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Vendors roiled by Route 66 trademark claim April 26, 2010

Posted by Ron Warnick in Businesses, Signs, Web sites.
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A company in the Netherlands that claims trademark ownership of “Route 66″ and its shield has persuaded Zazzle.com, an international retailer of custom-made products, to remove the listings of least two American vendors who have tried to sell Route 66-related products on the website.

The company making the claim is TemptingBrands.com, aka Route66Licensing.com. The domain owner, according to the website and a domain search, is Martijn Berkhout of Amsterdam.

I’m no trademark lawyer. But after checking several sources and my own research, I can report this with confidence:

  1. “Route 66″ and the famous Route 66 shield are in the public domain in the United States; no one here can make a trademark claim on it.
  2. However, someone in Europe has made a trademark claim of Route 66. As far as we know, it’s still in effect. In what European and other countries the trademark exists is unknown.
  3. Although vendors selling Route 66 products in the United States can do so without running afoul of trademark law, it may be a different story in Europe.

It’s being speculated that Robert Groeneveld, also of the Netherlands, is behind the new Route66Licensing.com effort as a silent partner, although there’s no proof. Groeneveld applied for a Route 66 trademark in Europe during the 1990s and, during a subsequent trip to the United States, tried to persuade U.S. businesses that sold Route 66 products to pay a fee for the alleged usage of his trademark.

Bob Moore, who was executive editor at Route 66 Magazine at the time, said that he told Groeneveld to get lost (in more colorful language) and threatened to have him arrested for trespassing if he showed up on the premises again.

Since then, it’s been nearly 10 years since anyone in the Route 66 community has heard about Groeneveld.

To elaborate on Groeneveld and the trademark/licensing issues, Oklahoma Route 66 expert Jim Ross said in an e-mail:

The shield is public domain in the U.S. but not in many foreign countries. He successfully obtained trademark rights in most European countries and possibly on other continents. Not sure. Publications are exempt, which is why books, mags, etc., can be sold in those countries without interference. I know for a fact that he successfully sued and forced a travel agency to stop using the shield, which put them out of business. There were others, but I can’t recall all of the instances. He knows he can’t claim rights in the U.S., but that hasn’t stopped him from trying to intimidate or deceive people into complying with his licensing agreements.

At least one company in Arizona and another in Wyoming saw its Route 66 products on Zazzle pulled after TemptingBrands.com complained. And other sellers, as this Zazzle forum post reveals, have encountered the same obstacles.

Johnnie Meier, a longtime advocate of Route 66 in New Mexico, observed this irony:

The interesting thing to me is that they have produced a route 66 video on their web site …  that includes copyrighted material from photographers and artists we all know.  So, they are clearly guilty of infringement themselves.

Zazzle.com and Route66Licensing.com have not replied to e-mails from Route 66 News on this matter.

Members of the Route 66 community, including the Route 66 Alliance, are deliberating their options.

However, in the meantime, Route 66 businesses should know that they can still sell products with the Route 66 shield in the United States without the fear of a trademark or copyright violation.

Comments»

1. RT - April 27, 2010

I say we produce our own Route 66 internet sales site, those of us in the know, and sell directly to Europe – then dare them to even speak to us about it? lol Nasty little thieving traitors to the world, what’s next, you guys think you can copyright the Great Pyramids or something? You should be ashamed of yourselves, and you better hope we don’t catch you on the REAL Route 66 anytime soon…

2. Billy Lenox - April 27, 2010

To me, copyrighting the Route 66 sign is improper and unseemly. I’m surprised that European copyrighting agencies allowed it. Copyrights protect one’s intellectual property and creations, not something like the Route 66 sign that’s been in the US public domain for over 80 years.

3. Darleen - April 27, 2010

It is my understanding that the movie CARS was originally titled Route 66 but had to change the name due the trademark claim. Pixar/Disney would have had distribution issues in Europe.

Ironic how Route 66 is our heritage but some ding-a-ling in Europe has the audacity to trademark it.

4. Ed - April 28, 2010

I foind it hard to believe they have the time or money to go after everyone here in the states.

I had to ‘chuckle’ a little after I heard this.

There is an ENTIRE shopping mall in the Czech Republic that is Route 66 themed and I truly think the owner will not change his business because someone has the ‘rights’ to the name / image.

5. Sal Paradise - April 29, 2010

The US government, ironically, is the ‘legal’ owner of any Route 66 business. In this case, the government can claim its rights under international law and ask any claims against Route 66 be dropped. It would be like an American judge saying the same applied for an company here using the ‘Berlin’ and suing Germans for using the word. I imagine the claims of this firm in Europe regarding Route 66 are small enough to have been missed by the feds. Actually, the State Dept. should be looking into this issue. The effected parties might want to contact them, ASAP. Just call and ask for Treaties and Enforcement.

6. Anthony Ross - May 3, 2010

My work of Route 66 has been removed from Zazzle. Apparently Zazzle is incompetent in matters of trademark law and public domain. Any help I can do to fight Zazzle and this pri*k in Europe sign me up.

7. Kristian Peters - August 4, 2010

I’m a german citizen and drove the Route 66. Now, I’d like to print some T-Shirts with photos and of course the Route 66 logo. I’ve heard about that disgusting behavior of “Tempting Brands AG” about claiming a right on a public domain and historic symbol. “Tempting Brands AG” holds three trademark registrations in the U.S. filed with the U.S. Patent and Trademarlk Office as well as three trademark registrations in Europe.

Link for US registration:
http://www.stoproute66licensing.com/index.php?option=com_content&view=category&layout=blog&id=52&Itemid=37

and the Link for EU registration:
http://oami.europa.eu/CTMOnline/RequestManager/en_SearchBasic
(just enter route 66 as search term)

Actually, they registered only these listed images… any variations shoud be allowed.

8. Scott Jennings - September 1, 2010

My business, Route 66 Guitars, also had items pulled in April, following a cease and desist filed with Zazzle.

We were not selling Route 66 merchandise, but rather we featured our company logo, which includes a rendered version of the Route 66 shield, on some of the items. We have used this logo and business name since 1988.

Zazzle refused to discuss the matter, or provide me with information on their legal counsel. I received an unsigned form letter only this morning (Sept. 1) from Tempting Brands claiming their trademarks apply only outside of the U.S.

Unfortunately this does not resolve the issue of selling on Zazzle, or the status of my logo’s protection overseas. I will be following up with the USPTO.

[email protected] - August 5, 2012

`hello Scott, any update on the saga?? Regards, from Ireland.

9. Toni Weel - January 8, 2013

Jim Ross is misinformed about the travel business that was put out of business because of a lawsuit. The results of that lawsuit were actually that the shield could be used to promote tours along the Route 66 as long as the Route 66 shield was displayed smaller than the company’s logo. That travel business thrived many more years with many tours along the Route 66.


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