The Case Of The Purloined Gymkhana

A few days ago, Jack Baruth reminded us that an autocross event organized by Gymkhana GRID was cancelled, because a company by the name of DC Shoes claimed the rights to the word Gymkhana. If I would have been in Gymkhana GRID’s, well, shoes, I would have told DC Shoes to pound sand. What happened?

On February 23, 2011, Mitch Milstein, VP, General Counsel Global IP of Quiksilver Inc, residing at 15202 Graham Street, Huntington Beach, CA, 92649, registered GYMKHANA for his client DC Shoes, Inc. which happens to live at the same address. He required trademark protection for Gymkhana , amongst others for “on-line journals, namely, blogs featuring information regarding sporting, recreational and cultural events and activities.”

Should you be doing a Gymkhana blog, watch out, Mitch Milstein might send you a cease and desist. I would ignore it.

Amazingly, the United States Patent and Trademark Office did a more than thorough job. They had refused the trademark on May 25, 2011 in a non-final office action. Not only because (doh!) Gymkhana Gymnastics Club, Inc. had the Gymkhana trademark since 1993. Also, because the trademark was too generic.

“The wording GYMKHANA means or refers to a form of motorsport similar to autocross. See attached definitions, webpages on the sport, and Wikipedia article. The below listed goods and services all feature sports, recreational, and cultural activities broadly or directly relating to motorsports and other street sports.”

Finally, the applicant was caught performing trademark suicide. Says the USPTO:

“Moreover, what appears to be applicant’s website uses the term “gymkhana” to refer descriptively or generically to the sporting activity. See attached screen shots of applicant’s website.”

If you ever want to assert a trademark, never get caught doing that. When I worked on the Kleenex account many years ago, half of our agency had a one day training session, in which their trademark lawyer pounded into us to “Never call a Kleenex a Kleenex.”

Wie bitte?

“It’s a Kleenex tissue! A trademark is an adjective! If you use it as a noun, we can lose the mark!” This is a little-known trap in the trademark law, don’t step into it.

Also, if you ever want to register a trademark, use the same tools the USPTO uses: Google the name, search it in Wikipedia, check whether its URL is registered. And please, check the trademark database.

Meanwhile the Gymkhana wars wage on. Mitch Milstein filed a Gymkhana trademark for “Belts, Footwear, Gloves, Headwear, Jackets, Pants, Shirts, Shorts, Socks, Sweatshirts, Swimwear, Undergarments, Vests.” Not all trademark examiners are equal. This one was published and is waiting for comments. If you want to print “Gymkhana” on your gymkhana team t-shirt, complain. Other Gymkhana marks have been applied for and are pending. If any trademark application comes even close to the matter of Gymkhana races, opposition notes should be immediately filed.

Gymkhana applications have been denied because the “mark is merely descriptive.” The USPTO now knows that Gymkhana describes “an equestrian or auto racing entertainment.” And just like someone can’t trademark “auto racing”, nobody should be able to trademark “Gymkhana”. At least not for race. However, the matter needs vigilance. Disputing a trademark before it is registered is easy. Striking it down after registration is tough and costly.

And just in case anybody runs out of websites, Wikipedia entries and blogs that show that “Gymkhana” has been a generic name since before Mitch Milstein finished law school, enclosed is a book a friendly TTAC reader sent us. “Sports Car Rallies, Trials and Gymkhanas” was published first in 1956, a revised edition in 1960. Even that book admits to an act of Gymkhana-thievery:

“Some years ago sports car drivers decided to appropriate and adapt a variety of standard track-and-field tests – the hurdle, the shot-put, the discus throw and the relays. From swiping the games to stealing the name was an easy step: The word “gymkhana,” well established in the lexicon of college athletics, thus became our term for ‘track meets wheels.’“

Stealing Gymkhana has a tradition.