Ocotillo trademark at issue in Chandler area - East Valley Tribune: Business

Ocotillo trademark at issue in Chandler area

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Posted: Friday, January 2, 2004 5:56 am | Updated: 4:31 pm, Thu Oct 6, 2011.

A prickly issue has arisen in south Chandler after a lawyer for a homeowners association asked surrounding businesses to stop using the name Ocotillo.

The Ocotillo Community Association, Ocotillo’s homeowners’ association, and Ocotillo West LLC, a company involved in much of the community’s development, have sent cease-and-desist letters to some businesses that either have Ocotillo in their title and/ or use the word in their advertising.

The letters were sent by attorney Howard Sobelman at the Phoenix law firm of Snell & Wilmer. The letter asks that the businesses remove the word Ocotillo, the name of a desert plant, from their titles and advertising, and to submit written confirmation of compliance.

No legal action has taken place or is planned, said Roger Stage, an association board member.

"Ocotillo West has obtained the registration of Ocotillo as a trademark in the state of Arizona," he said. "The concern we have is businesses that are frankly not even in the immediate vicinity of Ocotillo trying to make an association with the community . . . that in fact does not exist. It seems to be misleading the public really at our expense, our expense being this trademark that we have that has certain cache or value to Ocotillo West as well as the OCA."

Pacer Udall, an attorney with Mesa-based Schmeiser, Olsen & Watts, confirmed that Ocotillo West did obtain a registered trademark for Ocotillo on July 1. His firm specializes in intellectual property law.

"I certainly think they have a claim and they can proceed," he said. "It could go either way and it would be interesting if someone would step up and challenge that. But these businesses may not have the resources and time to put this to the test. So in that case the cease and desist letter worked to a degree. It put them on notice and caused them to stop."

At issue would likely be trademark infringement, or whether the businesses’ use of the word ocotillo misleads customers into thinking their goods and services are related to the master-planned community, Udall said.

Dr. Ryan Wade of Ocotillo Chiropractic received one of the letters. He referred comment to his attorneys, Darrow Soll and Glenn Bacal of the Phoenix law firm of Quarles & Brady.

Soll said Wade plans to respond to the letter and has no intentions of complying with the request to stop using the name. He also said Wade registered the name of his business with the state, and is prepared to go to court to defend his right to use Ocotillo in his business title.

Soll said the stage is set for a "showdown" between two of the largest law firms in Phoenix.

Club Tan of Ocotillo also received a letter. Its management wasn’t available for comment.

The word Ocotillo in reference to the area where the community is located is associated with "high-end golf course community, and there’s a lot of value in that trademark name," Stage said.

"In terms of its use, given the money, the expenditures and the good will that have been built up around the use of the Ocotillo name in that area of Chandler, there is a certain value to Ocotillo homeowners and they can say to themselves ‘I am living in an exclusive community’," he said. "The name itself carries certain value that perhaps other communities in the south Chandler area do not have."

Not all Ocotillo residents back the actions. Alexa Dalbik owns a home in Ocotillo and a business that’s listed in the telephone book as Ocotillo Water & Ice. She did not receive a letter, but believes any business in the area has the right to use Ocotillo in its title.

"I just don’t think there is any way you can copyright or patent the name of a community, its ludicrous," she said.

"I don’t see how anybody has the right to patent the name of a community or the name of a town, or an area for that matter. The association has nothing better to do with its time than waste our money. It’s just this big waste of time and the associations are bullies."

Not all businesses in the area with Ocotillo in the title received letters. Intel, for example, did not receive a letter despite its Ocotillo microprocessor manufacturing complex in south Chandler.

Also, the twice monthly paper, Ocotillo News, didn’t receive a letter.

"But it’s most likely because we have had a ‘handshake’ agreement with OCA and Ocotillo West to use the name since we purchased the paper four years ago, in 1999," said Laurie Fagen, editor/publisher.

"The original owners, Sandy and Dan Holland, also had the agreement with OCA and OW since the inception of the newspaper in 1995, and had trademarked the name, which transferred to us when we bought the paper."

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