Guns N’ Roses was initially founded in 1984 by Tracii Guns and Axl Rose when they combined the names of their respective bands, “LA Guns” and “Hollywood Rose,” to form “Guns N’ Roses.” Since its inception, the metal band has achieved national and international renown as one of the greatest, and most commercially and critically successful, bands of all time. In particular, the band has sold millions of records, received billions of views of its music videos on YouTube, and experienced sold-out tours. As one example, the band’s debut album, Appetite for Destruction, is the best-selling debut album of all time in the United States.
As is common with musicians and other artists, Guns N’ Roses has also branded merchandise, including t-shirts, hats, patches, stickers, buttons, bandannas, wine glasses, shot glasses, beer “koozies” and pint glasses. To protect this merchandise and the band’s brand, Guns N’ Roses is the owner of three incontestable federal trademark registrations of the mark GUNS N’ ROSES. These marks are in International Class 9 for “prerecorded video and audio tapes, prerecorded phonograph records and prerecorded compact discs all featuring music,” International Class 41 for “entertainment services; namely, performances by a musical group,” and International Class 25 for “clothing, namely, t-shirts, shirts, hats, caps, bandannas, sweatpants, and thermal shirts.”
Upon discovering that Oskar Blues Brewery had begun offering for sale and selling craft beer under the mark GUNS ‘N’ ROSE in canned and keg form, as well as, various merchandise bearing the same, including hats, t-shirts, pint glasses, stickers, buttons, and bandannas, the business manager of Guns N’ Roses reached out to the beer company. Despite the manager’s offer to resolve the dispute short of escalating the matter to legal counsel, the brewing company rejected the band’s claims. Following this discussion, a formal letter was sent on behalf of the band, again requesting that Oskar Blues cease its unauthorized use of the Guns ‘N’ Rosé mark and abandon its trademark application for the same. Multiple letters were transmitted between the parties and ultimately, the brewery indicated its intention to continue selling and marketing the Guns ‘N’ Rosé beer, clothing, and other products through March 2020. As such, Guns N’ Roses initiated the present lawsuit against Oskar Blues, claiming trademark infringement, false designation of origin, trademark dilution, unfair competition, and misappropriation of right of publicity.
To be successful on its trademark infringement claims, Guns N’ Roses will need to demonstrate that it has valid and subsisting trademark rights in and to “Guns N’ Roses” and that Oskar Blues Brewery is utilizing a mark that is confusingly similar thereto. More specifically, Oskar Blues’ use of “Guns ‘N’ Rosé” must be in a manner that is likely to cause confusion with respect to the source and origin of its rosé ale and is likely to cause confusion or mistake and to deceive purchasers as to the band’s affiliation, connection, or association with, or approval or sponsorship of, Oskar Blues, its business, and/or the disputed rosé ale.
In addition to its manufacturing and offering for sale of the accused beer, the brewery filed an application to register “Guns ‘N’ Rosé” as a trademark last August. In response, the band filed an opposition proceeding with the Trademark Trial and Appeal Board in March of this year. An opposition proceeding involves the United States Patent and Trademark Office, and not the courts, with the ultimate goal of defeating registration of a mark. Indeed, oppositions challenge pending trademark applications.
Prior to answering the notice of opposition, Oskar Blues Brewery withdrew its application for registration of “Guns ‘N’ Rosé.” Per trademark rules, since Oskar Blues Brewery filed this abandonment without the written consent of the band, judgment necessarily had to be entered against it, thereby sustaining the opposition and refusing registration of “Guns ‘N’ Rosé.” Typically, a refusal in this way is “with prejudice,” that is, the beer company cannot later attempt to gain registration of its “Guns ‘N’ Rosé” mark.
Despite the brewing company’s abandonment of its trademark application, in its district court lawsuit, the band is still requesting that it stop making and selling the pink ale, and deliver to them for destruction any merchandise or promotional material bearing the mark. The rationale is that merely because Oskar Blues abandoned the trademark application, it has not agreed to cease sales and marketing of the infringing beer. Of course, the band also seeks compensatory and punitive damages.