Earlier this month, Chrome Hearts, the luxury goods retailer known for jewelry and apparel sued musician Neil Young and the individual members of the band Young has been touring with for the last year, The Chrome Hearts, for trademark infringement. The suit was filed in a California federal court. Chrome Hearts alleges that use of The Chrome Hearts as the name of the legendary rocker’s backing band leads to consumer confusion. The luxury brand company fears that the public can be confused into believing that that it is in some way associated with or may be partners in some marketing or licensing arrangement with the rock band. In its complaint, Chrome Hearts asserts that use of CHROME HEARTS® dates back to 1991.
While trademark law allows for similar (or in this case, identical marks) to co-exist for unrelated goods, this case will test whether rock music (falling under International Class 41 for trademark purposes) and apparel and jewelry (in Classes 14 and 25) are related for purposes of likelihood of confusion or even . . . infringement.
In In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 U.S.P.Q. 563, 567 (C.C.P.A. 1973).), the seminal case which developed the template for analyzing likelihood of trademark confusion between similar marks, the Court of Customs and Patent appeals laid out the following factors:
- Similarity or dissimilarity of marks
- Nature of the goods and services
- Trade channels used
- Purchasing conditions
- Fame of the existing mark
- Similar marks with similar goods
- Actual confusion between the marks
- Length and conditions of concurrent use without confusion
- Variety of goods and services associated with the marks
- Market interface
- Applicant’s right to exclude others
- Extent of potential confusion
- Other established facts
In testing for likelihood of confusion, the evidentiary considerations set forth in duPont, when of record, must be applied. Id. 476 F.2d at 1361, 177 USPQ at 567
As trademark cases are all different, the facts of each case must be considered on their own.
[T]rademark law must necessarily be flexible responding to particular circumstances disclosed by particular fact situations thereby making a hard and fast rule in these cases anathema to its concept and application. That is, this is contrary to the principle of trademark law that each case must be decided on the basis of all relevant facts which include the marks and the goods as well as the marketing environment in which a purchaser normally encounters them and the experience generated as a result of their use in the marketplace provided such use has been of sufficient length and depth to make an impact on the market. Interstate Brands Corporation v. Celestial Seasonings, Inc. 196 U.S.P.Q 321, 324 (TTAB 1977)(emphasis added)
Moreover, all of the above factors are not relevant to every unique set of facts a case may present.
That much being said, is the music of a rock band on tour to promote Neil Young’s new album confusingly similar to high end clothing and jewelry? Are the same fans purchasing beer or soda at a concert venue those that purchase CHROME HEARTS® pendants and perfume? Has anyone who recently purchased a CHROME HEARTS® hoodie actually been confused into thinking that the NYTCH (Neil Young The Chrome Hearts) hoodie purchased at recent performance is a product licensed by Chrome Hearts? Is there any overlap between Neil Young fans and collectors of Chrome Hearts leather bags?
As for a further complication, in 1976, the Stills-Young Band (Stephen Stills and Neil Young) released the studio album, Long May You Run, with the following lyrics in the title song:
Long may you run
Long may you run
Although these changes have come
With your chrome heart shining in the sun
Long may you run
Long May You Run was released long before Chrome Hearts began selling jewelry. Should Young be precluded from using his own song lyric? Does long use in a well-known song lyric constitute prior common law use?
Does Young’s use of Chrome as his band name tarnish the Chrome in Chrome Hearts? This remains to be seen.
This is a case to monitor for those counseling clients considering adopting a trademark similar to another’s mark in an arguably, unrelated field.
Full Disclosure – the author is a tremendous Neil Young fan.
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