OVERLORDE Protecting Trademark
by: Mike - 2012-08-21 18:21:30
Overlorde from New Jersey, USA has announced they have had to take legal action to protect their trademark from being infringed upon by another band from North Carolina, USA.
The New Jersey based U.S.Power Metal band Overlorde has issued the following Press Release:
Recently a matter has made its way into the press that needs addressing. A matter that should have been handled privately by the parties involved but was not. And now entities unfamiliar with the situation are adding to the confusion, and actually hurting the very people they are trying to help.
Earlier this year, Heaven & Hell Records issued a press release stating that they were issuing old recordings by a band in North Carolina named Overlorde SR under the title Medieval Metal Too. This band had previously been known as Overlorde. Heaven & Hell also stated they would be releasing new recordings from the band.
We felt that the North Carolina band Overlorde SR was infringing on our trademark, an opinion confirmed by various legal counsel. This since the addition of the "SR" is not enough to avoid confusion, and confusion is the test for trademark infringement. Indeed, we have documented multiple instances of confusion that have already occurred.
Given the likelihood of confusion, we were thus legally required to act. Trademark law basically states that to maintain trademark protection, you must actively work to defend the trademark, no matter how big or small the entities involved may be. If we did not police our trademark, all such protections of the registration, and the registration itself, would be nullified. The money we had paid over the years to register and maintain the trademark, and it is a substantial amount, would in effect become wasted money.
This is not the first time we defended the trademark against the North Carolina band, either.
Around 1985, both bands released demos under the name Overlorde. In 1987, we both had our first formal releases. We, the New Jersey band, released our 5-song vinyl E.P. on Strike Zone Records, and the North Carolina band had one song on the Metal Blade Metal Massacre VIII compilation.
Being well before the internet age, and being that our two bands were not in the same region and thus not advertising in the same local music newspapers, we were unaware of the North Carolina band until we saw a review of the Metal Blade release in a magazine. At that point, our trademark was already in place. We immediately issued a “Cease and Desist” letter to Metal Blade. While we never heard back from Metal Blade, Metal Blade did not release anything further from the North Carolina band and the North Carolina band made no attempt to challenge our trademark or make their own trademark registration.
The 90’s went by with both bands either in hibernation or disbanded. In 2000, we, the New Jersey band, reunited after being made aware of a cult status that our 1987 EP had gained. Our EP was regarded as one of the premier U.S. Power metal releases of the 80’s. It was clear that the fans wanted more. We reunited in late 2000, and the Trademark Registration was re-activated soon after.
Our resulting full length CD titled Return Of The Snow Giant was recorded in 2004. It was released and promoted by Sonic Age Records, and was reviewed by 500 heavy metal magazines, websites and radio stations worldwide. It was one of the top ranked releases of 2005 (late 2004 in Europe, early 2005 in North America and elsewhere). Critics universally hailed it as a metal masterpiece We were flown over to Germany and performed at Keep It True IV metalfest in April 2005. A DVD compilation containing 4 Overlorde songs from that show was issued on Steel Pride Records.
We have maintained and expanded our web presence and the CD continues to be sold by Sonic Age Records. We are working towards issuing a follow up release.
So this brings us to February 2012, shortly after Heaven and Hell Records announced the signing of the North Carolina band which had decided to now go by the moniker Overlorde SR (SR standing for “Still Rockin”, but the words are not part of the official name).
We initially contacted both the label and the band to bring their attention to the infringement, and attempt to work out some sort of arrangement prior to the release of Medieval Metal Too. We contacted various band members, including main member and booking agent George Koerber using multiple email addresses for him. Facebook, his official contact email, etc.
None of the band members chose to reply to us officially. Only Jeremy Golden at Heaven & Hell replied, and he refused to discuss the matter, stating that no infringement was present and the release would go on as planned.
When the release did occur, that forced us to seek legal counsel, which we did. ”Cease and Desist” letters were issued to both the band (as the actual entity infringing our trademark) and the label (since they were selling product infringing on our trademark).
But once again, only Jeremy Golden chose to respond with legal counsel. As a result of our exchanges, Heaven & Hell Records ceased sales of Medieval Metal Too on their website, and plans to release a new CD by the North Carolina band were put on hold until the bands could reach an agreement. But instead of Heaven and Hell alerting us directly, we had to find out about this development when Heaven & Hell issued a Press Release. A Press Release that served to misrepresent the facts of this case and present us, the New Jersey band, in a poor light.
Meanwhile, it came to our attention that an application had been recently submitted to the U.S. Patent and Trademark Office to trademark Overlorde SR. The application was made by a Sherry Koerber. Attempts to reach Sherry are ongoing, but she has also refused to reply thus far. While it would have been far better for George Koerber to make contact with our attorney, even while making the application, it was their prerogative to take this approach. But the application will be reviewed by the Trademark Office, and should be rejected for multiple reasons. The main reason being our long time ownership of the registered trademark over the past 25 years.
So anyone who suggests that the New Jersey band is bullying anyone, or being unreasonable, is misrepresenting the situation. It is unfortunate that Heaven & Hell has become involved in this, when it is the North Carolina band that is the source of the infringement. It is George Koerber’s continuing silence for 6 months that has resulted in undue time, effort, and expense on both our part and the part of Heaven & Hell. Had George replied to us in February, this likely would have been settled amicably by now.
If George and Sherry, who legally is now the trademark applicant, decide to maintain their silence pending the outcome of the review of the new application, then all they do is cause further harm to themselves and Heaven & Hell. Once the Trademark Office rejects the application, they will then be far more exposed to legal action. Not just George, but also Sherry and all the individual band members both current and on Medieval Metal Too.
In closing, Overlorde regrets that this case has taken the turns it has. We are and have been looking to settle this reasonably and professionally, taking additional steps only in response to actions or inactions by Jeremy Golden and George Koerber. We call upon Heaven & Hell Records to resume contact with us directly instead of debating this in the press. We call on George and Sherry Koerber to have their attorney contact us immediately so we can settle this case. And we call on George and Sherry Koerber to stop placing undue stress on Jeremy Golden of Heaven & Hell Records, which the Koerber’s have done by refusing to contact us and thus placing the burden of defending the trademark on Heaven & Hell.
Overlorde (Registered Trademark)