Naming rights can be a battle for some Aspen entities
Wildlife filmmaker Marty Stouffer, the Aspen-Pitkin County Housing Authority and a downtown bar named after an international drug lord share at least one thing in common, which is navigating through the nuanced world of trademark law and intellectual property.
The three local parties have been embroiled in naming-rights disputes, two of which have landed in federal court.
Most recently, the Aspen-Pitkin County Housing Authority learned the name of a new software it debuted — HomeTrek — was being contested by a major bicycle manufacturer.
The challenge came from Trek Bicycle Corp. after APCHA officials were in the process of putting the final details on the organization’s launch of a new inventory tracking system; included in the process was filing a trademark application for the software.
That’s what the authority did with the United States Patent and Trademark Office on Oct. 6. A follow-up email, sent March 5 from the USPTO, let APCHA know that its name for the system, HomeTrek, had not been trademarked elsewhere. APCHA was free to use the name, or so it thought, and it has been since the software’s launch Jan. 1 .
“The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration,” the notice to APCHA said.
Yet the world of getting trademark approvals is similar to getting worker housing in Aspen, in that it can be a tedious and trying process.
The application for the HomeTrek trademark was the first step and the examination was the second. APCHA cleared both.
“It did go through all of the stages, and it was approved by the trademark office,” said Bethany Spitz, an attorney and enforcement officer for APCHA, last month.
But before it could register the HomeTrek trademark, which is the fourth and final step of the process, APCHA did the required posting of the HomeTrek trademark application in the Trademark Official Gazette, a weekly newsletter of the USPTO. The notice appeared in the April 20 edition, and on May 2, Trek Bicycle Corp. attorneys filed a “notice of opposition” asking the Trademark Trial and Appeal Board to deny APCHA’s registration for the HomeTrek trademark.
Attorneys on both sides currently aren’t discussing the matter, but a recent filing with the USPTO said they are working toward settling the dispute.
“The parties are actively engaged in negotiations for the settlement of this matter,” said a June 8 filing by Trek Bicycle Corp.
Attorneys for Trek, which is based in Wisconsin, have said in filings that APCHA’s use of HomeTrek creates confusion for consumers and diminishes the bicycle giant’s brand.
“Opposer (to the HomeTrek trademark) has invested substantial amounts of time, effort and money in protecting and policing its TREK trade name in the United States and throughout the world,” said the notice from May.
The dispute has not landed in court, something a trio of like-named Aspen businesses cannot say.
In September, a company called Escobar Inc., which purports itself to be family organization holding all naming rights to the late Colombian drug pin Pablo Escobar, sued in Denver federal court.
The $5 million suit alleged three companies controlled by Aspen businessman Ryan Chadwick — Barwest Group, which does business as the Escobar Aspen nightclub downtown; Escobar Spirits, which sells Escobar Vodka; and Escobar Aspen — don’t have rights to use the Escobar name. The suit is seeking a cease and desist order from the court.
Like Trek Bicycle Corp., Escobar Inc. also petitioned the U.S. Patent and Trademark Office to cancel Chadwick’s use of the name.
Attorneys for Chadwick have filed documents seeking the lawsuit’s dismissal on the contention that Escobar Inc. doesn’t meet the minimum standard to carry out such a claim against the Aspen businesses.
“Plaintiff’s complaint fails to allege any facts to indicate it obtained Pablo Escobar’s right of publicity via a contract, trust, or testamentary instrument. In fact, plaintiff’s complaint is silent on how it allegedly obtained Pablo Escobar’s intellectual property rights,” Denver attorney Craig J. Mariam argued in a February pleading for the Aspen-based Escobar concerns.
The case currently is on hold; a status conference scheduled June 10 was postponed until Aug. 12, according to court documents.
On the other side of the naming rights issue was Marty Stouffer Productions, which is based in Aspen and sued National Geographic in December 2018.
Stouffer’s lawsuit alleged National Geographic stole his “Wild America” brand for their own video productions. Marty and his brother Mark produced the “Wild America” series that ran for 14 years on PBS starting in 1982. The show also was syndicated through DVDs, streams and video-streaming platforms, and Marty Stouffer Productions owns a trademark on “Wild America.”
National Geographic, however, prevailed in its argument that Stouffer was trying to exert control over the genre of wildlife documentaries.
“While the English language is notably quite expansive, the range of words to describe such programming is limited,” wrote Judge William J. Martinez of the U.S. District Court of Colorado in a ruling dated May 8, 2020. “Yet Stouffer would not allow even a synonym for ‘wild’ (i.e., ‘Untamed Americas’). If trademarked words themselves and their synonyms are off limits, then the artistic choice regarding a title becomes significantly constricted.”
Stouffer appealed the ruling to the 10th Circuit in January. The court dismissed his appeal March 1, after both sides in February mutually agreed to its termination, according to court records.
Contacted earlier this month, Stouffer declined comment, citing a confidentiality agreement associated with the suit’s dismissal.
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The 10th Circuit Court of Appeals this week affirmed the dismissal of a lawsuit against the city of Aspen that challenged its zoning laws concerning Mill Street Plaza, which is home to locally serving businesses.