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By: Mark R. Malek

I was interviewed about a case for an article in The Daytona Beach News Journal about a month ago, and I just haven’t gotten around to posting anything about it.  Apparently, some clown named Yosef Amar, owner of Joe Cool, Inc. noted that his company claimed trademark rights on the Bike Week event name based on the fact that he has been producing t-shirts and other products with the Daytona Beach Bike Week name on it since 1987.

I know that many of you have heard me say this before, but I’ll go ahead and say it again….are you kidding me?  This argument in and of itself completely misses the entire point of trademark law.  The purpose of trademark law is to protect marks that act as source identifiers.  In other words, a trademark is meant to identify the source of the good or service that it is being used on.  This normally means that if a consumer can identify the source of the good or service, they have come to identify a particular level of quality with that particular good or service.  For example, whether you are in Melbourne, Florida or Dickinson, North Dakota (random city), a Big Mac ordered from a McDonalds will taste exactly the same.  How many drivers have received that hunger pain while on a never-ending road trip and have seen the following sign: “McDonalds – next exit” and got off the highway?  It may not be the most desirable food in the world, but you knew exactly what you were about to get.  That’s because, as much as I cannot stand eating fast food (hard to believe because I used to love it), McDonalds has done a great job of protecting their trademarks.

Protecting your trademarks does not merely mean that you sue everyone who is using your trademark without your permission.  Yes, you have to enforce your trademark rights, but if they are worthless to begin with, what’s the point?  In order to ensure that the value of your trademark is not diminished, the trademark owner must be sure to provide a consistent good or service associated with that trademark.

Back to this ridiculous case – I wonder if this guy actually believes that he can make a case for trademark infringement against the local shop owners who are selling t-shirts that bear the name “Bike Week” on them.  According to the Daytona Beach Chamber of Commerce Website, Bike Week has been around since 1937.  Does Joe Cool, Inc. actually believe that since 1937 there have not been any t-shirts printed that bear the name “Bike Week?”  The good people of Daytona Beach are business savvy enough to know that there was a dollar or two to be made from hordes of motorcycle riders that descend on one location in Florida over a period of weeks.  Motorcycle enthusiasts generally overspend at such events, so I find it very hard to believe that it took until 1987 for someone to come up with the brilliant idea of putting the “Bike Week” name on a t-shirt.  That’s actually beside the point – simply putting “Bike Week” on a t-shirt does not provide one with trademark rights.  It is not as though putting “Bike Week” on a t-shirt made the consuming public identify that t-shirt as a “Bike Week” brand t-shirt.  The Hanes undershirt I am wearing right now doesn’t have anything printed on it, and Hanes has a trademark.  Joe Cool, Inc. is clearly not getting any meaningful trademark advice.

Apparently, Joe Cool, Inc. believes, however, that they are the first people to put the “Bike Week” name on a t-shirt.  Oh wait, I think I just figured this out.  Could this possibly just be a shakedown?  Could it possibly be the case that Joe Cool, Inc. is not trying to protect its State Registered Trademark, but rather just shake a few dollars out of the pockets of already struggling business owners?  Are you picking up the sarcasm yet?  Of course you are!  This is nearly the most illegitimate use of trademark protection that I have seen in a while, and almost rises to the status of Trademark Bully (See our trademark bully articles here, here, here, here and here).

Luckily, the Daytona Beach Chamber of Commerce has hired a trademark attorney that I know to be very knowledgeable on trademark matters – Heather Vargas of Cobb Cole.  I think more than anything, I feel sorry for Ms. Vargas for having to deal with a guy like this, but I assume that when Joe Cool, Inc. knows what they are up against, they will surely back down.  However, if he does not back down, I would love nothing more than to watch as the Chamber of Commerce, or a collective group of its members, filed a lawsuit seeking declaratory relief to invalidate Joe Cool’s trademark.

"I think Joe Cool, Inc. is infringing on my Trademark Rights"

That brings up a good point – how in the heck did this trademark get allowed?  It seems as though someone was asleep at the wheel up in Tallahassee.  State Trademark registrations are entered by the Secretary of State, and there is not a very vigorous trademark prosecution process.  Generally, it takes only a few weeks to receive a State Trademark registration.  Please do not misunderstand my point.  I am not contending that State Trademark registrations are worthless – not at all.  I am just noting that they are not likely as strong as Federal Registrations.  In the end, I suspect that the scam artists behind Joe Cool, Inc. will be out of business soon.  After all, what would Snoopy think of this?