SAOCA Trademark and Removal of a long-time member

The SAOCA was created in 2002 to “promote interest, education, restoration, and preservation of all Rootes Group vehicles, with emphasis on the 1959-1968 ‘series’ Alpines.” While we have certainly had our challenges, I am confident that we have continually met that objective over the past 18 years. Just speaking personally, I cannot imagine owing an Alpine in 2020 without the help, guidance and support of our fellow members.

The board recently became aware of a new challenge to our organization: In February of this year, Bob Webb applied for, and was subsequently granted, the US trademark for the name “Sunbeam Alpine Owners Club of America”. It is apparent that Bob would have had no legitimate claim to the trademark and we have filed an appeal with the US Trademark Office. We are confident that our appeal will be successful based on the evidence we provided to the Trademark Office. The Trademark Office has given Bob until early September to respond to our appeal. The Board will provide the membership of the SAOCA with further information as it becomes publicly available.

Following our bylaws, the Board temporarily suspended Bob’s membership to give him an opportunity to defend his actions. The deadline for that response has passed without any defense from Bob and he has now been removed from the club.

When I wrote to the membership last October to inform you of Bob’s 30-day suspension for violating our forum rules I said that the Board “take(s) no satisfaction from the action.” That statement applies here. The Board will provide more details on this matter once our appeal works its way through the Trademark process, but we believe it will be best for all concerned for us not to discuss this further until the dispute is resolved. Accordingly, I have ‘turned off’ the ability to respond to this notice. Please send me a private message if you have any strong feelings on this issue that you want the board to hear, but again, we have been advised not to discuss the specifics of the trademark or our appeal until after the process works its way through the Trademark Office.

Jim

 

Good news from the US Trademark Office (USTO)! We received the following from them:

By the Trademark Trial and Appeal Board:

An answer to the notice of opposition was due on September 1, 2020. The record shows that an answer has not been filed.

This case now comes up for consideration of Opposer's motion, filed September 3, 2020, for default judgment against Applicant for failure to file an answer. The motion is uncontested.

Inasmuch as Applicant failed to file an answer in this case, and failed to file a response to Opposer's motion, the motion for default judgment is granted. See Trademark Rule 2.127(a).

Accordingly, judgment is hereby entered against Applicant, the notice of opposition is sustained, and registration to Applicant is refused. See Fed. R. Civ. P. 55(b) and Trademark Rule 2.127(a).​

So, our name is protected, at least for now. Their decision doesn't say whether they will act on the second part of our appeal, which was a request that the Trademark be officially transferred to us. We know that the USTO is currently backlogged and working on cases in a triage mode, so we certainly won't be at the top of their priority list. If necessary, we will file the paperwork needed to officially own the trademark. But, at least no one can currently stop us from using our name.