Huntington Beach Officials Say Legislative Attempt to Usurp ``Surf City USA'' Trademark is No Laughing Matter
Senate Committee Resolution 60 by State Sen. Joe Simitian (D-Palo Alto) was passed by the Senate Rules Committee on a 3-2 vote Thursday and may be brought to the floor for a vote by the full Senate as early as this week. Opponents say what began as a spirited debate between Huntington Beach and Santa Cruz nine months ago, when "Surf City USA" trademark applications were filed by the Huntington Beach Conference and Visitors Bureau (HBCVB), has now stepped over the line of a friendly rivalry.
“This is a bit of mischief, but it puts the U.S. Patent and Trademark Office on notice that there are other Surf City USAs out there that might take an opposite view to (Huntington Beach's) application.”
Huntington Beach Fights Bill
"This may look like a frivolous and good-natured legal maneuver, but it is a serious issue for us; we have invested more than $500,000 to develop and market the 'Surf City USA' trademarks," said Doug Traub, president & CEO of the HBCVB. The bureau performed extensive research to identify the mark and confirm its availability, Traub said, and even developed a new "Surf City USA" logo that now appears on numerous materials including its www.surfcityusa.com website, 68-page Visitors Guide, dozens of news releases and advertisements in regional and national publications.
"We have taken in good humor the jibes and the challenges and the sarcastic songs of Santa Cruz officials over who is the real Surf City," Traub said. "But this resolution goes too far, because now we're talking about an attempt to strip a business of its intellectual property which it obtained in good faith and this is a clear interference in our business relationships."
Huntington Beach officials say they have been afforded no opportunity to speak out in public against the measure, so Mayor Jill Hardy and Traub are flying to Sacramento on Monday to lobby and speak out against the bill in person.
A Weak Argument Against Huntington Beach's Legitimate Trademark
According to SCR 60, any city in California can use the trademarks being secured by Huntington Beach, although the bill specifically mentions that the City of Santa Cruz should be entitled to use the "Surf City USA" trademark name. The resolution lists nine reasons that Santa Cruz deserves the title, including that Hawaiian princesses used redwood planks to surf the mouth of San Lorenzo River in 1885. Although resolutions do not have the force of state law, Huntington Beach officials say it encourages the violation of U.S. trademarks and intellectual property rights.
"It (SCR60) puts the U.S. Patent and Trademark Office on notice that there are competing claims to Surf City USA," Simitian said Friday. "I think Surf City is as much a state of mind as it is a place. I don't think you can trademark a state of mind."
Federal law does provide a period for trademarks to be opposed for legitimate business reasons. However, no credible claims of utilizing the "Surf City USA" trademark name for interstate commerce have surfaced, said Traub. "The thing to remember here is that we trademarked 'Surf City USA,' not the more generic term 'Surf City.'"
There are 20 federally registered trademarks that contain the "Surf City" name, including "Surf City Huntington Beach"(R), registered since 1994. In fact, four registered trademarks now use the "Surf City"(R) name alone, including Mattel that uses the "Surf City"(R) trademark for dolls and doll clothing. The only "Surf City USA" registered trademark found by Huntington Beach during its research was one for apparel in 1984 that was canceled in 1991, so the bureau applied to re-register the trademark in November 2004.
"Surf City USA" Critical to Huntington Beach's Marketing Plan
The "Surf City USA" trademark is not only critical to the tourism marketing efforts of Huntington Beach. The Bureau has entered into several contracts to help create a line of "Surf City USA" merchandise. Dean Torrence of Jan & Dean fame, a Huntington Beach resident and co-author of the 1964 hit song "Surf City," has been signed on as the lead pitch man to promote the new merchandise.
Another agreement with Global Icons, a Los-Angeles based licensing agency specializing in development and extension of corporate brands and trademarks, provides them with a licensing arm to negotiate and manage the licensing agreements. Global Icons represents the Hollywood sign as one of its clients, as well as other firms including Humvee, Duncan Hines, Igloo and Chuck E. Cheese's.
