A few days ago, Jack Baruth reminded us that an autocross event organized by Gymkhana GRID was cancelled, because a company by the name of DC Shoes claimed the rights to the word Gymkhana. If I would have been in Gymkhana GRID’s, well, shoes, I would have told DC Shoes to pound sand. What happened?
On February 23, 2011, Mitch Milstein, VP, General Counsel Global IP of Quiksilver Inc, residing at 15202 Graham Street, Huntington Beach, CA, 92649, registered GYMKHANA for his client DC Shoes, Inc. which happens to live at the same address. He required trademark protection for Gymkhana , amongst others for “on-line journals, namely, blogs featuring information regarding sporting, recreational and cultural events and activities.”
Should you be doing a Gymkhana blog, watch out, Mitch Milstein might send you a cease and desist. I would ignore it.
Amazingly, the United States Patent and Trademark Office did a more than thorough job. They had refused the trademark on May 25, 2011 in a non-final office action. Not only because (doh!) Gymkhana Gymnastics Club, Inc. had the Gymkhana trademark since 1993. Also, because the trademark was too generic.
“The wording GYMKHANA means or refers to a form of motorsport similar to autocross. See attached definitions, webpages on the sport, and Wikipedia article. The below listed goods and services all feature sports, recreational, and cultural activities broadly or directly relating to motorsports and other street sports.”
Finally, the applicant was caught performing trademark suicide. Says the USPTO:
“Moreover, what appears to be applicant’s website uses the term “gymkhana” to refer descriptively or generically to the sporting activity. See attached screen shots of applicant’s website.”
If you ever want to assert a trademark, never get caught doing that. When I worked on the Kleenex account many years ago, half of our agency had a one day training session, in which their trademark lawyer pounded into us to “Never call a Kleenex a Kleenex.”
Wie bitte?
“It’s a Kleenex tissue! A trademark is an adjective! If you use it as a noun, we can lose the mark!” This is a little-known trap in the trademark law, don’t step into it.
Also, if you ever want to register a trademark, use the same tools the USPTO uses: Google the name, search it in Wikipedia, check whether its URL is registered. And please, check the trademark database.
Meanwhile the Gymkhana wars wage on. Mitch Milstein filed a Gymkhana trademark for “Belts, Footwear, Gloves, Headwear, Jackets, Pants, Shirts, Shorts, Socks, Sweatshirts, Swimwear, Undergarments, Vests.” Not all trademark examiners are equal. This one was published and is waiting for comments. If you want to print “Gymkhana” on your gymkhana team t-shirt, complain. Other Gymkhana marks have been applied for and are pending. If any trademark application comes even close to the matter of Gymkhana races, opposition notes should be immediately filed.
Gymkhana applications have been denied because the “mark is merely descriptive.” The USPTO now knows that Gymkhana describes “an equestrian or auto racing entertainment.” And just like someone can’t trademark “auto racing”, nobody should be able to trademark “Gymkhana”. At least not for race. However, the matter needs vigilance. Disputing a trademark before it is registered is easy. Striking it down after registration is tough and costly.
And just in case anybody runs out of websites, Wikipedia entries and blogs that show that “Gymkhana” has been a generic name since before Mitch Milstein finished law school, enclosed is a book a friendly TTAC reader sent us. “Sports Car Rallies, Trials and Gymkhanas” was published first in 1956, a revised edition in 1960. Even that book admits to an act of Gymkhana-thievery:
“Some years ago sports car drivers decided to appropriate and adapt a variety of standard track-and-field tests – the hurdle, the shot-put, the discus throw and the relays. From swiping the games to stealing the name was an easy step: The word “gymkhana,” well established in the lexicon of college athletics, thus became our term for ‘track meets wheels.’“
Stealing Gymkhana has a tradition.
On a not entirely unrelated note, have you guys checked “ttac.com” recently? It’s now pointing elsewhere.
Yep, it points to “autoforums.com”. T thought my browser had been hijacked but it occurs on all my pc’s. Looks like I’ll have to change my starting lineup.
Back to subject I think some places use Carkhana as a descriptive term for the sport.
DNS problems after outage. Fixed here. If it’s not fixed on your side, close broswer, open again.
If that doesn’t work, restart computer, or wait a while. Sometimes DNS takes a while to reach around the world.
B
Already complained about it. There had been an outage today. It points to Verticalscope, the folks who own TTAC and gadzillions of other sites.
Actually the word is derived from the Hindu, apparently from the great days of the British Raj, and it has always been a noun in English.
Why PTO gave the petitioners the time of day is beyond me. But remember, the have allowed patents for peanut butter and jelly sandwiches, and for limeade.
You are correct about the way to deal with these people. Write them back: “F— Y–. Nasty letter to follow”.
I seem to recall gymkhana was always used as a name for some kind of junior equestrian events back in Britain when I was growing up. This article is the first time I have heard it in connection with autosport.
You are correct.
“We refer you to the reply given in the case of Arkell v. Pressdram”
Always thought that they were, at the origin, equestrian games… There was one held every year in my club (St George)
I take it by the lack of the word “douchebag” in this article that Jack Baruth has trademarked it for his own use.
The most ridiculous registered trademarks I’ve seen belong to UPS.
the UPS brandmark and the color brown are registered trademarks of United Parcel Service of America, Inc. All rights reserved.
According to the UPS Trademarks page, they have registered the trademarks of “Brown”, “Compass”, and “Color Brown.” The top of the page claims they have trademarked the color brown.
It’s possible to trademark specific colors. I do know that trademark registrations often include the Pantone colors of various elements.
If UPS has a trademark on a color, it’s on a specific brown. When I worked for DuPont we supplied UPS with paint whose official name was “UPS Brown”. We also supplied GM with Mary Kay Pink.
Thank Owens-Corning for that precedent (http://en.wikipedia.org/wiki/Non-conventional_trademark#Owens-Corning). UPS has a weaker case since fiberglass is hidden but the color of a truck has an aesthetic function.
I was curious, so I pulled up UPS’ trademark on “the color brown.” The registration is for “chocolate brown” which is the approximate equivalent of Pantone Matching System 462C, as applied to the entire surface of vehicles and uniforms for the Transportation and delivery of personal property by air and motor vehicle.
So, I suppose the trademark page leaves out a few important details. After reading the registration it starts to make sense.
Almost as bad as McDonalds, who seemed set to sue every “Mc” in the universe who opened a restaurant. And no, that wasn’t just in the movies…
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Gymkhana isn’t a popular descriptive in the US, or hasn’t been for quite a while, but I’ve been watching gymkhanas since I was a kid… this is the kind of discipline old rear-wheel drive Toyota Starlets excelled at… square wheelbase, easy to powerslide… many of our autocrosses featured gymkhana elements in order to attract bigger crowds.
Because, let’s face it… seeing tiny little cars hit eight gates and do one or two 720 degree turns around cones is more interesting than seeing them hit ten gates in a row.
Mitch should author a book ” My life as a Patent Troll” Should be quite popular with other IP Lawyers. Alternate title To Gymkhana and Back.
Hikeeba!