Rock'n’roll and a hard place: Can Kelly Van Halen register her name as a trade mark?

Kelly Van Halen

There may be just a few topics (of conversation) that are more enticing than trade marks and names. This is why the IPKat is happy to host a guest contribution from young IP enthusiast Dorothea Thompson (Davenport Lyons), who reports on a recent story from the US involving names, trade marks and hard rock.

Here’s what Dorothea writes:

“The music industry has proved fertile ground for IP disputes of late, but the lion’s share has focused not on copyright, but on trade marks, reputation, likeness and passing off (eg here and here). And so the trend continues, with the civil action brought against Kelly Van Halen by ELVH, Inc., the California IP holding company of the rock band VAN HALEN.

In a bygone era of hair and guitar solos (1984), Kelly Carter married Alex Van Halen, the drummer in the eponymous rock band, at the peak of their commercial success. Miss Carter became Mrs Van Halen, and continued as such following the couple's divorce some twelve years and two children later.

In January 2011, Ms Van Halen filed four trade mark applications at the USPTO:

- KVH in Classes 24 and 25;

- KVH in Classes 37 and 42;

- KELLYVANHALEN in Classes 20, 24 and 25; and

- KELLYVANHALEN in Classes 37 and 42.

Alex Van Halen

The goods and services included furniture items, blankets, clothing items, construction, and interior design services. This list becomes more coherent considering Ms Van Halen’s experience as a real estate developer, house flipper, and interior designer, apparently appealing to the US equivalent of the yummy mummy crowd.

The KVH service mark was abandoned, while the KVH trade mark was registered 2011. The KELLYVANHALEN applications, however, remain pending, subject to opposition by ELVH, Inc. On 18 October 2013, ELVH filed a motion to suspend the opposition proceedings, in view of a civil action filed in Los Angeles federal court on 10 October.

The Complaint provides a belt-and-braces eight count claim against Ms Van Halen, alleging trade mark infringement, dilution, false designation, and unfair competition in relation to use of KELLYVANHALEN for the specified goods in Classes 20, 24 and 25, and requesting a declaration in relation to future use for the Classes 37 and 42 services applied for. ELVH cites four registrations for VAN HALEN, covering goods and services in Classes 15 (musical instruments), 16 (paper goods), 19 (sound and video recordings), 25 (clothing), and 41 (entertainment services).

Eddie Van Halen

Regarding infringement, the Complaint contends that the Defendant's apparel, blankets and other fashion accessories, are “either identical or closely related to the goods sold by Plaintiff or represent a natural zone of expansion for Plaintiff and such goods would travel and be promoted through the same channels of trade for sale to, and use by, the same class of purchasers”. This does not appear to address the Class 20 furniture items, however; and the claims relating to construction and interior design services provide somewhat more of an imaginative stretch.

Is it really possible to argue that Kelly Van Halen’s goods and services are within the realms of the band’s merchandising potential? Maybe, especially in a world where man-band Hanson offer Mmmhops beer, rapper 50 Cent got rich sellin’ bottled water, and dance producer Deadmau5 provides headphones for cats. These are artists of the new school, the land of brands, in which few music videos go by without a branded smartphone - everything is product placement, and music consumers know it.  But products such as the Kiss Kasket, and the Slayer Christmas jumper, show even the ‘classic acts’ are in on it.

Even if furniture, construction and interior design could be contemplated as VAN HALEN-authorised merch, would Ms Van Halen’s offering really cause the required confusion?  Even for grown up rock chicks, is KELLYVANHALEN in pastels likely to create anything more than a passing recollection of the hard rocking band (with whom, it may be remembered, she was legitimately associated)?

Merpel Van Halen

Ms Van Halen may be inclined to argue that her mark is her actual, legal name (it is), and therefore she should have a right to use it in commerce. Indeed surnames are treated differently by the Office: a mark may be refused if it “consists of or comprises a name ... identifying a particular living individual except by his written consent...” (US Trademark Act §1052(c)), or is "primarily merely a surname" (s 2(e)(4) of the Lanham Act), the reasoning being that people should be free to use their own name in commerce - in the same way that descriptive terms should be free for competitors’ use. In particular, the rarity of the VAN HALEN surname might suggest some recourse, given the minimal (single figure) results for Van Halen on Whitepages, for example. However, the Office also takes into account use in media or publicity, such that a rare surname appearing in the news may nonetheless be recognised as merely a surname by the general public. Does the ubiquity of the VAN HALEN name, and the family ties of the band, mean that it functions primarily as a surname, rather than a trade mark?  Raising this would wholly undermine Ms Van Halen’s applications.

Any rights in one’s name do not overcome a conflict with prior rights of another: “use of one's surname is not a ‘defense’ to a trademark infringement action” Sardi's Restaurant Corp. v. Sardie. The existence of an “own name defence” has been sometimes regarded as a myth. These marks function like any other – and must be assessed on the basis of likelihood of confusion under s. 2(d) of the Lanham Act - regardless of their nominative meaning. 

Why does the law treat surnames differently in terms of registrability, but not when it comes to conflicting marks?  Despite having been –Van Halen for nearly thirty years, it seems Ms Van Halen may find herself somewhere between rock n’ roll and a hard place.”