Since I’m a huge metalhead as well as an IP lawyer, a lot of people have been asking me what I think about Gene Simmons trying to register a particular hand gesture (which looks similar to the hand sign of the horns used in metal culture) as a trademark. If he gets his way, metal and non-metal artists alike would no longer be able to use that gesture–and arguably the horns themselves due to their similarity–from the stage or in pictures at public appearances. Having read his trademark application and having done some research, I’ve outlined below the reasons he won’t succeed in getting the trademark registered.

Introduction

Contrary to news headlines that say he’s trying to register the horns themselves as a trademark, he’s actually trying to register the hand sign for the phrase “I love you” in connection with musical performances and public appearances by a music artist [1]. In his gesture, the thumb is held away from the rest of the hand—unlike a proper display of the horns. However, the two gestures are similar enough to cause a concern among artists and fans who use either one.

Is it even possible for a hand gesture to be a trademark?

Most of the registered trademarks belonging to music artists are band names and band logos. But, things that are not drawn (such as scents, sounds, and flavors) can be trademarks because they can signal the source of a particular good or service to the consumer. For example, the little melody you hear when you turn on certain TVs tells you that particular TV is made by Samsung. I was unable to find any registered trademarks that were hand gestures or physical movements, so the US Patent and Trademark Office (PTO) may treat his application in the same way it treats a slogan or catchphrase; Simmons appears to think the hand gesture functions as one. As we’ll see below, there are multiple reasons that his attempt to register the gesture could be denied– each corresponding to a specific phase in the trademark application process.

-The hand gesture is not distinctive.

In order for a trademark to be registered federally, it has to be distinctive—which means the mark identifies the specific source of particular goods and services. For example, the Megadeth logo on an album cover tells us that the music is from Dave Mustaine since he is that trademark’s owner. Because there don’t appear to be any other registered trademarks that are hand gestures and because the trademark examiner processing the application may be unfamiliar with the hand sign Simmons is trying to claim, they’ll need to do research on the affect the gesture has on consumers.

When they do so, they will find that it’s an extremely common hand sign meaning “I love you”. Not only that, but many, many bands use that and similar hand gestures onstage and at public appearances—including the vast majority of metal bands who use the horns. On seeing that the sign is so ubiquitous that it can’t possibly be distinct in a consumer’s mind, the PTO is likely to deny Simmons’ application during this phase of the application process.

In the alternative, the examiner could (and should) decide that the gesture isn’t even a trademark to begin with because the public perceives it as making a statement–not identifying Simmons as the source of concerts. Just as the t-shirt slogan “I <3 DC” was not a registrable trademark because the public views it as conveying a message [2], the gesture for “I love you” would not be either. That would be like allowing only one person to wave from the stage or in pictures as if to say “hello”.

So in light of all of this, the TM office will probably send Simmons’ lawyer a notice that the application has been refused. Then, if he wants to keep trying to get the registration, he would have to prove that the gesture has come to signify his particular brand of musical performances despite it and similar signs being ubiquitous in live music. This acquired distinctiveness is also known as “secondary meaning”.

-The hand gesture does not have secondary meaning.

Unlike a drawn logo, a hand gesture is not inherently distinctive because it’s not immediately recognizable as connecting goods and services to a specific source. Gene Simmons has the burden of proof to show the PTO that the gesture has become recognizable to the public as indicating that he is the source of particular public appearances and shows.

He seems to think the “I love you” gesture is the equivalent of his catchphrase–given whenever he’s in public as a discernible part of his shows, photo ops, etc. He might therefore argue that just as Jeff Foxworthy’s “you might be a redneck” line is a registrable trademark because it has become distinctly recognizable as part of his comedy routines [3], the hand sign for “I love you” distinguishes his performances and public appearances from those of other artists. Given how common the hand gesture is, he probably won’t be able to prove that consumers perceive it that way and so the PTO would reject his claim again.

In the unlikely event that he somehow manages to convince the PTO of the hand sign’s acquired distinctiveness, the PTO will publish the application in its Official Gazette in order to notify the public that the mark is eligible for registration. At this time, members of the public have an opportunity to notify the PTO as to their reasons that the mark shouldn’t be registered. This process is called “Publication for Opposition”.

-The application will be opposed.

I seriously doubt Simmons’ trademark application will make it this far. But in the event it does, the public will have a period of time (typically 30 days) to oppose the registration of a trademark for that hand sign. Anyone who has a good faith belief that they would be somehow damaged if the application was accepted can notify the PTO of their opposition in writing. Although metal bands don’t often use the “I love you” sign onstage, they would be entitled to oppose the registration because the horns are very similar and are an integral part of metal culture.

In this unlikely scenario, organizations for the deaf–as well as very prominent bands like Metallica–could be the last line of defense against Gene Simmons’ trademark application because they have the resources to potentially contest it all the way to the Trademark Trial and Appeal Board. As we’ve seen above, their grounds for opposition can include the gesture’s failure to function as a trademark, its lack of distinctiveness, and the fact that Simmons is not the rightful owner of it in connection to concerts and public appearances by a music artist.

Conclusion

And so, you can see three of the phases of trademark registration wherein Simmons’ application is likely to fail. If one of these obstacles isn’t what prevents him from registering the hand gesture, another one will be. This transparent publicity stunt will not end up changing anything and his application will be “considered dead”. Horns up.

Note and Citations

[1] The mark has design search codes and the mark drawing code is “design only”, so I initially thought he was just trying to register the drawing as a logo. However, his specimen for use is a picture of him making the gesture himself rather than a drawing shown on a concert banner or other tangible object used to designate that a particular musical appearance is being done by him.

[2] D.C. One Wholesaler, Inc. v. Chien , 120 USPQ2d 1710, 1716 (TTAB 2016). “I <3 DC” logo is not a registrable TM. “Slogans and other terms that are merely informational in nature, or common laudatory phrases or statements that would ordinarily be used in business or in the particular trade or industry, are not registrable…The critical inquiry in determining whether a slogan or term functions as a trademark or service mark is how the proposed mark would be perceived by the relevant public.”

[3] Jeff Foxworthy v. Custom Tees, Inc., 879 F.Supp. 1200 (1995). I would distinguish the Foxworthy case from this situation because Foxworthy’s registrations are narrow (comedy routines, signage, greeting cards, clothing. CDs, comedic calendars and books), whereas Simmons’ application is broad (“entertainment, namely live performances by a musician artist; personal appearances by a musical artist”).