, expenditures of over $30,000,000.00 over the last 22 years in advertising and marketing the ACM marks, making the trademarks famous. ACM Records, like a good trademark owner should, filed and obtained a USPTO trademark registration for the “ACM Records” trademark in 2008. If the Academy had previously filed and registered its ACM trademarks, Defendant’s trademark application would probably have been refused registration by the USPTO examining attorney. Instead, the Academy claims that ACM Records filed an opposition with the Trademark Trial & Appeal Board (“TTAB”) in February of 2013, asserting a likelihood of confusion and dilution would arise from the Academy’s application to register “The ACM Experience.” Thus the Academy seeks declaratory judgment to its rights to register and expand the use its ACM family of trademarks. Although the Academy claims it is the senior user of the “ACM” mark by almost twenty years, its failure to register the trademark may result in a complete bar to its federal and state dilution claims, merely because ACM Records obtained a prior USPTO trademark registration. 15 U.S.C. § 1125(c)(6) provides that the “ownership by a person of a valid registration ... on the principal register ... shall be a complete bar to an action against that person, with respect to that mark, that is brought by another person under the common law or a statute of a State; and seeks to prevent dilution by blurring or dilution by tarnishment...”
No matter the outcome, the lesson to be learned is to register your trademarks with the USPTO because a certificate of registration provides prima facie evidence of validity, ownership of the mark, and the owner’s exclusive right to use the registered trademark. 15 U.S.C. § 1057(b). The registration basically shifts the burden to the defendant to prove that the claims in the certificate of registration are not correct. The case is Academy of Country Music v. ACM Records, Inc., et al., CV13-02448 DDP (C.D. Cal. 2013). Posted by Milord A. Keshishian
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