As a kid growing up in the 1990s, Nirvana (and grunge music in general) felt ever-present. I still distinctly remember playing GoldenEye 007 on the Nintendo 64 with my older brother, listening to Pearl Jam. And, once I got my first guitar, I quickly learned the intro to “Smells Like Teen Spirit” as one of my first songs. In pop culture, despite Kurt Cobain’s tragic death, Nirvana managed to remain relevant for future generations. In particular, Nirvana’s classic smiley face logo still appears on licensed clothing, such as t-shirts. Over 20 years later (that’s a tough sentence to write), Nirvana faces a battle for the exclusive rights to its smiley face trademark.
In the 1990s, designer Marc Jacobs created a grunge collection to try to capture the mood of the decade. While the collection largely failed, Jacobs attained enough fame to re-release the collection in 2018. One piece in the collection looks substantially similar to the Nirvana smiley face logo; however, the term HEAVEN replaces the original NIRVANA portion of the logo. In addition, the x’s on the logos eyes became an M and a J in the Marc Jacobs version. Somehow, these t-shirts retailed for over $100, which is decidedly anti-grunge.
Nirvana’s licensing entity, Nirvana LLC, immediately took action. Not only did Nirvana sue Jacobs for copyright infringement, the company filed a trademark application for the smiley face logo as well. This allowed Nirvana to allege federal trademark infringement as well; however, since the band waited so long to file a trademark, they had to hope that the registration issued.
The benefits of an early trademark filing
Now, Nirvana faces a battle for the smiley face trademark. Marc Jacobs caught the trademark before it registered, filing an opposition claiming ornamental use. The Trademark Office already rejected the mark for ornamental use, requiring an updated specimen, which Nirvana provided. While reversing course through the TTAB does not appear likely, Nirvana put itself in a tough position by waiting to file the trademark. Now, Nirvana requested suspension of the TTAB proceeding in light of a California district court case between the parties. Nirvana must take its chances in the California court to solidify its rights in the smiley face trademark, which could have been avoided.
For the trademark, the logo can still infringe if it creates a false sense of origin. For example, a consumer could look at the Marc Jacobs example and assume a relationship with Nirvana. If that relationship does not exist, it can violate trademark laws.
The TTAB proceeding is currently on hold, pending a decision in the Central District of California.
During the opposition, the trademark remains in limbo at the Trademark Office, without registering until the case terminates. If the opposition is successful, the trademark will not ultimately register.