Podcasts with the same name: what to do and how to prevent it

So, you’ve made a podcast for a year or so, and all of a sudden, a search for your podcast reveals someone else is using the same name.

Here are a few ideas for how to prevent that.

Registered trademarks

The best way to protect your name - and make that protection legally enforceable - is to get a registered trade mark. Podnews® is a registered trademark in the US, Canada and soon in a few more; so we’ve a little experience of how this works.

You can only get a registered trademark if your name is not a generic term - trying to trademark the term “computer” isn’t going to work. If you call your podcast something blindingly obvious - “Fly Fishing” - then you’re unlikely to be allowed to register it.

You can also only get a registered trademark if nobody else is using it, or anything like it. You can search the US trademark database to see if someone else is already using your trademark in the relevant trademark classes, which are typically 9, 38, 35 or 41. A search for “Podnews” should probably also include “Pod News” and “Podd News” and so on.

Then, you instruct a trademark lawyer, who does the form filling and sends it off to the United States Patent and Trademark Office. Then, very slowly, your application is checked for being too generic or already registered.

After that, it’s then published as a trademark application, so anyone can object to your application. Assuming nobody does, then you eventually get awarded the registration certificate a number of months later.

We instructed our lawyer in February 2018; we were awarded the registered trademark in October 2018. It cost around US $900.

You then need to use it; and file a Declaration of Use after five years, ten years, and again every ten years thereafter.

Where should you register your trademark?

Wherever you like, but probably where it’ll be most useful. We did it while Podnews was an Australian company, but we chose the US to register in, because a) more podcasts were released there than anywhere else; and b) because Apple and other large podcast directories are based there, so are subject to US law.

How do you protect your registered trademark?

If you’ve sent a polite notice to the podcaster first, and got no response, then you’re best contacting the podcast hosting company of the infringing podcast. It’s to the same people as who deal with DMCA takedowns, so our list over here for pirated podcasts is also the list you should use for trademark infringement.

We’ve had good experiences with Spotify for Podcasters, which has a robust procedure. Some other podcast hosts will claim that they’re not to blame - agreed, but they’re facilitating trademark infringement and should take action. Reminding them of that fact normally helps.

Additionally, you can also contact podcast directories to report trademark infringement. We’ve found that Apple reacts quite quickly.

Does that instantly pull the infringing podcast down?

Typically, no. The podcaster will be notified that there’s a claim of trademark infringement against them, and they have a chance to argue their point. Most will be unaware they were infringing your trademark, and will change their name.

Sometimes, you’ll need to go to court. Just ask Rhondalynn Korolak, who has a podcast in Australia called Financial Foreplay. After another Australian podcaster started a podcast with an almost identical name, she took them to court - and won more than US$75,000 in legal costs.

However, sometimes, the podcaster will reply with proof that they also have the registered trademark for the podcast, but in their own country.

What happens if someone else has your registered trademark in their country?

Well, sticky situation, eh? You’ve both got the rights to your name, but in different countries. That’s when it’s time to have a nice chat over a tea and biscuit.

They could decide to counter-claim trademark infringement, or try to block your podcast from the countries that they’ve registered the trademark name in. They’d probably succeed, too. So it’s important in this case to make an agreement.

One suggestion might be to agree not to release shows in each other’s language, for example; or not to use the same colour scheme in your artwork.

Or perhaps you both change or add to your names to clarify the differences. Instead of “Real Talk®”, perhaps rebrand to “Real Talk® with James”. You keep your trademarks; but your shows are distinctive in the directory.

Trademarks

A trademark™ that isn’t registered isn’t protected by the same trademark law as above. Anyone can slap a ™ at the end of their name, and it signals that they’re claiming it as a name they’d like to be associated with: but it doesn’t give any legal protection.

In some jurisdictions, there’s a law of passing off - a law “stopping one trader from misrepresenting goods and services as being the goods and services of another”.

You don’t need a ™ at the end of your name to strength a case of passing off, but it might help.

A ™ doesn’t give you the right to send a cease and desist letter, nor does it mean a podcast hosting company need take any notice of your claim - because there’s no legal basis to it.

In the US, there’s no law around “passing off”, but there is a term of misappropriation, which relates to unfair competition. It’s not as clear, and differs from state to state. Again, a ™ may be useful here.

Service Marks

In some jurisdictions, there’s a thing called a service mark, which looks like ℠. A service mark is there to protect services in the same way as a trade mark is to protect a product.

The US National Archives suggests that “What can you make for me” is a product, vs “What can you do for me” is a service.

Digital products like a podcast are still products, so they’re probably ™ and not ℠.

A unique name

With more than 3m podcasts, it’s inevitable that some will share the same names.

The simplest thing to do is to make that name unique. As Parcast knew, the best name for a podcast about serial killers is Serial Killers - but were they to call it Serial Killers with Greg and Vanessa, it would be less likely for it to be confused with other shows.

And, while “Serial Killers” doesn’t have a registered trademark (and nor would it probably get one, given that it’s a generic term), Serial Killers with Greg and Vanessa is probably unique and distinctive enough to be able to qualify for one.

A disclaimer

As with anything here: this is not legal advice (we’re not lawyers), and you should do what you feel is right. Don’t go taking legal advice off random people on the internet, and contact a lawyer who is a specialist in trademark law for advice in your situation. Laws differ country-to-country, too.

While they have not reviewed or verified anything in this article, we used Lee Law PLLC for our US trademark; and Richard Law Group for our Canadian trademark. A podcast-friendly lawyer is Gordon Firemark, who you’ll find at most Podcast Movement events.

Podnews® is US trademark no. 5,575,836 registered Oct 02, 2018; and Canadian trademark TMA 1,092,031 registered Jan 20, 2021, with further trademarks pending.

Feedback welcome to editor@podnews.net