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For Immediate Release: November 9, 2006
Huntington Beach Declares "Surf's Up" To Defend Its SURF CITY USA® Brand
HUNTINGTON BEACH, CALIF. The Southern California beach town long known as "Surf City USA" and celebrated in the famous Jan and Dean song is fighting back.
The city's official destination marketing agency, the Huntington Beach Conference and Visitors Bureau, was sued last month in state court in Northern California by a T-shirt merchant, "Noland's T-Shirts," in chilly Santa Cruz, who claimed he had superior rights to the name "Surf City USA."
In fact, the Huntington Beach Bureau has registered Surf City USA® as a federal trademark and recently sent the merchant a letter demanding that he stop infringing the registered marks by selling T-shirts with "Surf City USA" on them. The Bureau has a vigorous licensing program and has invested heavily in increasing the widespread and longtime identification of Huntington Beach as "Surf City USA."
Noland's filed the suit in Santa Cruz Superior Court in an apparent attempt to "hometown" Huntington Beach before an unfriendly jury. It seeks cancellation of the federal registrations for the world-famous marks. In addition, the plaintiff brought the lawsuit in state court even though most trademark suits are governed by federal law.
The Bureau responded with a little humor, but also serious and swift legal steps today, naming a top intellectual property litigation firm as its counsel and filing the necessary papers to remove the suit to federal court in San Jose. The bureau announced it will file motion papers next week to transfer the case to Southern California, where it should have been brought. Legal costs are being paid by the bureau's insurer, the Chubb Group of Companies, so that the bureau will not be out of pocket as it defends the mark.
"The Surf City USA trademark has been the cornerstone for the past two years of a branding initiative to market our city as a top tourist destination," said Doug Traub, President and CEO of the Huntington Beach Conference and Visitors Bureau. "The money we raise from tourism goes back into our community to fund police, fire and lifeguard protection for residents and tourists alike, as well as other community services. We like Santa Cruz, but we have to protect our rights and the city's heritage."
The legal team for the Bureau is being led by Richard P. Sybert, former State Director of Planning and Research and a top intellectual property (IP) litigator at Gordon & Rees, a statewide law firm specializing in trial work. Most recently, Sybert won a federal court jury trial in August in Los Angeles to reclaim the "Malibu Pier" trademark for the California Department of Parks & Recreation.
"The Surf City USA® mark is world-famous and stands for the entire Southern California beach culture," Sybert said. "These guys are just trying to catch a wave--our wave." His first actions today were to file papers automatically moving the case from state court in Santa Cruz to federal court in San Jose. Federal procedure requires that removal be to the federal courthouse closest to the point of original suit.
Sybert noted that he will file a motion in the federal court next week to move the suit from the plaintiff's backyard in Northern California, to Southern California, where the bulk of the witnesses and documents are located, or at least to a more neutral venue where a fair trial can be obtained. The motion is expected to be heard sometime in December.
"The plaintiffs tried to be cute by phrasing their claims under state law," Sybert charged, pointing out that most trademark law is federal. "It's obvious they were hoping to deny Huntington Beach a fair trial by suing in Santa Cruz. It's sneaky."
Although Surf City USA stands for the whole Southern California lifestyle and beach culture, surfing itself has a long history in Huntington Beach. The city's first surf shop, Gordie's Surf Boards, opened its doors in 1953. Six years later, the first United States Surfing Championship was held in the city in 1959 and was televised the next year, rocketing Huntington Beach to international fame as a surfer's paradise. In 1963, Jan and Dean released their landmark hit single, "Surf City," and the "surf's up" image of Southern California, complete with woodies, surf wax and "two girls for every guy," was cemented into the public consciousness and became indelibly associated with Southern California. Dean Torrence, one of the group's two singers, is a local resident and now consults with the bureau.
"This song, and the Surf City USA brand, are all about sunshine, fun and the warm feelings you get every day in Southern California," said Torrence. "There is no better expression of that state of mind than Huntington Beach, the city I call home."
In 1990, the International Surfing Museum opened at 411 Olive Street in Huntington Beach and the following year the city council officially adopted "Surf City" as Huntington Beach's nickname. The current licensing program is only the latest development in this historic evolution.
Recent events, including a local state senator attempting to pass legislation declaring Santa Cruz "Surf City" instead, forced the Huntington Beach bureau to take action. "We tried to resolve the matter amicably," said the bureau's Traub. "We love Santa Cruz, and I'm sure it's a nice city. But it's not Surf City. That's us. Surf City USA." The debate, he added, has always been about promoting tourism in California.
Huntington Beach has seven federally-registered Surf City USA trademarks for various categories of goods and services. It backs its brand with some of the finest weather on the planet, including mild summers and winters and scant rain. Its eight-and-a-half miles of golden sand beaches are frequented by more than 11 million visitors a year and offer a year-round home to aficionados of numerous outdoor sports from beach volleyball to bicycling to sand castle-building.
About Gordon & Rees, LLP Gordon & Rees has been a dynamic presence in the ranks of prominent California law firms since it was founded in San Francisco over 30 years ago. The firm has some 300 attorneys in thirteen offices throughout the United States, including San Francisco, San Diego, Sacramento, Los Angeles and Orange County. The firm specializes in trial practice and business litigation.
About the Huntington Beach Conference and Visitors Bureau
The Huntington Beach Conference and Visitors Bureau is the designated marketing organization representing Huntington Beach, California. One of the top Southern California vacation destinations featuring premier California beach resorts, Huntington Beach is the ideal location for a California family vacation, California weekend getaway or surfing trip . With eight and half miles of pristine California beaches, Huntington Beach is fast becoming a destination of choice for vacationers and business travelers alike. To plan your Surf City USA vacation or to learn more about Huntington Beach, visit the Huntington Beach Conference and Visitors Bureau Web site at www.surfcityusa.com or call 800-729-6232 for a free visitors guide.
Surf City USA® is a registered trademark of the Huntington Beach Conference and Visitors Bureau. All rights reserved.