Ever since Mike Stewart was seen tearing up Pipeline aboard a jet black Morey Boogie in the 80s, the all black colour combo has been regarded as a classic in bodyboard colourways.
But did you know the all black board, or more specifically the use of all black rails and pinlines, is a registered trademark? Neither did anyone else. But, according to one major US toy company, it is.
Internationally renowned toy company Wham-O has put a number of United States bodyboard manufacturers on notice after revealing they are infringing on a unique trademark which has been in existence for more than 30 years.
Jared Brown, Surf Brand Manger at InterSport Corp, owners of Wham-O and subsequent Wham-O brands Morey Bodyboards, BZ Bodyboards, Boogie Boards and Churchill Swimfins, confirmed he has sent out notices to board companies infringing on an “all black rails and/or black pinlines trademark” which was registered in the United States back in December 17, 1985.
“Since Wham-O is now under new management, we have begun to implement and take action against anyone that infringes on the Trademarks and Patents we now manage,” Mr Brown told Riptide.
“We are giving companies a sell-off period to sell off any remaining boards that infringe on our trademark of black rails and/or black pinlines.”
The trademark war could have huge ramifications for the US bodyboard industry, which is already on shaky ground following the global financial crisis and the collapse of the USBA Pro Tour.
If the trademarks and patents are upheld, only Wham-O companies, including Morey and BZ, would be allowed to make boards with a black rail and/or pinline. It is understood US based brands such as Toobs, Cartel and No.6 have received letters from Wham-O.
While the Hawaiian bodyboarding industry is regarded as stronger than the mainland, it is not exempt from the potential lawsuit, with all US States and Territories falling under the 31-year-old trademark.
It is understood Wham-O is only pursuing trademarks and patents infringed in the United States and Puerto Rico.
However Mr Brown said Wham-O does in fact hold trademarks and patents on its surf brands in other countries, alluding that major board companies outside the U.S, such as Australia and Europe, may not be out of the firing line just yet.
“All of the trademarks and patents we are pursuing are in the U.S. only,” Mr Brown said.
“The trademarks and patents do not permit anyone from selling, distributing, marketing, advertising, or producing products that infringe on the trademarks and patents owned by Wham-O.
“Wham-O does hold trademarks and patents on its surf brands in other countries, but currently, our main focus is on the U.S. & Puerto Rico.”
Mr Brown said Wham-O also has its sights set on the fin industry, specifically companies that use the famous “dolphin shape” that was developed by Churchill fins as well as its famous colour combinations. Mr Brown said he intends to send a cease and desist to the major Malaysian factory that is responsible for making fins similar to the Churchill dolphin shape.
“We are pursuing the trademarks and patents that Churchill Swimfins holds,” he said.
“It is not only the blue and yellow colour combination that Churchill holds. The other trademarks and patents are on the shape of the fin, the process on how the fins are made, and the colour combination of black and yellow.
“We will be enforcing this the same time as the board’s colours.
“If companies don’t reply to our notice of infringement or break the selloff agreement, yes legal action will be taken. If companies decide to keep producing, advertising, marketing, or selling of the infringed colours, legal action will be taken as well.
“We are giving companies the chance to resolve the issue without legal action and a chance to sell off remaining inventory within a reasonable time frame.”
Riptide reached out to a number of Australian and international board companies as to whether they had received notification. However, all requests for comment were denied until more details come to light.