The City of Santa Monica has ordered a Ventura real estate figure to take down or significantly modify a Downtown sign which it claims purposely mimics the trademarked sign welcoming visitors to the city’s pier.
In July, attorneys for the Santa Monica Pier Restoration Corporation (SMPRC) issued a cease-and-desist notice to Jeff Becker, who owns the turquoise-colored sign facing the freeway onramp at California Street and the property on which it sits, alleging the sign’s intent “was clearly to transfer the good will flowing from the Pier Sign … to the City of Ventura for commercial purposes.” The letter insists the Ventura sign not only infringes on the pier’s federally registered service mark but also threatens their “valuable” licensing program, the royalties from which are used to fund “many activities on the Santa Monica Pier.” It ends with the demand for Becker to remove the sign, “as well as any confusingly similar signs.”
Ben Franz-Knight, executive director of the SMPRC, said there are several aspects of the Ventura sign which are “literally identical” to the pier sign, including its shape, color and fonts.
“It is considered a very unique example of neon signage, one that is recognized internationally as a symbol of not only Santa Monica but of Southern California,” he said of the pier sign, which was erected in 1940. “It really goes to the value of that symbol, the uniqueness of that symbol. … When it’s diluted, it lessens the value of that symbol.”
The Ventura sign, built earlier this year, greets travelers exiting Highway 101 at California Street by announcing their arrival in “Historic San Buena Ventura” and invites them to “Shop,” “Surf” and “Stay.” While Santa Monica’s advertises Sport Fishing and Boating, both prominently display the word “Cafés” in practically the same position at the bottom of the sign, use stars as part of the design and share a look associated with neon signs of the first half of the 20th century.
“The problem with the Ventura sign is that of all the possible configurations and signages available in the universe, somebody copied the pier sign,” said Bob Seldon of Seldon & Scillieri, the firm representing the SMPRC.
Becker declined to comment, saying only that the two parties are working toward a resolution. Franz-Knight said the SMPRC and Becker have discussed possible alterations to the Ventura sign — including changing the crown and repainting it with a different color — but no changes have yet to be made.
Unlike most trademark disputes, which typically involve sellable products, the issue here is not whether consumers will be confused by the similarities between the objects in question, but if the pier sign’s distinctive quality is diminished by the existence of another with similar features — a legal argument termed “dilution by blurring,” according to Mike Velthoen, an attorney with Ferguson, Case Orr & Paterson, a Ventura firm not involved in the case.
“If everyone used that mark, the specialness of the mark would disappear,” Velthoen explained. He agrees “some elements on the sign clearly look lifted from the Santa Monica sign,” but said there other “ambiguous elements” which most viewers would not associate specifically with the pier sign. Overall, “it’s a pretty weak mark,” Velthoen said.
In order to claim dilution in court, the SMPRC would also have to prove the sign is sufficiently famous, something Jim McDermott, also an attorney with Ferguson, Case, Orr & Paterson, believes they would have difficulty doing if a lawsuit were filed.
“If you go to someone in Kansas, would they know that sign as the Santa Monica sign? I’m not sure they can prove it’s famous throughout the United States,” McDermott said. “That’s a big hurdle they’d have to overcome.”
McDermott called Santa Monica’s accusations “silly.”
“There seems to be a trend where cities are more interested in creating brands and not filling potholes,” he said.