Guns N’ Roses Sues Texas Florist for Trademark Infringement
Guns N’ Roses Claims Trademark Infringement Against Texas Gun and Flower Shop
Choosing a trademark for business often involves obtaining insight into third-party rights/use, potential issues, and thoughtful strategy (including monitoring and enforcement) to help prevent unnecessary legal issues in the future – such as third-party trademark infringement claims. This post examines the dos and don’ts of adoption, registration, and enforcement of trademarks via analysis of a dispute between Guns N’ Roses and a “florist’s” mark.
Avoiding Trademark Infringement Claims and Litigation
A Houston, TX company by the name Jersey Village Florist, LLC adopted and registered the U.S. federal trademark TEXAS GUNS AND ROSES .COM & Design (the “Disputed Mark”) and has been hearing disapproval from Guns N’ Roses (“GNR”) for almost 3 years now. It started with cease-and-desist-letters, then a TTAB cancellation proceeding, and now a federal lawsuit in California. Would you think this Disputed Mark used at a Texas gun and accessories shop that also sells roses, is somehow related to the famous band? That’s what GNR wants to be determined to stop the use of the mark it considers infringing on its own brand, claiming infringement, dilution, and false designation, among other claims.
Some tips for choosing a trademark to avoid litigation include: not using marks similar to a competitor, not using plays on words of a competitor’s mark, not imitating a competitor, and not using a famous mark (or a mark confusingly similar to one) for use with non-competing goods/services. Trademark rights are created with common law use in commerce, even before a registration is obtained. Such rights can extend the scope of use and even the goods/services listed in a registration when the mark becomes famous. So, adopting a mark that’s similar to a famous mark is usually a bad idea – unless you are purposely seeking trouble and potential publicity from such action. However, in this case, a company adopted a name very similar to the famous band name Guns N’ Roses and is using its mark to sell guns, gun accessories, and roses – a one stop shop!
Guns And Roses And Trademark Infringement Defenses
The owner of the TEXAS GUNS AND ROSES .COM & Design registration claims first use back to as early as December 2012. The mark was (surprisingly to me) allowed to become a registration by the United States Patent and Trademark Office (USPTO) in 2016.
These facts can potentially help the owner’s arguments against infringement if there has in fact not been any consumer confusion in all those years. Additionally, there’s an argument to be made that GNR did not identify or take action on such use of the Disputed Mark for years. Yet, the most glaring argument likely to be made appears to be that the whole “reason” for the words used in the Disputed Mark is that most elements are descriptive of the owner’s goods and services and therefore can’t be infringing on a third party’s mark. Such argument, though, can also be harmful in itself to the strength of the mark.
It will be interesting to see how the owner of the Disputed Mark defends its use. In a TTAB cancellation proceeding, the defendant’s Answer only included responses to the claims with mostly denials, but no form of defenses made.
Monitoring and Enforcement for Trademark Infringement
According to the federal Complaint filed by Guns N’ Roses in California in December 2022, GNR first became aware of the Disputed Mark’s use in late 2019 and sent a cease-and-desist letter in February 2020, then a follow up letter later that year, with both letters ignored by Jersey Village Florist.
Part of maintaining trademark registration rights not only includes continued use but policing as well as enforcement of one’s marks against third-party infringement and potential dilution. Perhaps if GNR had been more closely monitoring its mark for third party use, it would have been able to address or even stop the use much sooner, potentially before the Disputed Mark became a registration. Such monitoring and enforcement efforts are typically much less expensive than having to engage in official legal proceedings. However, once GNR did finally discover the use, it has taken concerted steps to enforce its rights against what it believes to be infringing use.
GNR Trademark Infringement Litigation Strategy
GNR, through its counsel, filed a cancellation proceeding against the Disputed Mark with the Trademark Trial and Appeal Board (TTAB) on November 5, 2021, just 3 days before the owner of the registration could have first filed a Declaration of Incontestability. Had this not been done, the owner of the Disputed Mark could have potentially obtained “incontestability” status of its registration, but the TTAB cancellation proceeding prevented it as an incontestability declaration requires that no proceedings questioning the registration rights are pending at the time of making such declaration.
The TTAB cancellation proceeding was suspended in December 2022 with GNR’s filing of the federal lawsuit in California. The federal lawsuit can provide much more relief, such as monetary damages awards and injunctive relief, while the TTAB cancellation proceeding only seeks cancellation of trademark registration rights.
It is important that trademark owners looking to either enforce or defend their rights seek experienced trademark litigation counsel to best identify options and courses of action to take as legal proceedings can become costly quick. Some available options may be better fitting for the specific situation at hand, or the desired end-result.
Key Takeaways on the Guns N’ Roses Trademark Infringement Litigation
The Guns N’ Roses lawsuit against use of the TEXAS GUNS AND ROSES .COM registration highlights some dos and don’ts for avoiding trademark litigation:
Business owners should carefully select their marks before launching a brand;
Trademark owners should protect their marks through vigilant monitoring and enforcement programs to be able to identify and handle issues quickly; and
When infringement claims arise, trademark owners should seek experienced counsel on best options for either enforcement or defense of their marks.
Reference: Guns N’ Roses v. Jersey Village Florist, LLC, Case No. 2:22-cv-08728
For more information about trademark litigation, see our Intellectual Property Litigation and Industry Focused Legal Solutions pages.