Pro Bono Clearinghouse Spotlight: Helping a Musician Protect His Stage Name

Published: January 12, 2022

Chris Casavale

Chris Casavale, Nelson Mullins Riley & Scarborough, LLP (USA)

As Joe Brady continues to grow as a musician, producer, and songwriter in the entertainment industry, the independent artist was looking to ensure that his stage name, Ender Wright, was protected as a trademark.

Mr. Brady, a resident of Los Angeles, California, USA, did some cursory searching online for help in obtaining a trademark, and eventually found INTA’s Pro Bono Clearinghouse. The Clearinghouse matches eligible clients facing trademark issues with INTA member attorneys who volunteer to provide services free of charge. The now global initiative is the only program of its kind dedicated primarily to trademarks.

After contacting INTA, Mr. Brady was matched with Chris Casavale (Nelson Mullins Riley & Scarborough, LLP, Charleston, South Carolina, USA), an attorney who volunteers to provide pro bono legal services through the Clearinghouse.

The two worked jointly through the registration process, and, as of July 2021, Mr. Brady’s mark was fully registered with the United States Patent and Trademark Office (USPTO). In this interview, the Pro Bono Clearinghouse participants discuss the registration process and the value for artists, and others, pursuing trademarks.

Mr. Brady, why did you want to register a mark?
Joe Brady: Not too long before I started this process, I switched up the name I wanted to go by as a musician to “Ender Wright.” I wanted to register a trademark for the name Ender Wright in all the different fields of music that I work in, as an artist, a songwriter, a producer, and everything like that. I wanted to have that base moving forward.

Mr. Brady, how did you become aware of INTA’s Pro Bono Clearinghouse?
JB: I searched for something like this online! I originally searched for an online law service and the prices were super high. I went to music blogs, and some of their advice for independent musicians was to try to find pro bono opportunities. INTA’s website laid out everything very clearly, and I thought it was worth a try.

As an independent musician, it was worth avoiding $400 to $500 for some of these online legal programs. I’d rather use that money for equipment or marketing.

Mr. Casavale, why are you involved in the Clearinghouse?
Chris Casavale: Every attorney has an ethical obligation to provide pro bono services to the community. It’s often difficult to find pro bono opportunities in the trademark world, given the nature of trademarks being commercial. You don’t give pro bono services to major corporations; they don’t need it.

I was interested in the Clearinghouse because it allowed me to meet my ethical obligations while connecting me with people who wouldn’t normally have access to these services. It’s a great doorway for both the people in need of the service, but also for trademark attorneys who don’t have a way of identifying pro bono clients in the trademark space.

How was your experience working on this case through the Pro Bono Clearinghouse?
JB: I went to the website, read through the documentation, and submitted the application. Not too long afterward, I got an email from Chris, saying that he was going to be working on my application with me. The experience was very smooth. Chris answered my questions right away, and he sent me detailed emails about any problems. He described everything that was going on, why the USPTO was rejecting things, and what we could do better. On my end it was very smooth. We’d check in about once a month over the course of the year.

CC: INTA reached out to me saying that a client needed some services, and I gladly took the case. We very smoothly emailed back and forth. Joe was easy to work with. We identified issues, and he responded very quickly. It was a flawless experience.

What issues did you face during the application process?
JB: The process took longer than I expected because of issues with specimens at different steps. There was a situation with songwriting services specifically, for example. The initial specimen I provided didn’t showcase that I was promoting my services as a business. But, luckily, I was able to do that by sending advertisements for my work.

CC: The USPTO did reject the initial specimens of use that were submitted. They’re very particular about combating fraud that is plaguing the Register, with much of that coming from foreign applicants. They wanted to be confident that the specimen showed the mark was being used for what was claimed.

Another issue that is unique to marks that are names, is you need to provide written consent of the person to use the name. Because Ender Wright is a stage name, it wasn’t immediately obvious to the Trademark Office.

Why would you encourage entrepreneurs, musicians, or others with trademark questions to participate in the Pro Bono Clearinghouse?
CC: In today’s world, brands really matter. It’s how you identify yourself, so it’s important to take whatever steps you can to protect your brand—whether that’s registering your mark or policing your mark in the marketplace. It’s great that INTA has the Pro Bono Clearinghouse to allow small businesses, entrepreneurs, and independent creatives to have access to trademark attorneys. It can be daunting if you don’t know how the process works.

What are the most important aspects of trademark registration that entrepreneurs need to know about?
CC: The end of the registration process doesn’t signify the end of the trademark journey. You have to continue using your trademark, and you have a duty to police the market for third-party infringement. We always tell clients that registration is step one of two: you also have to make sure you protect your mark. The last thing you want to do is to have spent your time and effort obtaining the registration just to lose it later on.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.

© 2022 International Trademark Association