There are lots of ways companies and people try to get around the abandonment of trademarks in disputes, from claiming a “secret menu” constitutes continued use to simply asserting that having bought a company means the now defunct brands have been incorporated into the new company. But it’s simplicity that brings pleasure to me in my ripe old age, so I sort of appreciate this dispute over the trademark of the Electric Daisy Carnival music festival in which two semi-associated music promoters, one now a chef for the Williams sisters of tennis fame (not making that up), essentially claim that they allowed another music promoter to use the festival name for nearly two decades but didn’t intend for it to be abandoned.
There are actually two complaints before the USPTO to digest here, and the link above has a ton of back-story. The shorter breakdown is that the Electric Daisy Carnival festival put on by Pasquale Rotella has been in existence since 1997. It’s something of a rave festival or whatever the kids are calling it these days, draws in something like four-hundred thousand fans a year, and is a staple at the Las Vegas Motor Speedway. In other words, this isn’t some obscure get-together. Yet, despite it having gone on for eighteen years, former music promoter Stephen Enos, who now cooks for Serena and Venus Williams professionally, and current music promoter Gary Richards have filed separate complaints to cancel Rotella’s trademark. Rotella’s company, Insomniac, claims that this is a money-grab. Regardless of the motives, Enos and Richards both have uphill battles, given the clear abandonment of any trademark they might have had.
“Trademarks are ‘use it or lose it,’ they’re not like patents, where whoever thinks of it first wins,” said Daniel M. Klerman, a professor at USC’s Gould School of Law. “Even if there’s no doubt that [Richards or Enos] used it first, abandonment is a pretty standard defense. To say, ‘We haven’t used this in 20 years, but we always intended to revive it,’ that’s a hard thing to do.”
You would think that any complaint after all this time would have to come with an explanation for the time-lapse riding side-car. In this case, there isn’t any real defense even attempted. Let’s first get Enos’ take, since he filed his complaint first and we need to let him get back to whipping up Serena’s eggs benedict.
According to Enos’ petition, Rotella later used the Electric Daisy Carnival name without his knowledge to promote a festival at the Coliseum in 1997. Enos claimed that he allowed the festival to continue so as not to disappoint fans in the nascent L.A. dance music scene but that he never intended to relinquish the trademark. Enos’ attorney provided screenshots of previous Insomniac websites that said the name was “borrowed from Steve Kool-Aid’s original creation.” As Rotella continued to use the trademark through the ’90s and 2000s, dance music became a lucrative festival phenomenon in America, Rotella first registered the Electric Daisy Carnival trademark in 2002 (he registered “EDC” in 2012, and re-registered “Electric Daisy Carnival” in 2010 ).
Steve Kook-Aid was Enos’ industry name because the dance music scene is a odd, odd place brah. Anyway, as you can see above, his argument mostly consists of claims that he was just trying to be cool, yo, and can he please have a chunk of the Electric Daisy Carnival value now that it’s super successful? Well, unfortunately, there’s no “being cool” exclusion to trademark abandonment and the time-lapse between the allowed use and the complaint, even with the nod in Enos’ direction by Rotella, is pretty clearly abandonment.
Richards, for his part, used to partner with Enos’ event company. His explanation for the abandonment is essentially the same, but relies on “oral licenses” arguments in which he advocates not only for his own ownership of the trademark, but for Enos’ as well. The two of them apparently had no idea the other was filing these things.
Richards’ petition says that he and Enos began using the Electric Daisy Carnival trademark in 1991 and that they granted an oral license to Rotella to use the name in 1997. But Richards’ complaint said that he similarly never intended to turn over the rights to the trademark and that the mark belonged to him and Enos. The petition claims that Rotella “knowingly made a false, material misrepresentation of fact when he filed the Application, with the intent to defraud the United States Patent and Trademark Office by claiming that he was the true owner of the Mark.”
Even assuming that anyone buys Richards’ claim that they simply gave Rotella an oral license to use the brand, that wouldn’t explain why there haven’t been any claims over the subsequent decade since Rotella first trademarked Electric Daisy Carnival. Neither does it relate to the abandonment of the trademark in use by either party. Certainly there is no trademark dispute in the opposite direction coming from Rotella, which you’d expect if either Enos or Richards were throwing their own Electric Daisy Carnival festivals.
Sorry, guys, but abandonment rules here, even if you were trying to be cool twenty years ago.