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AVP parent suing city for trademark infringement

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Thousands of fans attended the 2010 new-look AVP NIVEA Tour Hermosa Beach Open. Photo by Ray Vidal

The company that bought the Association of Volleyball Professionals out of bankruptcy, DFA PVA II Partners, LLC, is suing the organizers of this year’s Manhattan Beach Open and the city of Manhattan Beach for trademark infringement, false advertising and unfair competition.

Last summer, USA Volleyball and the International Management Group partnered with the city of Manhattan Beach to host the professional volleyball tournament, which was sponsored by Jose Cuervo.

In the suit, the DFA PVA alleges that by hosting the Manhattan Beach Open, organizers created “confusion, mistake or deception as to the origin, sponsorship or affiliation of the tournament,” and has deprived the company of money that rightfully belongs to it. The suit also alleges that the organizers “used a confusingly similar imitation” of the AVP logo to market the event, “furthering the false impression that AVP was the source of the tournament.”

The company is demanding a jury trial.

The city has held the Manhattan Beach Open tournament for 51 years, said City Attorney Roxanne Diaz. “The city is the owner of that trademark,” she said.

In 2009, before it declared bankruptcy, AVP obtained federal trademark registration for “Manhattan Beach Open,” for entertainment services, “namely, arranging, organizing, and conducting athletic competitions, exhibitions, and community festivals and cultural events in the nature of volleyball games, tournaments and competitions,” according to the United States Patent and Trademark Office.

Federal registration is not required to establish rights in a trademark, according to the U.S. trademark office.

Dave Williams, former vice president of operations at AVP Pro Beach Volleyball Tour, said that before AVP declared bankruptcy and while the city was negotiating a contract for the tournament, the association noticed that the “Manhattan Beach Open” trademark needed to be renewed. So the association filed for trademark on behalf of the city, he said. “We were filing as a courtesy, not to stake a claim,” he said. Williams is the current managing director of USA Volleyball.

The trademark registration fell to DFA PVA when it bought the association out of bankruptcy.

“That registration, to us, doesn’t take away the fact that we are the owners of that mark,” Diaz said. “We have common law rights to that mark. It’s our event, not their event, and we will defend that.”

Common law rights arise from actual use of a mark. “This may allow the common law user to successfully challenge a registration or application,” according to the U.S. trademark office website.

The contract between the city and organizers of the event, which expires in 2013, states that the city agrees to “defend, and hold harmless USAV and IMG and the respective elective or appointive boards, officers, agents, attorneys and employees from any and all claims, liabilities, expenses, or damages of any nature, including attorneys’ fees” arising out of the contract. This includes “any legal action by a third party against the use by organizer of the name ‘Manhattan Beach Open,’” according to the contract.

“We’ll be handling the litigation,” Diaz said.

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