The Hollywood Reporter
Eriq Gardner
January 9, 2015
Nearly two decades after Kelly Van Halen divorced drummer Alex Van Halen, she's free to continue to use her famous last name on designer merchandise. All it took was three years of fighting at the U.S. Trademark Office and another 15 months in a California federal courtroom. On Monday, attorneys for both Van Halen parties informed a judge that a lawsuit filed in October 2013 should be dismissed. The Hollywood Reporter has confirmed that the dispute has been settled.
After divorcing from Alex, Kelly Van Halen named her construction and interior design company after herself and attempted to register a trademark on her own name for products like chairs, children's blankets, bathing suits, building construction, interior design services and more.
In its legal papers, ELVH Inc. — the intellectual property holding company of the rock band — claimed that her trademarks were confusingly similar to their own and that she was diluting Van Halen, passing off Van Halen and committing unfair competition for Van Halen.
In a case statement presented to the court last March, the parties wrote that "the questions for the jury are whether the use of KELLY VAN HALEN for certain kinds of apparel products will confuse consumers with the rock band VAN HALEN. The jury will also be asked to consider whether the mark VAN HALEN is famous and if so, whether the Defendant's use of her own name as a trademark will somehow tarnish or blur the alleged distinctiveness of Plaintiff's mark."
But the case won't get to jury.
Jeffrey Cohen, attorney for ELVH, says the case has been "amicably resolved."
Daniel DeCarlos, attorney for Kelly Van Halen, offers more details about the deal to end the case. He tells THR that she can use her full name for her businesses, but has agreed to stay away from any music-related services that might tread upon the band's ground. Additionally, says DeCarlos, "What she is going to do is to use Kelly Van Halen with another word like 'Designer Originals by Kelly Van Halen.'"
Doing so will hopefully avoid any consumer confusion. Kelly Van Halen's website thus survives — the second piece of good news for her in recent weeks after a California appeals court revived her lawsuit over a school she discovered to be controlled by Christian Scientists who might have taken her kid's nut allergy not seriously enough.
While this "Van Halen" name lawsuit is settled, it offers no legal guidance in similar situations. The issue of whether senior family name users can permanently enjoin junior family name users from using their name in a commercial enterprise will have to wait for another day.
Though as we pointed out in our original story, the U.S. Supreme Court once ruled, "A man's name is his own property, and he has the same right to its use and enjoyment as he has to that of any other species of property. If such use be a reasonable, honest, and fair exercise of such right, he is no more liable for the incidental damage he may do a rival in trade than he would be for injury to his neighbor's property by the smoke issuing from his chimney, or for the fall of his neighbor's house by reason of necessary excavations upon his own land."
The Van Halen settlement puts an end to the second big intellectual property family dispute in the entertainment industry in the past month. The other was Smokey Robinson's settlement with his ex-wife over terminated song rights.
Until the next odd intellectual property dispute... Halen Vans, anyone?
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Originally Posted by Diamondjimi
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