Gene Simmons Locks Horns with the University of Texas and Rock n’ Roll Fans Over Trademark Application

What does famed lead singer Gene Simmons of Kiss have in common with the University of Texas and American Sign Language? All three use some version of the hand gesture featuring a raised pinky and forefinger with the thumb strategically placed outwards or inwards to convey a message. In the eyes of rock star Gene Simmons, not all hand symbols are equal. On June 9, 2017, Simmons filed a trademark application with the U.S. Patent and Trademark Office (USPTO) for what many of his concert goers call the “devil horns” (or simply “the horns”), alleging a date of first use as November 14, 1974.^[1]

The application Simmons filed was for a “hand gesture with the index and small fingers extended upward and the thumb extended perpendicular” as a Class 41 trademark, which is reserved for educational and entertainment services rendered by persons or institutions that are intended to entertain or to engage attention.^[2] Simmons filed his trademark application exclusively for use in conjunction with his live performances and celebrity appearances.^[3] If the application is granted, it will give Simmons the sole right to use the gesture during his performances and celebrity appearances and would afford him legal protection against acts of infringement, such as other performers using the symbol during their concerts and any damages that might occur to his brand’s reputation.

The hand symbol, which can be seen on the cover of Kiss’ 1977 album Love Gun, is widely used among fans and musicians in association with not only the Kiss band but the rock n’ roll genre more generally. The rock n’ roll salute has been ubiquitously used by a wide spectrum of musicians, including John Lennon of The Beatles, Ronnie James Dio of Black Sabbath, and Ozzy Osbourne.^[4] Notably, Simmons filed the application in his personal name, as an individual, and not as part of Kiss or a shell company.^[5] In filing his trademark application, Simmons claimed that consumers uniquely identify the hand gesture as a signifier of Gene Simmons’ music performances, a bold claim considering how pervasive the gesture is among generations of rock n’ roll fanatics.

Given the date of first use, Simmons filed the application under Section 1(a) of the Lanham Act based upon use of the mark in commerce.  As is required with a use-based application, Simmons provided a specimen showing the mark’s use in commerce.^[6] The specimen consisted of a picture of Simmons with Dave Grohl (of Foo Fighters and Nirvana) showing Simmons giving the signature sign.^[7] Presumably, the specimen was used to support the personal appearances portion of the recitation of the services.

While seeking to register a hand gesture might seem to be a stretch of the Lanham Act, the reality is that there are many registered trademarks that do not consist of the traditional combination of words, phrases, symbols, or designs. Take, for example, the famous Tiffany blue hue or the NBC chimes — each of these have been registered as marks for their various services because they were able to serve the primary function of a trademark, which is to indicate the origin or source of the product to consumers.^[8]

Trademarking a hand gesture is not without precedent. Wrestling star Diamond Dallas Page successfully trademarked the “Diamond Cutter” hand gesture, and sued electronic duo 3OH!3 in 2010 for making a similar gesture in a photo shoot. The case was settled, but it demonstrates that hand gestures are not outside of the realm of potential trademark eligibility.^[9] Of course, hand gestures are also ubiquitous, some having been used for thousands of years by countless individuals and groups. Some of those uses are naturally more well-known than others. The degree to which a gesture’s use is distinctive and recognizable could play a significant role in the success of any trademark registration.

Claiming a trademark over such an iconic and universally recognized gesture is bound to cause some legal friction. The University of Texas at Austin (UT), home of the famous “hook ’em” hand gesture, warned Simmons regarding his attempt to register the “rock on” hand gesture.^[10] While the “hook ’em” gesture features a different placement of the thumb — over the two middle fingers that are folded over rather than out to the side — the gesture is nevertheless incredibly popular and also protected by a trademark registration.^[11] UT has obtained at least one trademark registration at the USPTO for the hand gesture as used on t-shirts and decals (but not entertainment services). Had Simmons’ application made it through the attorney examiner gauntlet and emerged on the side of publication, it could have been subjected to a formal opposition filed by UT, claiming that Simmons’ mark is confusingly similar. ^[12] UT has history on its side: the use of the “hook ’em” hand sign has been documented as early as 1955 — well in advance of Simmons’ first use date of 1974.^[13] Then again, Simmons could have pointed out that the UT hand gesture is different based on the placement of the thumb. It would not be the first time that a thumb has been the deciding factor in a disagreement.

