City’s trademark questioned in lawsuit

Santa Cruz is fighting back.

Turning the tables on better-known Huntington Beach, a Bay area law firm has filed suit saying the “Surf City USA” trademark obtained by Huntington Beach Visitors and Conference Bureau is invalid.

The firm is also asking the California Superior Court to cancel the bureau’s pending trademark applications.

“It’s a very weak trademark,” said Ted Herhold, partner with Palo Alto-based Townsend and Townsend and Crew LLP. The suit is on behalf of Noland’s on the Wharf and Shoreline Surf Shop.

The Santa Cruz businesses were advised by the bureau to stop selling T-shirts with the logo “Surf City Santa Cruz California USA” due to trademark violation.

“The rationale when you win a trademark is you have to protect that trademark,” said Doug Traub, chief executive and president of the Huntington Beach bureau.

The bureau received the “Surf City USA” trademark in May from the U.S. Patent and Trademark Office.

But Herhold believes the fact that the trademark is on the supplemental list shows that the patent and trademark office deemed it not worthy of being on the principal registry.

“That’s because they thought the trademark was generic in nature,” he said.

Traub disagreed. The lawsuit is what happens when “we have so many coveting your mark and trying to make a pass at it,” he said.

The bureau has received the trademark after two years of doing everything by the book, he said.

“We have one heck of a story to tell and one heck of a product to promote,” Traub said. “The registration is filed according to the letter of law, so we have a lot to be proud of and nothing to be worried about.”

The lawsuit aims to help the Nolands and all other businesses in Santa Cruz, Herhold said.

“While our primary goal is to allow the Nolands to continue to sell their T-shirts without fear of legal action, this case is also about telling the Huntington Beach Conference and Visitor’s Bureau to leave all Santa Cruz businesses alone,” Herhold said in a news release.

However, Traub claims the two Santa Cruz businesses knowingly infringed upon Huntington Beach’s brand. Still, he’s saddened by the lawsuit.

“We felt that in our good faith discussion for about a week, we could work with them to make it a win-win situation,” Traub said. “A mistake that could be seemingly easily corrected, will now absorb a lot of resources and attention to address it and that’s a disappointment to me.”

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