Judge says 'Daytona Beach Bike Week' is generic, invalidates trademarks

Publish Date: 
Dec 26, 2011
By Holly J. Wagner

'Daytona Beach Bike Week' is too generic to be trademarked, according to a federal judge in Florida, who denied a company's recent petition to trademark the popular motorcycle rally name.

The decision may have implications for ongoing trademark disputes over the Sturgis motorcycle rally in South Dakota.

The ruling is a victory for the Daytona Beach Regional Chamber of Commerce, which sued Joe Cool Inc. and Mettemp Inc. last February after the two companies registered the trademark with the State of Florida and sought license fees for using the term from other rally vendors.

The chamber and Good Sports Inc., parent company of Hot Leathers, sued Joe Cool and Mettemp, seeking to have the state mark invalidated. In a Dec. 19 ruling, Judge Mary S. Scriven found that the state mark was either “fraudulently obtained or improperly granted.”

She based her finding on the plaintiffs’ argument that the term “Daytona Beach Bike Week” has been in general use for at least 70 years, and that consumers do not associate rally goods with any particular vendor. The judge noted that Good Sports has been using the term on rally clothing since 1983, five years before Joe Cool claimed to have exclusive use of the term. She also noted that the chamber has been the only entity empowered to designate rally sponsors since 1988, when the city conferred that authority.

“Daytona Beach Bike Week has been held in Daytona Beach, Fla., for at least 70 years. During that time, innumerable vendors have sold products, including all manner of clothing, bearing the words ‘Daytona Beach Bike Week,’” Scriven wrote. “Because the phrase ‘Daytona Beach Bike Week’ has been used by so many different entities over the past few decades, consumers do not associate the term or phrase with any one source and no one entity has had any control over the use of the phrase ‘Daytona Beach Bike Week’ or the quality of the products on which the phrase was applied. Therefore, the court finds that the phrase ‘Daytona Beach Bike Week’ and its functional equivalents and generic and cannot receive trademark protection.”

Scriven’s ruling was a default judgment, something courts may impose when a party fails to respond to civil allegations or have a representative in court. The judge found that the chamber and Good Sports had been diligent in seeking to serve Joe Cool and Mettemp with court papers, but were unable to find a representative for the company.

She also granted an order invalidating the state mark and forbidding Joe Cool and Mettemp from asserting trademark rights to the term.

“In our minds this was always a fight to protect our business community, our city, and the greater community at large, and specifically to fight off the defendants’ attempt to take something that wasn’t theirs ... and then charge people for using it,” said Thomas J. Leek, chairman of the Daytona Chamber of Commerce and partner at Cole Cobb, the firm that litigated on behalf of the chamber. “This ruling ensures that the mark will remain the property of the city of Daytona Beach and the community at large, for all local businesses and distributors to use in perpetuity. This is a significant milestone in that it will live as a warning to future trademark squatters and provide protection for all to continue to enjoy the use the mark.”

The case could have implications for the dispute over trademarks for the term “Sturgis Bike Week” and other terms registered to a company called Sturgis Motorcycle Rally Inc. (SMRI).

Among SMRI’s board members is Jerry Berkowitz, owner of Good Sports Inc. and Hot Leathers. SMRI has been seeking to enforce federal trademarks that Berkowitz secured for Sturgis rally terms.

Opponents say the term is generic and are asking the United States Patent and Trademark Office (USPTO) to invalidate the federal Sturgis marks. Among their primary arguments are that the terms are generic because so many vendors have used them over the years and because they describe a geographic location.

In that case and in documentation to the USPTO, Good Sports has argued that the term is not generic, and that the Sturgis Area Chamber of Commerce, which signed its trademarks over to SMRI early in 2011 after Good Sports dropped opposition to granting of the marks and Berkowitz became and SMRI board member, had exclusive use of the term for at least five years before the marks were granted and signed over to SMRI.

 

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