Roanoke, VA – Roanoke attorney David Harrison has succeeded in cancelling the service mark of Sea Tow Services International, Inc. for performing certain services with a yellow-hulled boat. Smith Mountain Lake Marine Volunteer Fire/Rescue Department, Inc. has three emergency response vessels with yellow hulls. Sea Tow demanded that the Fire/Rescue Department cease performing certain services with its yellow boats claiming doing so infringed Sea Tow’s federally registered service mark.
The demand of Sea Tow raised concerns not only for the SML Fire/Rescue Department, but also for other fire and rescue departments in Virginia and across the country that also perform similar services with yellow-hulled boats. Because Sea Tow’s demand had such far-reaching implications, the SML Fire/Rescue Department decided it must consider its legal options and retained the services of The Harrison Firm, PC.
On behalf of the SML Fire/Rescue Department, attorney David Harrison filed a proceeding before the Trademark Trial and Appeal Board, an administrative board within the United States Patent and Trademark Office, seeking to cancel Sea Tow’s registered mark on three grounds: that Sea Tow’s mark serves the functional purpose of making its boats highly visible (functional marks are not entitled to registration); that Sea Tow’s mark had not acquired the “secondary meaning” needed for registration on the Principal Register; and that overriding public policy does not permit a private company such as Sea Tow to claim for its exclusive use the color yellow so as to limit or restrict government authorized entities in the manner in which they choose to provide for public safety.
The merit of those arguments was never reached because of the repeated and continuing failure of Sea Tow to comply with pre-trial discovery rules and with multiple orders of the Trademark Trial and Appeal Board that Sea Tow respond to certain interrogatories and document requests.
Mr. Harrison stated: “It is quite rare for judgment to be entered as a discovery sanction, but we thought the facts of this case justified it. The panel of three administrative trademark judges unanimously agreed and ordered the Sea Tow mark cancelled. We are pleased that now fire and rescue departments throughout the United States that use yellow vessels can provide their public safety duties without concern of infringement litigation by Sea Tow.”
SML Fire/Rescue has provided emergency response services on the 20,600 acre lake since 1975 and now operates a total of eight strategically located fireboats. It also provides critical support services to land-based departments in Bedford, Franklin and Pittsylvania Counties for emergencies near the shoreline.