DAYTONA BEACH -- For a mere $87.50, a little-known New York holding company last year quietly applied for and was granted the state trademark for the name "Daytona Beach Bike Week."
Now the business hopes to turn that tiny investment into a potentially huge payday.
In recent weeks, the company, which operates under several names, including Mettemp Inc. and Consolidated Distributors Inc., has contacted area businesses to inform them it is the sole owner of the Daytona Beach Bike Week name.
A letter circulated on Mettemp's behalf by its Holly Hill affiliate, Joe Cool Inc., states the company intends to "take all legal actions to protect its rights" on any businesses that produce T-shirts and other merchandise bearing the Daytona Beach Bike Week name without its approval. The letter suggests those actions could include seizing those "counterfeit goods."
Not so fast, says the Daytona Regional Chamber of Commerce, the group that has managed the annual Bike Week event through an agreement with the city since 1988.
"Confiscation action would only be possible with a federal trademark, which Consolidated does not possess," chamber CEO Larry McKinney wrote in a letter sent to members Saturday.
The chamber, which produces its own Daytona Beach Bike Week T-shirts and operates the official Bike Week welcome center and website, has hired the law firm Cobb Cole to contest Mettemp's claim and block the New York company's bid to obtain a federal trademark.
Yosef Amar, owner of Joe Cool Inc., said his group's claim to the trademark rights on the event's name is based on the fact he has been producing T-shirts and other products with the Daytona Beach Bike Week name since 1987.
He said in a phone interview that he believes he was the first in the area to start selling T-shirts bearing the event's name.
Jim Gallagher, a co-owner of Mid-Florida Sportswear, the Daytona Beach company that prints the official Daytona Beach Bike Week T-shirts for the chamber, said his company has printed and sold shirts bearing the event's name continuously since 1977. Gallagher said he believes other businesses also did so earlier.
Heather Vargas, the board-certified intellectual property attorney representing the chamber, said Mettemp does not have a legal right to the Daytona Beach Bike Week name because it isn't something that can be trademarked
That's because names that are descriptive, as in the case of Daytona Beach Bike Week, or generic, as in the term Bike Week, cannot be protected under trademark law, she said.
"Registrations don't mean anything if they're not based on an actual ownership of the mark," said Vargas, who added, "People have been printing merchandise with the phrase 'Daytona Beach Bike Week' for decades."
Mark Malek, a trademark attorney with the firm Zies Widerman & Malek in Melbourne, who is not involved in the case, said obtaining a state trademark doesn't necessarily guarantee a claim to owning the rights to a particular name will hold up in court.
For Mettemp's trademark claim to be effective, "the consumer would have to identify that company as the source of 'Daytona Beach Bike Week,' " said Malek, and use of that name by "allegedly unauthorized vendors dilutes the value of their trademark or causes the likelihood of confusion."
Malek added "all you need to do on a state level" to obtain a trademark "is present a mark, date of first use and a specimen. There is no rigorous examination procedure."
What's more, there also are common law trademark rights to consider, which go to the party that can show it was the first to use the name, Malek said. Even if one can show that, that party could still lose its rights if it failed to enforce them by allowing others to use that mark for years without permission.
The trademark application filed by Mettemp in April 2009 only provided a single specimen as proof of its use of the mark: a logo bearing the words "Bike Week Joe Cool Inc."
The application was signed by Amar, who identified himself as a vice president of "Metemp Inc."
The application was approved April 13, 2009.
Amar said his company is asking businesses that want to sell Daytona Beach Bike Week merchandise to either pay a licensing fee of 20 cents per product bearing the name, or buy preprinted products his company makes to resell. Joe Cool sells its T-shirts for $4.50 a piece and heat transfers for between 85 cents to $1.50 each, Amar said.
David Bakshet, president of Consolidated Distributors, said his company is prepared to "defend ourselves," including the possibility of filing a counterclaim "against anyone who damages our business opportunities."
Bakshet, in a telephone interview, described himself as a "trademark expert" who is a consultant to attorneys but is not one himself. He declined to provide a resume or proof of what makes him an expert other than to say, "I've read books and operated trademarks" for years.
Bakshet disputed Vargas' statement that the phrase Daytona Beach Bike Week cannot be trademarked. "Ask any trademark attorney, 'is Bike Week with a city's name in it generic?,' " he said.
Reprinted from the Daytona Beach News Journal
February 12, 2011- -
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February 12, 2011- -
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