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WHO OWNS 269? Discover Kalamazoo sues Southwest Michigan First over magazine title

BY Friday, April 28, 2017 12:56pm

KALAMAZOO — Two Southwest Michigan economic development organizations have taken to federal court to argue over who gets the right to use the term “269.”

The Kalamazoo County Convention & Visitors Bureau Inc., known as Discover Kalamazoo, filed a lawsuit against Southwest Michigan First Corp. earlier this month in the U.S. District Court for the Western District of Michigan. The suit claims that Southwest Michigan First (SWMF) is infringing on Discover Kalamazoo’s trademarks by using “269” as the title for its bimonthly magazine.

The court documents note that Discover Kalamazoo has used “269’ in promotional materials since 2010. The organization has held trademarks for “269 Cool Things to do in Area Code 269” and “Spirit of 269” since 2014.

“In blatant disregard for Discover Kalamazoo’s rights, (Southwest Michigan First) began publishing its 269 Magazine and using other marks that are confusingly similar to Discover Kalamazoo’s use of 269,” the marketing agency said in its lawsuit.

Discover Kalamazoo described the act as “willful trademark infringement” and said Southwest Michigan First’s use of the mark “is damaging Discover Kalamazoo’s brand, lowering community trust in its services, and diverting readers and advertisers from its own publications.”

The agency filed an application to trademark “269” in December 2015, around the same time Southwest Michigan First launched 269 Magazine. The U.S. Patent and Trademark office denied Discover Kalamazoo’s initial application because the mark was “primarily geographically descriptive.” Discover Kalamazoo refiled its trademark application for “269” as it pertains to “promoting recreation and tourism in and around the Southwest Michigan area.”

Southwest Michigan First filed an opposition with the U.S. Patent and Trademark Office, claiming that Discover Kalamazoo does not have superior rights to the mark 269, according to public records.

CEO Ron Kitchens and SWMF managing partner Heather Smith-Baker - through a spokesperson - declined to comment for this report.

In regards to the federal lawsuit, Discover Kalamazoo President and CEO Greg Ayers said in an email to MiBiz that the agency “has only taken this action as a last resort.” Previously, Discover Kalamazoo offered to negotiate a licensing agreement with Southwest Michigan First over the mark, but has yet to be taken up on the proposal.

“The options for resolution offered to SWMF as early as 2015 are still available, and we have been and continue to be ready to discuss these at their earliest convenience,” Ayers said.

As of April 14, Southwest Michigan First has suspended its opposition of the “269” trademark application for 30 days “because the parties are negotiating for a possible settlement,” according to documents filed with the Trademark Trial and Appeal Board.

While the two organizations have similar economic development missions, the case is further complicated because Southwest Michigan First executives have served on Discover Kalamazoo’s board.

Southwest Michigan First’s managing partner Smith-Baker — the editor in chief of 269 Magazine — currently sits on the advisory board for Discover Kalamazoo. Additionally, Kitchens also previously served on the same board around the time that Discover Kalamazoo began using “269” in its marketing materials in 2010, according to the court filings.

In the case, Discover Kalamazoo claims that both Kitchens and Smith-Baker were aware of and understood the agency’s rights to the trademark based upon their involvement with the organization.

According to court documents, Discover Kalamazoo spent more than $144,000 on print advertising with the 269 mark. The lawsuit lists numerous ways the organization uses the trademark in other promotional materials.

Trademark attorneys not involved in the case say Discover Kalamazoo needs to protect its investment and the goodwill the organization has built over the years.

“It’s important for trademark owners to try and hash out their rights because if you let someone use a confusingly similar mark, then the goodwill you have in your own trademark can lose its value,” said Jennifer Puplava, an attorney focused on trademarks and intellectual property at Mika Meyers PLC in Grand Rapids. “It’s unfortunate that these lawsuits happen, but sometimes they’re a necessity.”

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