• Be Careful When You Threaten

    by  • August 26, 2012 • trademark

    Photo from Grand Rapid Press

    Here’s one to wrap your head around, courtesy of the IPKat. Cedar Springs, Michigan has heretofore been the “Red Flannel Town,” as evidenced by the sign to the left. The logo was used by the town on city vehicles, the cemetery, its letterhead, and in its town seal.

    The story* about the moniker is that during a cold winter in 1936, a New York writer bemoaned the lack of “red flannels” in the USA. The editors of the Cedar Springs (MI) Clipper newspaper shot back “Just because Sak’s Fifth Avenue does not carry red flannels, it doesn’t follow that no one in the country does. CEDAR SPRINGS’ merchants have red flannels!” “Red Flannel Day” was born and the Red Flannel Festival (registered trademark below) has been an annual event ever since.

    TARR link

    Then the falling out between the city and the Festival. The Grand Rapids Press reports that it started because the town was going to charge the Festival for police services, use of city equipment and cleanup by city employees. The Festival agreed to pay, then discovered that the city created license plates and holders using the logo (presumably the town logo, not the Festival logo). The Festival was irked, the City stopped selling the tags and offered $4,000 of in-kind services to have a license to the logo, but the City Attorney pulled the plug on the offer. In correspondence with the Festival (link down at time of publication), the city outlined the history of the name Red Flannel Town and the logo, describing registrations by various entities the predated the Festival’s application.  The Festival rebutted, threatened a lawsuit, and the city opted to cease using the logo.

    I don’t know quite what to make of it. Any trademark lawyer will tell you that this was a dead-dog loser for the Festival. No matter when the city started using the logo, a claim by the Festival is almost certainly barred by laches. I am still puzzling out whether one would consider this a case of two marks with two owners, one mark with joint owners, or whether the city’s use is as a mark at all. There are questions of priority and ownership. But no matter how you get there, there is no reasonably viable legal claim here.

    Unfortunately, the city had to make what probably was an economic decision. The Festival took the penultimate step of filing a Notice of Intention to File Claim, as required under state law, so the city had no choice but to take the Festival at its word that it would sue. For the city, it was probably cheaper to eliminate the use of the logo throughout the town than to be burdened with the expense of trademark litigation. Even a motion to dismiss will strain the budget of an already cash-strapped town.

    One would presume the Festival still has to pay for the city services for the Festival.  What a shame. The city and the Festival are both worse off for it.

    Medallion from City Council Chambers. Grand Rapids Press

    Archive of correspondence here (link down at time of publication. Grabs of Google caches here).  Red Flannel Festival Facebook page here.

    *Alternate link to the Wayback Machine here. At the time of publication, the Festival website at www.redflannelfestival.org was down.

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