Art shows sues the town it is named after for trademark infringement. LQAF v. CITY OF LA QUINTA

Art shows sues the town it is named after for trademark infringement. LQAF v. CITY OF LA QUINTA

Trademark law draws its strength from consumer protection laws.  The rationale for granting a trademark user the exclusive right to brand goods with a trademark is to prevent consumers from being tricked into buying inferior quality goods.  A trademark can be a symbol, work or short phrase.  When a product manufacturer brands goods with a trademark they are granted certain exclusive rights to use the trademark in commerce.  In the United States a trademark can be registered with the United States Patent and Trademark Office to strength the rights associated with the trademark.

The strength of a trademark is directly related to the distinctiveness of the trademark. The distinctiveness of a trademark is broken up into five general categories.  The five categories are fanciful, arbitrary, suggestive, descriptive, and generic.  Generic terms are not eligible for trademark protection, a company may use the trademark to brand their goods, but the courts are not going to stop other people from also using the trademark.  The fanciful, arbitrary, and suggestive categories of trademarks are considered strong trademarks.  A descriptive trademark is a word that identifies the characteristics of the product.  If trademark is merely descriptive, it does not serve as a trademark because it does not serve to identify the source of the goods or services. Merely descriptive marks are not distinctive.  However a descriptive mark may become distinctive if it develops a secondary meaning.  A secondary meaning is when a descriptive mark is associated with one manufacturer of a product in the minds of consumers.

Frequently manufacturers want to incorporate the names of geographic places into their trademark, this can present unique challenges. Geographic names cannot be registered as trademarks if they are geographically descriptive or geographically misdescriptive of the origin of the products.  However the name of a geographic place can be registered as a trademark if it has developed a secondary meaning.  If a geographic name is used to identify the producer of a product and over time, consumers start to recognize it as identifying a particular company, the geographic name no longer describes place where the products come from, it also describes the producer of the products.

LA QUINTA ARTS FOUNDATION, v. CITY OF LA QUINTA, 5:21-cv-515 (C.D.CA 2021) is an example of an organization that successfully registered the name of a geographic place as a trademark and then brought a trademark infringement lawsuit against the geographic place.

Plaintiff in this case is a charitable, non-profit organization that is in the business of promoting and cultivating the arts.  Plaintiff has an arts festival every year in the City it is named for, La Quinta, California.  Plaintiff’s art festival has been held in March of every year since 1983.  Plaintiff successfully registered the trademark LA QUINTA ARTS FESTIVAL as Trademark Registration No. 4,578,706 in 2014 for “organizing community festivals featuring art exhibitions and art displays and also providing education lectures relating to art topics.”

Defendant in this case it the City of La Quinta, California.  In 2020, Plaintiff did not have its typical art festival because of the stay at home orders related to the global pandemic.  In January 2020 Defendant began promoting a community art event called “LA QUINTA ART CELEBRATION” for March 2020.  In advertisements for Defendants event it was stated “La Quinta has hosted an annual art event worthy of nation recognition since 1982” and “That tradition continues with a new signature art event”.  Many members of the public contacted Plaintiff thinking that Plaintiff was involved with the organization of Defendant’s event.

But Defendant’s intent to use “LA QUINTA ART CELEBRATION” predated the pandemic.  In August 2019, Defendant filed a U.S. Federal Trademark 1B Intent to Use Application with the USPTO for LA QUINTA ART CELEBRATION for “organizing community events featuring a variety of activities, namely, art exhibitions, art displays, and heritage markets”.  The USPTO refused registration on the grounds it was confusingly similar to Plaintiff’s trademark.

In March 2021 Plaintiff filed suit against Defendant for (1) Trademark Infringement (15 U.S.C. § 1114) (2) False Designation of Origin (15 U.S.C § 1125) and (3) Declaratory Judgement that Defendant is not entitled to registration of its trademark.

At first glance this case may seem silly, not letting a City use its own name.  But taking a closer look this is exactly what trademark law is intended to do, prevent junior users of a trademark from swooping in and capitalizing on the hard work of the senior trademark user.

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