Musician sues brewery for trademark infringement. GUNS N’ ROSES v. CANARCHY

A trademark something that a company uses to brand products it sells. Traditionally a trademark is though of as a symbol, word or short phrase, but anything that a company uses to distinguish its products from competitors products can be eligible for trademark protection. In the United States a trademark can be registered with the United States Patent and Trademark Office to strength the rights associated with a trademark, however registration is not required for a company to claim a trademark. The first company to use a trademark to brand goods is considered the senior user of a trademark, subsequent users of the trademark are considered junior users. United States trademark law gives the senior user of a trademark priority over junior users, even if the junior user registers a trademark.

The key to the strength of a trademark is the association consumers make between a trademark and the source of a product. If a junior trademark user brands products in a way that is likely to lead to consumer confusion as to the producer of a product, that can be considered trademark infringement. A trademark owner can file a lawsuit to stop trademark infringement with an injunction, and get monetary damages for trademark infringement which has occurred.

When a court is presented with a trademark infringement lawsuit, the court will review several factors to determine whether there is likelihood of confusion between the plaintiff’s and defendant’s trademarks. These factors were first articulated in Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961), and are refereed to as the Polaroid factors. Because the Polaroid factors are based on court precedent, each federal circuit in the United States can have a slightly different interpretation of what constitutes a likelihood of confusion, however the factors are essentially the same. Those factors are: 1) Strength of the senior user’s trademark, 2) Similarity of the trademarks, 3) Similarity of the products or services, 4) Likelihood that the senior user will bridge the gap, 5) The junior user’s intent in adopting the mark, 6) Evidence of actual confusion, 7) Sophistication of the buyers, 8) Quality of the junior user’s products or services, 9) related products and services.

A case which illustrates a trademark dispute between two companies in completely different industries is GUNS N’ ROSES v. CANARCHY CRAFT BREWERY COLLECTIVE LLC, 2:19-cv-04052 (C.D.CA 2019). The plaintiff in this case is a rock band that was formed in 1984. The band is internationally known and has sold several hundred million copies of its records. The band has won several major music awards and has had extensive press coverage. The band has registered it’s name as a trademark in several classes of goods including, music, entertainment and clothing. The band brings in considerable royalties from licensing the trademark GUNS N’ ROSES.

The defendant in this case is a brewery that sells beer and clothing branded with the trademark GUNS ‘N’ ROSE. In August 2018 the defendant attempted to register GUNS ‘N’ ROSE as a trademark for beer. The plaintiff contacted the defendant shortly thereafter and asked the defendant to abandon the trademark application because it would be confusingly similar to the plaintiff’s trademark. In March 2019 the plaintiff filed a opposition proceeding with the Trademark Trial and Appeal Board of the United States Patent and Trademark Office. In May 2019 the defendant filed a notice of abandonment for the trademark application, however the defendant refused to stop selling the products bearing the GUNS ‘N’ ROSE trademark until 2020.

The plaintiff filed a trademark infringement lawsuit against the defendant in May 2019. The plaintiff alleges that there is actual consumer confusion because some social media users have posted pictures of the defendant’s beer with captions that the consumer thinks the plaintiff has some connection to the beer.

The plaintiff makes a strong case. The defendant’s abandonment of the trademark application signals that they do not believe they have a strong case. It is likely that this case will settle quickly.

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