Last month, the Guns N’ Roses rock band sued Jersey Village Florist, LLC over its website, TexasGunsandRoses.com, which sells—you guessed it—guns and roses, as well as gun accessories, knives, binoculars, body armor, and other equipment and supplies related to hunting and shooting.
Jersey Village Florist registered the TEXAS GUNS AND ROSES.COM logo, consisting of a white star on a blue square to the left of the words “TEXAS GUNS” in blue above the words “AND ROSES .COM” in red, in 2016.
Guns N’ Roses claims that Jersey Village Florist’s use of the TEXAS GUNS AND ROSES.COM mark infringes the GUNS N’ ROSES mark because it’s likely to cause confusion with the GUNS N’ ROSES mark.
The band also alleges that the TEXAS GUNS AND ROSES.COM mark dilutes its own mark and falsely suggests a connection with the band.
Although Jersey Village Florist now sells a few varieties of rose bouquets in addition to its shooting, hunting, and survival products, its registration does not cover roses.
Rather, when it registered the mark, it said the mark was for “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.”
While it’s possible that Jersey Village Florist may ultimately win the lawsuit, litigating this dispute will still be expensive and time-consuming.
To help avoid problems like this when you choose a trademark for your product or service, obtain the opinion of an experienced trademark lawyer before concluding that your mark is non-infringing.
Choosing a trademark is probably a lot more difficult than you think. People often believe that if they aren’t aware of anyone else using the same trademark, it’s okay. They may rely on a quick search of the US Patent and Trademark Office database for the exact mark.
One problem with relying on a search like this is that a mark is protected by trademark law whether or not it is registered. In addition, a trademark doesn’t have to be identical to another mark in order to be found infringing.
The test for infringement is whether the marks are confusingly similar. This is determined not just by comparing the marks themselves, but by reviewing various other factors, including the types of goods or services and the channels of sale.
Anyone choosing a new trademark should have a thorough trademark search conducted, covering not only the US Patent & Trademark Office’s registrations, but other databases and the Internet.
It would also be prudent to check the Canadian and Mexican registrations, as well as those of other pertinent foreign jurisdictions, particularly if you use your mark online.
Please feel free to contact us if you have any questions about or need assistance with conducting a trademark search or protecting your trademarks.
Photo by Bence Balla-Schottner on Unsplash
