IP Law Daily, TRADEMARK—D.V.I.: Virgin Islands Carnival Committee loses trademark battle as court cancels festival marks, (Apr 6, 2026)

By Wendy Biddle, J.D.

Disputed service marks are generic and unprotectable under the Lanham Act.

The U.S. District Court for the Virgin Islands dealt a decisive blow to the Virgin Islands Carnival Committee's efforts to maintain exclusive rights over the names "St. Thomas Carnival" and "Virgin Islands Carnival," canceling both federally registered service marks and dismissing all federal claims against the Government of the Virgin Islands and individual defendants. The court granted the defendants' motion for judgment on the pleadings, resolving a dispute that originated from the deteriorating relationship between VICC, a nonprofit corporation that historically organized the St. Thomas Carnival, and the Virgin Islands government following the 2019 passage of Act No. 8153, which established a Division of Festivals under the Department of Tourism (VI Carnival Committee, Inc. v. Boschulte, No. 3:22-cv-00019-RAM-GAT (D.V.I. Mar. 31, 2026)).

Background. The St. Thomas Carnival traces its modern origins to 1952, when former radio host Ron de Lugo organized a group to revive the cultural event after a period of suspension. In 1976, the organizing committee incorporated as VICC, a 501(c) entity, to enable it to apply for federal grants in connection with the Territory's Bicentennial Celebration. VICC generated revenue through private sponsorships, vendors, and ticketing while also receiving incrementally increasing government funding and free use of public spaces.

In December 2004, the Virgin Islands Carnival Committee (VICC) applied to register "St. Thomas Carnival" and "Virgin Islands Carnival" with the United States Patent and Trademark Office. Both applications were initially denied because "Carnival" was deemed a generic term and "St. Thomas" and "Virgin Islands" were considered geographical descriptors. Following appeal, the USPTO issued registrations for both marks in 2007, with VICC attesting it had made substantially exclusive and continuous use of the marks since 1992 and 1952, respectively.

Relations between VICC and the government deteriorated after Act No. 8153 passed in 2019. The statute broadly defined "festival" as "carnivals, music festivals, film festivals, food festivals, and other organized community and cultural celebrations and social events" and tasked the Division of Festivals with promoting and executing carnival celebrations. In early 2020, VICC revoked consent for the government's use of its registered trademarks. Nonetheless, the Division of Festivals began promoting a 2022 event branded as "St. Thomas Carnival V.I." and "St. Thomas Carnival Virgin Islands," marketing it as the 70th Anniversary of Carnival.

Case history. VICC filed its original complaint on March 28, 2022, seeking preliminary injunctive relief. VICC had brought four causes of action: an unconstitutional taking under the Fifth Amendment against all defendants; Lanham Act trademark infringement against individual defendants Boschulte, Turnbull, and Hart in their official capacities; breach of fiduciary duty and misappropriation against Hart individually; and Lanham Act trademark infringement against the Government of the Virgin Islands.

The district court denied the motion for preliminary injunction, finding VICC's marks were not valid or enforceable. VICC appealed, but on September 21, 2023, the Third Circuit Court of Appeals affirmed the district court's finding as a matter of law that the trademarks were not registrable due to their generic and geographically descriptive nature.

The defendants then filed the instant motion for judgment on the pleadings, which the VICC opposed.

Trademark infringement claims. Relying on the Third Circuit's decision, the court found that VICC's trademark infringement claims failed because the marks do not meet the elements of trademark infringement and are not entitled to protection. The court noted that to succeed on a trademark infringement claim, a plaintiff must prove its mark is valid and legally protectable, it owns the mark, and the defendant's use is likely to create confusion. The Third Circuit had definitively established that VICC's marks are generic combinations—"Carnival" being a common descriptor for a genus of festivals throughout the Caribbean, and "St. Thomas" and "Virgin Islands" being common geographical descriptors.

The court explained that generic terms are "by definition incapable of indicating source and therefore are the antithesis of trademarks." Without secondary meaning or distinctiveness, a generic term can never attain trademark status. The Third Circuit's ruling was dispositive of VICC's claims in Counts Two and Four of the complaint.

Cancellation of trademark registrations. The government defendants had filed counterclaims seeking cancellation of the trademarks on two grounds: fraudulent registration and generic nature. On the fraud claim, defendants argued VICC knowingly made false representations when applying for registration just months after a 2004 Virgin Islands court decision deemed the Carnival a government program with VICC as a "mere agent." However, the district court declined to find fraudulent intent, noting the 2004 decision addressed only whether VICC could be audited by the government, not trademark ownership.

Nevertheless, the court granted the defendants' second counterclaim for cancellation based on the marks' generic nature. Citing the Lanham Act provision allowing cancellation at any time if a registered mark becomes generic, and the Supreme Court's holding in Park 'N Fly, Inc. v. Dollar Park & Fly, Inc. that generic terms are not registrable and registered marks may be canceled if found generic, the court ordered cancellation of both "VIRGIN ISLANDS CARNIVAL" and "ST. THOMAS CARNIVAL."

The court dismissed two additional counterclaims seeking declaratory judgments as redundant and moot, finding "no doubt" they were rendered moot by the cancellation decision and dismissal of infringement claims.

Fifth Amendment takings claim. The court also addressed VICC's Fifth Amendment takings claim, which alleged multiple forms of unconstitutional taking: trademark infringement, unlawful eviction from headquarters, seizure of personal property and proprietary information including business records and historical archives, and the passage of Act No. 8153 itself.

The court found VICC lacked a legally cognizable property interest in the unprotected marks and failed to allege any property interest supporting its eviction claim. The court rejected the argument that Act No. 8153 constituted a taking, noting the statute created competition rather than intruding on exclusive dominion, and that neither party possessed exclusivity over organizing carnivals or festivals.

However, the court found VICC did plausibly demonstrate a cognizable property interest in its personal property, proprietary information, financial records, and goodwill that were allegedly seized on January 24, 2020. The court noted these items, including passwords, organizational charts, vendor and volunteer contact lists, application forms, contracts, waivers, and judging criteria were held for over three years.

Despite finding a plausible taking as to this property, the court determined the claim was barred by the two-year statute of limitations applicable to Section 1983 claims in the Virgin Islands. VICC filed its complaint on March 28, 2022, but all alleged violations occurred more than two years earlier. VICC's attempt to invoke the continuing violation doctrine failed because the court found the acts did not recur on a regular basis and had "a degree of permanence such that the plaintiff should have been aware of his rights" when property was removed from its offices in January 2020.

The court declined to exercise supplemental jurisdiction over the remaining local claim against defendant Hart in his individual capacity for breach of fiduciary duty, as all federal claims had been resolved.

The Case is No. 3:22-cv-00019-RAM-GAT.

Judge: Molloy, R.

Attorneys: Terri L. Griffiths (Terri Griffiths, Attorney at Law) for The VI Carnival Committee, Inc. Ariel Marie Smith-Francois, Virgin Islands Department of Justice, for Boschulte.

Companies: VI Carnival Committee, Inc.

Cases: Trademark USPTO