KALAMAZOO –– A nearly year-long federal court case between two Kalamazoo-area economic development organizations over the use various iterations of “269” in publications and marketing materials has been dismissed.
Southwest Michigan First, the regional economic development organization based in Kalamazoo, and Discover Kalamazoo, the area’s convention and visitors bureau, agreed to dismiss the case on Thursday, according to filings in the U.S. District Court for the Western District of Michigan.
The initial dispute stemmed from Discover Kalamazoo –– which has held trademarks on and used the region’s area code “269” for promotional and marketing materials since 2010 –– claiming that Southwest Michigan First had infringed on that mark by using 269 as the name for its bimonthly publication.
The initial lawsuit was filed last April, as MiBiz reported at the time.
U.S. District Court Judge Paul Maloney dismissed the case with prejudice, meaning Discover Kalamazoo cannot bring an action on the claim again. He did not award any costs or fees to either party in the case.
Coinciding with the dismissal in federal court, Southwest Michigan First withdrew its opposition to Discover Kalamazoo’s trademark application for “269,” according to a filing with the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board.
Discover Kalamazoo first applied for the trademark in December 2015. Southwest Michigan First filed its opposition the the mark on Jan. 25, 2017. The case progressed before the Trademark Trial and Appeal Board until May, when Discover Kalamazoo asked for a stay in the proceedings pending the outcome of federal lawsuit.
In a joint statement, the organizations said that they were “pleased to report they have resolved their trademark dispute to their mutual satisfaction, in a manner which respects the missions of both organizations. We both look forward to continuing to advance the interests of our regional community.”
Representatives from Southwest Michigan First and Discover Kalamazoo declined further comment on the matter. No terms of the resolution were disclosed or made public in the court filings.
Prior to the dismissal on Thursday, the case was progressing toward trial.
Previously, Judge Maloney in November denied Discover Kalamazoo’s motion for preliminary injunction that would have prevented Southwest Michigan First from using the 269 marks.
“The Court is not convinced that Discover Kalamazoo has protectable or valid marks for 269 as a stand-alone mark, registered or unregistered,” Maloney wrote in his opinion at the time. “On this record, the Court is also not convinced that consumers will be confused about the source of 269 Magazine.”
Discover Kalamazoo was represented in the case by the law firms Kerr Russell and Weber PLC and Bodman LLP. Southwest Michigan First was represented by Honigman Miller Schwartz and Cohn LLP.