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Let's Go Suing Now, Say Santa Cruz Merchants

October 13, 2006|From the Associated Press

SAN FRANCISCO — The owners of two Santa Cruz beachwear shops filed a lawsuit Thursday challenging Huntington Beach's trademark of the nickname "Surf City USA."

The suit came in response to cease-and-desist letters the Huntington Beach Conference and Visitors Bureau sent last month advising Noland's on the Wharf and Shoreline Surf Shop to stop selling T-shirts with the words "Surf City Santa Cruz California USA."

The stores' owners, Ginger and Bruce Noland, say in their lawsuit that four "Surf City" trademarks that the visitor's bureau registered with the U.S. Patent and Trademark Office last spring do not confer exclusive use of the term.

"This case is not about which city has the most legitimate claim to be called the true Surf City USA," said Ted Herfold, a San Francisco lawyer who agreed to represent the Nolands for free.

"Rather, this is about the freedom of individuals and merchants to conduct their business free from spurious claims of trademark infringement."

Doug Traub, president of the Huntington Beach Conference and Visitors Bureau, said he was certain that the "Surf City USA" trademarks meant the bureau is the only entity licensed to put the logo on apparel.

"When you own a trademark, it is your job to enforce it and make sure no one infringes upon it," Traub said.

The case represents the latest wave in an ongoing North-South rivalry between Santa Cruz and Huntington Beach over which city can lay claim to the Surf City label.

Huntington Beach points to the 1963 hit song by homeboys Jan and Dean. Santa Cruz, meanwhile, argues that it has been called Surf City since 1927, when a newspaper coined the moniker.

Until recently, the dispute has been mostly good-natured.

After the Huntington Beach visitors bureau moved to trademark "Surf City USA" for a marketing and merchandising campaign, the mayor of Santa Cruz officially proposed a surf-off, with the winner taking the name.

When a state senator from Palo Alto asked the Legislature to recognize Santa Cruz as the official "Surf City USA," then-state Sen. John Campbell of Irvine took a democratic approach: "Neither city has 'two girls for every boy,' so neither should be Surf City," he said.

The stakes turned serious after the Huntington Beach visitors bureau announced in May that it had secured trademarks giving it exclusive use of the "Surf City USA" designation in ads and on clothing.

Last month, the group showed it was willing to protect its property, warning the Nolands that they had until Sept. 29 to stop selling their T-shirts and proposing the profits from them be donated to charity.

Traub said that the Nolands only started selling their T-shirts after the visitors bureau had its trademark applications approved, and that another company held the apparel trademark before his organization sought the rights to it.

In their lawsuit, the Nolands asked a Santa Cruz Superior Court judge to rule that Huntington Beach's trademark doesn't give it exclusive rights to the moniker and to stop threatening them and other business owners.

They also want the court to order the director of the U.S. Patent Office to invalidate Huntington Beach's trademarks.

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