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Perchville Makes Its Mark

By Jennifer L. Colagiovanni posted 01-28-2019 07:50


If you’ve ever attended the winter Perchville festival in the small city of Tawas, Michigan, your first thoughts are probably of polar bear plunges and ice fishing, not intellectual property rights. But it turns out a lesson in trademark protection can be found right along the shores of Lake Huron in the picturesque town.

In a dispute between a local trading post and the Tawas Area Chamber of Commerce, the U.S. Court of Appeals for the Sixth Circuit affirmed that the term Perchville is inherently distinctive and afforded protection under the Lanham Act. For decades, the Tawas Area Chamber of Commerce organized the annual Perchville festival each February, and it registered the name Perchville as a trademark in 2002. Dues-paying members of the Chamber could use the Perchville mark, whereas nonmembers were required to pay a $750 licensing fee. The AuSable River Trading Post wanted to make Perchville-branded apparel and began producing apparel without the Chamber’s permission. The Chamber sought a state court injunction and the Trading Post sued to invalidate the mark under federal law.

In concluding that Perchville was protected under the Lanham Act, the Sixth Circuit explained that “[n]o matter how you slice it, the term ‘Perchville’ is inherently distinctive.” It does not refer to a place; it only identifies a particular event (specifically, the annual winter festival in Tawas). The court noted that the word is fanciful; you cannot find the word in the dictionary or use it outside of Tawas in everyday conversation. Perchville bears a classic characteristic of a fanciful mark: “Someone made up the name for the sole purpose of serving as a trademark.” Furthermore, the word is not nonsense and also qualifies as a suggestive mark. It is a mash-up of two other expressions: perch (the fish) and -ville and requires the listener to use “imagination and perception” to glean the meaning.

An unlikely place to find a primer on trademark law? Maybe so. But I know I’ll be thinking twice about the IP implications of the festival moniker while drinking hot cocoa on the snow-covered shore this year.