IP Law Daily, TRADEMARK—3d Cir.: Registrations for ‘St. Thomas Carnival’ and ‘Virgin Islands Carnival’ are invalid, (Sep 22, 2023)

By Thomas K. Lauletta, J.D.

The marks are generic both as to “Carnival” and the geographic locations “St Thomas” and “Virgin Islands.”

The U.S. Court of Appeals for the Third Circuit affirmed a lower court decision denying the Virgin Island Carnival Committee (“VICC”) preliminary injunction to enjoin the Virgin Island Department of Tourism from using the phrases “St. Thomas Carnival” and “Virgin Islands Carnival” in connection with the annual carnival held in St. Thomas, U.S. Virgin Islands. Although the VICC owned U.S. trademark registrations for each of these terms, the appellate court held the marks were unprotectable because “Carnival” is a generic term, and “Virgin Islands” and “St. Thomas” are geographic descriptors of a generic term. Further, VICC failed to establish that its two marks had acquired secondary meaning (VI Carnival Committee Inc. v. VI Department of Tourism, September 21, 2023, Restrepo, F.).

In 1952, the appellant VICC was formed to revive the St. Thomas Carnival festival, which dated back to 1912. VICC, which was legally incorporated in 1976, worked in partnership with the Government of the Virgin Islands (GVI) to organize and run the festival. VICC acted as the primary organizer, but the Carnival depended heavily on the GVI’s financial and logistical resources.

After initially denying the VICC trademark registrations for “St. Thomas Carnival” and “Virgin Islands Carnaval,” the United States Patent and Trademark reversed its decision and registered the marks in 2007.

In 2019, the Virgin Islands Legislature created a Division of Festivals within the Department of Tourism. In 2022, the Division of Festivals promoted an event named “St. Thomas Carnival V.I.” and “St. Thomas Carnival Virgin Islands.” Thereafter, VICC sued GVI and two individuals in the District Court of the Virgin Islands alleging that the GVI committed trademark infringement under the Lanham Act. The district court denied VICC’s motion for a preliminary injunction against GVI, holding that VICC’s two marks were generic and could not be trademarked.

On appeal, the Third Circuit upheld the district court decision, noting that “Carnival” is generic because, rather than a distinctive event, the term commonly describes a genus of festivals that occur throughout the Caribbean (and elsewhere). Further, the court stated that the terms “St. Thomas” and “Virgin Islands” are generic because they are common geographical descriptors, attributed here to a general type of festival.

The appellate court also stated that even if the marks could be considered descriptive, rather than generic, VICC’s trademark infringement claim could not be upheld because it failed to present evidence sufficient to establish that its marks had acquired secondary meaning in the minds of the consuming public. To do this, VICC would have had to show that carnival attendees associated VICC as a single source of the terms “St. Thomas Carnival” or “Virgin Islands Carnival,” which it could not do because it had always worked in partnership with GVI to promote, organize and host the event.

The Case is No. 22-2658.

Attorneys: Terri Griffiths (Griffith Law Firm, PC) for VI Carnival Committee Inc. Michael R. Francisco, Department of Justice, for VI Department of Tourism.

Companies: VI Carnival Committee Inc.; VI Department of Tourism

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