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Staind Vs. The Stain
Rock band
The lawsuit accuses Stainbrook of trademark infringement and breach of contract. It also seeks a judicial declaration that Staind’s trademark registrations are valid, according to a statement from the band.
As the story goes, Stainbrook originally registered the name “The Stain” through the USPTO in the early ’80s. Then in 1999, the band purchased the name from Stainbrook for $18,000, along with promises from the band’s record company (Flip/Elektra) to help him further his music career, according to Stainbrook. The band then re-licensed the name to Stainbrook, giving him the right to perform under “The Stain” in Ohio, Kentucky, Michigan and Indiana.
“They told me, ‘Well, if you give us this name, we’ll put your Web site in our liner notes, we’ll thank you,’ and all this other crap,” Stainbrook, whose music recordings have been featured on ESPN, Disney, FOX and MTV, told Pollstar. “They didn’t do any of that stuff.”
“I was trying to do them a favor. I said, ‘OK, I’ll license my name to you so you can exist.’ … I did it as a favor to these guys because they promised me all kinds of crap, and they didn’t come through with anything,” he said. “They wouldn’t even return my phone calls after I signed the contract.”
In 2003, Staind filed a suit in New York Federal Court against Stainbrook for not presenting samples of literature for brochures, signs and advertising that used “The Stain” for approval. That case was dismissed.
Stainbrook responded by filing a petition with the USPTO requesting cancellation of Staind’s trademark. He alleges that Staind’s trademarks are invalid because they were obtained by the band through fraudulent statements to the USPTO.
“As part of the deal, they were supposed to maintain registration of the mark with the USPTO; they did not,” Stainbrook’s attorney, Anthony DeGidio, told Pollstar. “They let the mark lapse, and they let it lapse under some very peculiar circumstances, which are outlined in our papers filed with the USPTO.”
Staind, on the other hand, claims Stainbrook purposefully caused the band’s rights in the trademark registration to lapse. The members claim his attempt to re-register the mark would cause confusion with the mark “Staind.”
“We dealt with this years ago by purchasing Mr. Stainbrook’s mark in good faith,” Staind said in a statement. “All we want to do is make music and it’s too bad that we have to spend time and energy dealing with this situation.”
If it is decided that Staind’s trademarks were obtained through fraudulent statements, the band could be required by a federal court to change its name and discontinue distribution of all products labeled “Staind,” according to Stainbrook.
He won a case a few years ago, forcing a band called Stain to change its name to