Seattle Trademark Lawyer

This month, Los Angeles-based indie rock band Hazelden received a cease-and-desist letter from the Minnesota-based drug and alcohol treatment center of the same name. The Hazelden Foundation claims the band has infringed and diluted its HAZELDEN family of registered trademarks.

The Hazelden Foundation particularly objects to the “derogatory drug-related, stage named singer, Mary Jane Snow.”

Its cease-and-desist letter states:

“We demand that you immediately cease and desist all use and reference to the registered mark HAZELDEN together with any other derivative names (i.e., Hazeldon, etc.) and acknowledge your willingness to do so within seven days of receipt of this letter.

“Alternatively, should you not cease your infringement of Hazelden Foundation’s mark and acknowledge your willingness to do so, we will bring a Federal District Court action against you under the Federal Lanham Act for trademark and service mark infringement, dilution of Hazelden’s famous mark, the creation of a false affiliation of sponsorship with Hazelden Foundation and disparagement.”

The band, for its part, says it selected its name after World War II test pilot Hedley Hazelden, who crashed several times and lived to tell the tale. However, citing lack of financial resources to defend itself, on March 25 the band offered to change its name once the remaining inventory of its t-shirts and debut album is sold, though no later than the end of the year.

This dispute has been tough on the band. As Ms. Snow put it in the band’s response:

“[C]hanging the name of a band might seem like a simple concept, but really you are asking me to go out of but really you are asking me to go out of business, virtually overnight. [I] come from an extremely poor family, graduated from [N]orthwestern with massive amounts of debt and now for the last two years risked everything for this band by putting over $15,000 on credit cards in an attempt to bring it to market. [A]ll that money went to pay for graphic designers (logo and CD artwork), CDs, website, and overall the initial states of marketing a band — it’s really no different than starting a small business. [I] am truly devastated over this whole situation.”

Think anyone would really confuse a rock band with a treatment center? Doesn’t seem likely. Dilution by blurring or dilution by tarnishment is a closer call, though I can hardly see a nonprofit treatment center believing that suing an upstart band is a good way to spend its money.

Let’s hope the Hazelden Foundation accepts the band’s offer, the band changes its name within the next nine months, and then becomes a huge success.