In the past few months, Global Icons has inked two licensing agreements in behalf of the Bureau and "Surf City USA" brand. Within the next 60 days, a collection of sportswear and beach bags will be offered for sale on line from the HBCVB's website by California-based Giant Merchandising, the same company that creates merchandise for rock stars including Justin Timberlake, Cher, Korn, Tears for Fears and Godsmack.
In 2006, a line of beach cruiser bicycles are being brought to market in 30 countries by Felt Bicycles, a prestigious California-based manufacturer with a world-class bicycle product line. Numerous other products from sunscreen to sunglasses to bikinis to wetsuits are currently in discussions for future licensing agreements, as well.
Northern California Senator Criticized for Wasting Lawmakers' Time
Several leading newspapers in Southern California have blasted Simitian for wasting the state legislature's time with frivolous resolutions when it should be preparing for a bevy of critical issues coming in the November special election. Even the Santa Cruz Sentinel opinion page stated on Sunday (Aug. 28) that "State Sen. Joseph Simitian, D-Palo Alto, has proposed legislation over the trademark of the name -- while (Senate) time would be better spent on any number of other, more substantive issues." Sen. John Campbell (R-Irvine), who is leading the challenged to SCR 60 in Sacramento, recently commented, "Hopefully people are recognizing that we have more important things to do and it's not something the Legislature needs to stick its nose in."
To learn more about Huntington Beach, visit www.surfcityusa.com or call 800-729-6232 and request a free Visitors Guide. Surf City USA(TM) is a trademark of the Huntington Beach Conference and Visitors Bureau. All rights reserved.
MYTH VERSUS REALITY ------------------- WHY SANTA CRUZ HAS IT WRONG ON THE "SURF CITY USA"(TM) DEBATE MYTH: California State Sen. Joe Simitian (D-Palo Alto): "There are competing claims to 'Surf City USA'(TM)." REALITY: The only city that has publicly challenged Huntington Beach's right to the trademark is Santa Cruz. However, it takes more than a "claim" to overturn a trademark application. The challenger must prove it has marketed itself by that exact term or entered into business relationships under it -- and Santa Cruz has done neither. It has not expended significant amounts of money marketing itself by the "Surf City USA" term and it does not have "Surf City USA" products, nor has it ever demonstrated a public or legal interest in doing so. It has not even used the Surf City nickname consistently. Huntington Beach has nine trademarks that have been in the process of registration since November 2004 and early January 2005, including sportswear, bags and printed materials. MYTH: Simitian says: "Surf City is as much a state of mind as it is a place, and you can't trademark a state of mind." REALITY: States of mind and places are trademarked every day. In fact, 20 registered trademarks NOW contain the more generic term "Surf City" including "Surf City Huntington Beach"(R) which has been registered by the City of Huntington Beach since 1994! Other registered trademarks include: "The Lone Star State of Mind"(R), "Garden State of Mind"(R), "Long Beach State of Mind"(R), "A Pennsylvania State of Mind"(R) and "United States of Mind"(R). MYTH: Simitian says: "I don't think it's the most important issue on the planet, but I'm going to defend my city in a reasonable way." REALITY: It may not be that important for Santa Cruz, but for Huntington Beach, its nine "Surf City USA" trademark applications represent a $500,000-plus investment in its central marketing strategy and business approach. MYTH: Simitian said, "This is a bit of mischief, but it puts the U.S. Patent and Trademark Office on notice that there are other Surf City USAs out there that might take an opposite view to (Huntington Beach's) application." REALITY: The Senator may win political points for this "bit of mischief," but his action also could be construed as "torturous interference with business relationships" and he could be held liable for any loss of business income that results. MYTH: Santa Cruz Mayor Mike Rotkin said, "We can't ignore the fact that we might be sued, and the city has to defend its interests (including 'Surf City' in a business name)." REALITY: Nine trademarks are being registered with the "Surf City USA" moniker, not the general term "Surf City." The Huntington Beach trademark does not affect any businesses that use the term "Surf City" in Santa Cruz, Huntington Beach or anywhere else in world.