Local clothing and lifestyle brand Mobtown Merch, whose “Mobtown,” “Defend the Delta” and “We started it” (Mardi Gras) memorabilia is available at Urban Emporium, G Harvell and Red Beard’s Outfitters, among other places, has filed a federal lawsuit against local startup company Moh-BEEL USA for infringing on its use of the phonetic spelling of the city’s name.
According to an 11-page complaint filed March 19 (posted below), Mobtown Merch has used its “moh-BEEL” mark on clothing and koozies since at least September 2016. On October 25, 2017, it applied to register the mark with the United States Patent and Trademark Office. On Feb. 27 of this year, the trademark was registered by the Alabama Secretary of State.
Allegedly, the defendant, Frederick F.B. Sims, doing business as Moh-BEEL USA, “hoped to trade on plaintiff’s efforts and expense by promoting a confusingly similar brand,” according to the complaint, which admits Moh-BEEL USA actually beat Mobtown Merch to the federal trademark office, providing an exhibit of the defendant’s application dated Sept. 28, 2017 — four weeks before Mobtown Merch made the same move.
But the plaintiffs contend “as competitors and Mobile, Alabama, neighbors, [the defendants] have been familiar with the plaintiff and its [Moh-BEEL] mark for at least one year,” yet “began deliberately, willfully and maliciously offering goods under the nearly identical MOH-BEEL mark.”
Mobtown Merch has listed five causes of action against Moh-BEEL USA including violations of the Lanham Act, Alabama State Trademark Infringement, Common Law Trademark/Service Mark Infringement, violations of the Alabama Deceptive Trade Practices Act and Unjust Enrichment Under Common Law.
Rebecca Maisel, a principal of Mobtown Merch and signatory on the trademark application, said she preferred to let the court sort it out, but the spelling belongs to them.
“We’re going to take this complaint seriously and we take our creative license seriously,” she said. “At the end of the day, he’s out there selling his products trying to make money off something we created.”
Sims referred questions about the lawsuit to Joseph Donaldson, who called himself “part of the Moh-BEEL USA organization.” According to Donaldson, there is no ill will, and Moh-BEEL USA is less of a clothing brand than it is a community organization and the sponsor of team in the recently established women’s softball league American Softball Association.
“This organization is one for recognizing everything positive coming from Mobile,” Donaldson said. “We go around and try to empower the community around us as we promote positivity.”
Donaldson said the lawsuit was the latest in a series of communication with Mobtown Merch “trying to scare us off,” but claimed geographical representations cannot be trademarked, and further said the addition of “USA” on the end differentiates one mark from another.
“It’s a free world and a big market — you look at any other city and there are tons of companies using the city’s name,” he said. “The city of Mobile owns ‘Moh-BEEL’ and its geographic representation — we cannot rightfully say this is ours. Nobody can claim it because it’s the city of Mobile’s.”
Meanwhile, Corrina Murray, owner of Optera Creative, was tickled Mobtown Merch filed the complaint. As early as 2013, Optera sold a T-shirt with a USS Alabama battleship logo proclaiming “It’s Pronounced Moh-Beel.” In addition to adopting the phonetic spelling of Mobile, Mobtown Merch subsequently created its own USS Alabama logo T-shirt, although it proclaims “Defend the Delta.”
“This is a subject that is close to my heart,” Murray said. “We originally did our products with a logo of our own design with that spelling beginning in 2013 … then at TenSixtyFive, I saw the Mobtown Merch stuff emerge and they took that spelling and had an illustration very similar to our battleship illustration.”
Murray said rather than litigate over the logo or spelling, Optera simply phased out their products, believing Mobtown Merch was contributing proceeds to the nonprofit Jake Peavy Foundation, the primary underwriter of TenSixtyFive.
“Traditionally you are trademarking the visual representation of the word,” she said. “The logo and the treatment of it … I thought maybe it was foolish on our part not to protect it more heavily at the time, essentially defending it by the frequency of its usage … we sold it and promoted it with our mark on it, but we didn’t invest in an attorney … we even won an ADDY award for that campaign,” she concluded.