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Black Flag Members Can Tour With Similar Name

(CN) - Former members of hardcore punk band Black Flag can continue touring under the name "Flag" for now and use a four-bar logo that bears some similarity to the Black Flag logo, a federal judge ruled.

Black Flag member Gregory Ginn, along with SST Records, sued his ex-bandmates this past summer, seeking an injunction preventing them from using the band's logo to promote their concerts and sell merchandise.

U.S. District Judge Dean Pregerson refused to issue the injunction, finding that the former bandmates' new band name and logo are not similar enough to Black Flag and its logo to likely cause confusion among consumers.

Ginn and defendants Keith Morris and Gary McDaniel, also known as Chuck Dukowski, played their first paid show under the name "Black Flag" in 1979. During the next seven years, the band saw members come and go, including defendants Dennis Cadena, William Stevenson, and Henry Garfield, who played under the names Dez Cadena, Bill Stevenson and Henry Rollins.

The band adopted a logo that became very well-known, consisting of four uneven black bars that simulated a waving flag. SST sells clothing bearing the logo.

By 1986, the only remaining members of Black Flag were Ginn and Rollins, and the band broke up. No one performed under the name Black Flag until 2003, when Ginn and defendant Cadena played three reunion shows in Southern California.

Eight years later, defendants Stevenson, Morris, Dukowski and Stephen Egerton, who is not a former member, performed one show as Black Flag. They decided in 2012 to form "Flag," which they envisioned as a "Black Flag tribute band."

Rollins is the only defendant who is not a member of Flag. However, Rollins and Morris filed trademark applications in 2012 for the name Black Flag and for the band's logo, which the trademark office has yet to act on.

Flag publicly announced at the beginning of this year that it would begin touring, and it began spreading promotional materials stating the band's name, as well as the words, "Featuring Original Members Keith Morris, Chuck Dukowski, Bill Stevenson, and Dez Cadena, with Stephen Egerton, Performing the Music of Black Flag."

Flag's logo, which appeared on its promotional materials, is comprised of four evenly spaced black bars in a straight line.

Two weeks after Flag's announcement, Ginn revealed that he would be touring as Black Flag, which he did in the United States through September of this year. Flag expects to wrap up its 2013 tour in early November.

Ginn and SST filed their suit in August, alleging trademark infringement, unfair competition, and breach of contract. They also sought a preliminary injunction preventing the former band members from using the name Black Flag or the logo, which Judge Pregerson denied in a nine-page ruling last week.

Ginn and SST are not the registered owners of the Black Flag name or the logo and failed to demonstrate a protectable interest in either, as the marks have seemingly been allowed to fall into generic use, he wrote.

"Several manufacturers, for example, appear to have been distributing unlicensed merchandise featuring the logo since at least 2009, without any action from plaintiffs. Indeed, a Japanese company's registration of the Black Flag mark in 2008 elicited no response from plaintiffs. Nor, in the years following the band's dispersal in 1986, did plaintiffs take any action to maintain the distinctiveness of the marks," Pregerson said.

Additionally, the judge held Ginn and SST failed to show that the Black Flag marks and Flag's marks are particularly similar. Although the black bars and word "Flag" may bear some visual similarity to the Black Flag marks, the explanatory and accurate language, "Featuring Original Members Keith Morris, Chuck Dukowski, Bill Stevenson, and Dez Cadena, with Stephen Egerton, Performing the Music of Black Flag," distinguishes the marks, he said.

Pregerson also pointed out that, "given plaintiffs' dissociation from the marks for the better part of three decades, plaintiffs' argument that defendants' selection of the Flag marks was in bad faith is not persuasive. Aside from three shows in 2003, Ginn did not claim any connection to the Black Flag and Logo marks until after Flag announced its tour plans in 2013.

"Even if it is ultimately determined that SST owns the marks, defendants have presented at least a colorable argument, and certainly some evidence of a good faith belief, that they, through some iteration of a partnership, own or owned the marks," Pregerson wrote.

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