Another potential obstacle that Simmons may not have considered is that his “rock on” hand gesture is also a common and widely used sign in American Sign Language. It is perhaps one of the most used signs and was turned into an official emoji in 2015. ^[14] Of course, a language has no standing to bring an opposition to a trademark, however, at the very least, it could raise difficult questions about private ownership of a common sign for the deaf. Had Simmons succeeded in securing a registration, it might have raised the interesting question of his ability to sue a deaf performer for using the “love” symbol during a musical performance.

Gene Simmons is undoubtedly associated with the rock-on hand symbol, but various news outlets reporting on the application have noted that his use of the gesture may not have been the first. The Beatles co-founder John Lennon used the “horns” on the cover of the 1969 album Yellow Submarine and it is frequently used by Marvel’s Spider-Man throughout the hundreds of issues of Amazing Spider Man comics.^[15]

While depictions of hand gestures are not unusual fodder for trademark applications, actual hand gestures tend to be quite rare. This could be a function of the fact that there are only a finite number of hand gestures that can be made, given the limitation of ten digits and two hands. There are only so many combinations of fingers and hands that can be put together, let alone those that are one-handed. Even Spock’s famous Vulcan salute came from Leonard Nimoy’s exposure to Orthodox Judaism, which was used by the Kohanim to bless the attendants to High Holiday services.^[16] In other words, hand gestures have been one of the earlier forms of communication and in some cases, the most limited.

Simmons boasts a significant trademark portfolio comprised of at least 198 marks across various global jurisdictions that are associated with the Gene Simmons Company. ^[17] While Simmons has a long track record of consistently using the “rock on” hand gesture, he may still be up against the longer arc of hand gesture history in his attempt to immortalize, or at least monetize, his famous three-finger salute. From fellow musicians to the broader public, Simmons’ application was received with widespread criticism as an overreach of intellectual property privileges. To many, the application was viewed as an abuse of current trademark law that laid claim to something that couldn’t rightfully be owned by one person. In this instance, many people saw Simmons’ exercise of intellectual property as a means to repress the work or freedom of others — particularly musicians — while aiming to profit from something that wasn’t rightfully his.

It is possible that Simmons was not seriously trying to file a trademark application, but rather creating a PR stunt to capture the attention of news outlets.^[18] Regardless of Simmons’ impetus for filing the application, less than two weeks later Simmons reconsidered his claim to the hand sign and expressly abandoned the application with the USPTO on June 20, 2017.^[19]

Gene Simmons’ latest attempt at a trademark application illustrates the tenuous relationship between intellectual property law and the broader public’s understanding of this legal field. Many of the application’s critics did not fully understand that Simmons wouldn’t be granted sole ownership of the hand gesture in all its uses, nor did they grasp that the application was likely to fail upon examination given its immense opposition, pervasive use and opaque origins. In either circumstance, a lack of knowledge fueled a negative image of the practice of intellectual property and contributed to a growing skepticism around its purpose and usefulness. This kind of stigma associated with the practice of intellectual property is damaging to the field’s reputation and deprives it of its important function of protecting and encouraging innovation.

Lastly, this scenario demonstrates the role that the public can have in pushing back against individuals or corporations that overreach in their use of intellectual property law. There is no doubt that the practice of intellectual property provides order and stability to the competitive global marketplace by protecting intangible assets like a business’ brand. Intellectual property helps consumers identify the source of a good/service, and also protects and encourages innovation, but it can also be abused if it is used to intimidate and discourage competition.^[20] In this circumstance, the public and fellow musicians shamed Gene Simmons for his attempt to monopolize such a universally adored and used symbol. There is no way of knowing Simmons’ real intent of his trademark application, but it is plausible to assume that he was unaware of the widespread criticism, which could have deterred him from further pursuing the trademark and might have swayed him to abandon it all together. Even if Simmons’ application was a PR drill, the criticism effectively prevented it from continuing.

Whether Gene Simmons was serious about his application or it was an elaborate PR stunt, at the very least he has rekindled the debate on whether one individual can claim sole dominion over a symbol that many others have come to adopt as their own. Furthermore, this application sheds light on the great need for public discussion and education regarding the benefits, the limitations and the tradeoffs of the practice of intellectual property law and what role the public can have in shaping its use.

This blog post is authored by a guest contributor to the Blog @ Fordham IPLJ.