A Californian judge has dismissed a trademark infringement lawsuit filed by Guns N Roses against a retailer which operates as Texas Guns And Roses. Which is a shop that sells, well, guns and roses. In Texas. Actually, the location of the shop is key because the trademark action has been dismissed on jurisdiction grounds.
In a lawsuit last year, the band argued that the gun seller’s trading name was “confusingly similar” to their name, and that confusion was causing “irreparable damage” to their brand. All of which, they reckoned, constituted infringement of the Guns N Roses trademark.
The “irreparable damage” was partly because the band simply don’t want to be associated with the sale of guns. But also because the website for the Guns And Roses shop had a section commenting on news stories relating to the US Second Amendment and gun control debates, which included “political views related to the regulation and control of firearms and weapons … that may be polarising to many US consumers”.
Texas Guns And Roses actually successfully registered its own trademark back in 2016. In their lawsuit, the band confirmed that they had been seeking to have that trademark cancelled while also sending various cease and desist letters to the gun store.
But with Texas Guns And Roses still selling both guns and roses under that name, they felt they needed to go the litigation route to protect their band name.
However, were the Californian courts the right place to file a lawsuit against a retailer that operates solely in Texas? No. The owner of Texas Guns And Roses filed a motion for dismissal on jurisdiction grounds last month and earlier this week the judge granted that motion.
“Defendant does not own any buildings or operate any physical stores in the state of California”, the judge wrote, “has never been licensed or registered to conduct business in the state of California, [and] has never employed anyone residing in the state of California”.
Also, it “does not maintain any California-based bank accounts within the state of California, has never directed any advertisements to the state of California, and does not knowingly work with vendors residing or conducting business in California”.
And while the shop does also sell gun stuff online, “notably, none of defendant’s sales through [its] website or in conjunction with the Texas Guns And Roses marks have been made to any residents or customers located in the state of California”.
The retailer’s website does, however, identify which guns it is selling are ‘California compliant’ or ‘California legal’, ie they comply with gun laws in that state. But, the judge added, that doesn’t constitute the Texas shop actively selling or marketing its products to customers in California.
Listing firearms as ‘California compliant’ or ‘California legal’ “is simply a factual statement about the qualities of the product, and the court concludes that such a statement does not, without more, indicate that defendant had the intent or purpose to serve the California market”.
So, with all that in mind, the judge dismissed the band’s lawsuit. Meaning – future legal filings pending – Texas Guns And Roses can carry on selling both guns and roses as Texas Guns And Roses to its customers in Texas.