Rock band Guns N’ Roses filed a trademark infringement suit in a California federal district court against a Texas-based store that sells guns and rose flowers under the name Texas Guns and Roses (or, <Texas Guns and Roses.com>). See generally, Complaint, Guns N’ Roses v. Jersey Village Florist, LLC, No. 2:22-cv-08728 (C.D. Cal. Dec. 1, 2022).
Guns N’ Roses is an 80’s hard rock band featuring members Axl Rose, “Slash” (Saul Hudson), Michael “Duff” McKagan, and others. It rose to fame in the mid to late ‘80s with the album Appetite for Destruction featuring, now classic songs such as “Welcome to the Jungle,” “Sweet Child o’ Mine,” and “Paradise City.”
Jersey Village Florist, LLC owns the Houston-based “Texas Guns and Roses” e-Commerce store <Texas Guns and Roses.com> and sells an assortment of firearms for self-defense, as well as rose flowers.
The California-based band, a general partnership with band-members Rose, Hudson, and McKagan, previously sent the Texas gun and florist shop a two cease-and-desist letters in 2020. The band does not want to be associated with polarizing views on firearm, nor is it particularly happy about the gun shop’s use of the band’s goodwill and fame. Apparently, after not receiving a sufficiently convincing response, the Plaintiff, hard-rock band filed suit in federal district court in the Central District of California based on federal question, as well as supplemental jurisdiction involving California statutory and common law. As of writing, the <texasgunsandroses.com> URL is still live, and purchasers may place orders for firearms and flowers.
In particular, the hard rock band alleges eight counts: federal statutory trademark infringement, false designation of origin, trademark dilution, common law trademark infringement, unfair competition (California statute), common law unfair competition, cancellation of trademark registration on the basis of false suggestion; and cancellation of trademark registration on the basis of abandonment. In its prayer for relief the suit requests an injunction and treble damages. The court will have to rely upon the federal likelihood of confusion test to make a finding. See generally AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 204 U.S.P.Q. (BNA) 808 (9th Cir. 1979)
In the 1990s, Guns N’ Roses, received multiple United States Patent and Trademark Office (“USPTO”) trademark registrations in International Classes 9 (for “Prerecorded video and audio tapes, prerecorded phonograph records and prerecorded compact discs all featuring music.”) International Class 25 for “Clothing, namely, T-shirts, shirts, hats, caps, bandannas, sweatpants, and thermal shirts,” and International Class 41 (for “Entertainment services; namely, performances by a musical group.”).
In 2016, the USPTO registered Texas Guns and Roses.com stylized design mark in International Class 6 for “metal safes” and “Retail store services and online retail store services in the field of outdoor hunting equipment, including handguns, rifles, shotguns, suppressors, knives and multi-tools, holsters, magnified optics, mounts, binoculars, gun safes, magazines, and other related accessories” in International Class 35. See U.S. Trademark Reg. No. 5,078,499.
There is currently a cancellation proceeding underway at the Trademark Trial and Appeal Board (TTABVUE No. 92078395), but it is suspended pending the outcome of the federal district court litigation.
David L. Clark, attorney for the Texas-based firearm and florist states: “[his client] sells metal safes for guns and flowers . . . and absolutely no one is confused. . . . Nobody thinks we’re the band or there is some affiliation.”
However, under the federal test in Sleekcraft Boats, “actual confusion” is only one of the relevant factors. Sleekcraft Boats, 599 F.2d at 349. The Plaintiff would have to show their mark’s strength, proximity of the goods/services, similarity, marketing channels, and types of goods and degree of care, likelihood of expansion of product lines, and of high relevance – the “defendant’s intent in selecting the mark.”
Here, the word “TEXAS” in the mark is geographically descriptive, leaving only GUNS AND ROSES as the remaining distinct element. Overall, it appears the defendant would have encountered the Plaintiff’s mark given the band’s obvious fame. Given the Plaintiff’s fame, the hard-rock band should succeed on its federal and state law claims.
Written by Ahad Syed, Managing Attorney, Syed Law®.