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| Chilling Effects Clearinghouse > Weather Reports > Cities Making Waves: Dude, Where | 
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|  Cities Making Waves: Dude, WhereKristy Murphy, Samuelson Law, Technology & Public Policy Clinic, November 2, 2006 Abstract: In a gnarly move, the owners of two Santa Cruz shops have sued the Huntington Beach Conference and Visitors Bureau, claiming that the Bureau’s “Surf City USA” trademark is totally bogus. In the lawsuit, the shop owners contend the four trademarks Huntington Beach holds are only listed on the supplemental register, meaning that they do not have an exclusive right to use of the mark. “What we've said is, this mark is so weak and so limited that if it is valid at all, it does not extend to Northern California,” said Ted Herhold, a surfer and partner in the Palo Alto office of Townsend and Townsend and Crew, the firm representing the shop owners. Herhold said he decided to take on the case for free upon reading a newspaper account of the dispute after a day of surfing in Santa Cruz. In a gnarly move, the owners of two Santa Cruz shops have sued the Huntington Beach Conference and Visitors Bureau, claiming that the Bureau’s “Surf City USA” trademark is totally bogus. In the lawsuit, the shop owners contend the four trademarks Huntington Beach holds are only listed on the supplemental register, meaning that they do not have an exclusive right to use of the mark. “What we've said is, this mark is so weak and so limited that if it is valid at all, it does not extend to Northern California,” said Ted Herhold, a surfer and partner in the Palo Alto office of Townsend and Townsend and Crew, the firm representing the shop owners. Herhold said he decided to take on the case for free upon reading a newspaper account of the dispute after a day of surfing in Santa Cruz. This is the latest splash in an ongoing dispute between the cities of Santa Cruz and Huntington Beach over the "Surf City USA" designation. For years, both towns have called themselves Surf City. Huntington Beach began calling itself Surf City after the co-writer of the famous 1963 pop song of the same name moved to the city and gave it his blessing to use the title. Santa Cruz argues that it has been called Surf City since 1927, when a local newspaper bestowed it with that title owing to its reputation as the place where three Hawaiian princes first introduced surfing to mainland U.S. in 1886. In early 2006, the U.S. Patent & Trademark Office awarded the Huntington Beach Conference and Visitors Bureau four official trademark registrations, giving it rights to use the designation “Surf City USA” in ads, on toys, beach bags, hats, and other beachwear. Ten additional applications are still under review by the U.S. Patent & Trademark Office. Doug Traub, president and CEO of the Huntington Beach Bureau, recently unveiled a new “Surf City USA” logo on its Web site (www.surfcityusa.com), along with a three-paragraph warning to other, wannabe Surf City USAs that the designation belongs to Huntington Beach alone and that a "licensing agreement is required for commercial use of this name.” The Bureau also vowed to “pursue trademark infringements” and used phrases like “all rights reserved.” On Sept. 7, 2006, the Bureau showed that it was willing to defend its intellectual property when it sent a totally tubular cease-and-desist order to owners of Noland's on the Wharf and Shoreline Surf Shop in Santa Cruz, asking them to stop selling T-shirts with a logo pairing Surf City USA and Santa Cruz. What a bummer! Huntington Beach’s efforts to trademark the phrase prompted Santa Cruz to stop hanging loose and take action. “We have long had a better claim to that title and we're not going to just sit idly by and let them have it,” declared Mayor Mike Rotkin of Santa Cruz. The mayor has even written his own lyrics to the famous 1960s pop hit: “Well, Huntington Beach, we'd like to be pals now/But when you steal our name, you're acting like Vals now ... We'll shred the Lane and you will say/That we're Surf City, USA.” Santa Cruz has filed a formal complaint with the U.S. Commerce Department. The mayor of Santa Cruz has also challenged the Huntington Beach city council to a righteous surf-off to settle the matter, with the winner taking the name. Some observers say a more serious surfing championship would be a better way to decide. “Honestly a running competition might be the best answer,” says Chris Mauro, editor of Surfer Magazine. “They should let the title shift back and forth based on who wins each year — that would be a great incentive for both to work for the privilege.” Sen. Joe Simitian, a state senator from Santa Cruz has introduced a bodacious resolution in the state senate declaring that Santa Cruz is the true Surf City USA, but that any town can use the name if it wants (a necessary concession considering that cities like Surf City, N.C and Surf City, N.J. have already used the name). Simitian said he hopes the nonbinding resolution will help Santa Cruz's efforts to thwart Huntington Beach's trademark applications by putting the U.S. Patent and Trademark Office on notice that there are competing claims to Surf City USA. However, Sen. John Campbell, a Republican who represents Huntington Beach, points out that neither Santa Cruz nor Huntington Beach qualifies to be Surf City, under the terms of the classic Jan and Dean song, as neither place has "two girls for every boy.'' "I've done some research,'' Campbell said. "Neither city has two girls for every boy, so neither should be Surf City.''
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