What's in a name? Publisher claims trademark for name 'Whitefish'

A Whitefish publisher has threatened action against another local publishing company if it uses the word "Whitefish" in a travel planner it is contracted to create for the Whitefish Convention and Visitor Bureau (WCVB).

Ron Wright, whose Big Mountain Publishing company publishes Whitefish Magazine, the Whitefish Free Press and several other magazines, says he holds the trademark right to the name "Whitefish" when used for magazines dealing with rural and resort lifestyles.

Wright told the Pilot he registered the name "Whitefish" in 1997 after a Missoula attorney threatened action over Wright's use of the name. Whitefish patent attorney Patrick Burkhart, however, researched the issue for Wright and found the name had not yet been registered, so Wright had the name trademarked.

Wright says he also holds the trademark right to the name "Bigfork." He said he applied to register the name in July 2004 to protect his Bigfork Magazine. The U.S. Patent and Trademark Office (USPTO) at first rejected the application, saying he couldn't register a geographical name, but Burkhart clarified the issue, and the USPTO approved the application in December 2005, Wright said.

This is not the first time a geographical term was trademarked in Montana. In the early 1990s, French designer Claude Montana unsuccessfully laid claim to the state's very name itself.

The issue arose again in 2005 when David E. Lipson, a Las Vegas merchant banker, announced he had applied for eight trademarks that would give him exclusive use of the phrase "the last best place."

Lipson's announcement set off a vigorous round of public debate that eventually made its way to the Flathead, where Whitefish author Douglas Chadwick let it be known that he first used the phrase "last best place" in his 1983 book on mountain goats, A Beast The Color Of Winter. The phrase has grown in popularity, eventually joining "big sky" as a poetic — and commercial — expression for Montana.

On March 15, Wright sent a letter to city attorney John Phelps stating his objection to Old Town Creative using the name "Whitefish" for a new commercial magazine and then having the city "subsidize" the magazine through the WCVB.

Phelps advised the Whitefish City Council at their March 19 meeting that the issue was between the WCVB and Wright and not a city issue.

The Whitefish Chamber of Commerce has mailed out the lightweight version of Wright's Whitefish Magazine to potential visitors for several years. In 2006, the Chamber mailed or distributed about 10,000 copies of the twice-yearly publication.

The WCVB and the Chamber split up in July 2006, and the WCVB can no longer use Whitefish Magazine because, by ordinance, the WCVB can only promote its own members, said WCVB director Jan Metzmaker.

Chamber director Sheila Bowen, however, says the Chamber will continue to mail out Wright's magazine when requested.

"Visitors say they love Whitefish Magazine because of all the information it contains," Bowen said.

Wright told the Pilot he doesn't care if the WCVB uses the name "Whitefish" for a non-profit travel planner that will be mailed out to potential visitors, and he says he doesn't care if Old Town Creative, owned by John and Jen Frandsen, do the work of creating the travel planner.

He says he's concerned that if Old Town Creative owns the name and the magazine business, which includes selling ads, then it could one day split away from the WCVB and compete head-to-head with Wright's magazines. He also claims the WCVB did not follow state law in bidding out the creation of the travel planner.

Metzmaker, however, says the WCVB sent out requests for bids to seven companies and two replied — Wright and Old Town Creative. She said the WCVB board scored the two companies' presentations on specified criteria.

"The fact is, he got beat out," she said.

Metzmaker also said the 10-12 page travel planner is not a magazine and will not compete with Whitefish Magazine.

WCVB vice chairwoman Rhonda Fitzgerald supported Metzmaker's position in a reply to Wright's March 15 letter. Citing various passages from the USPTO's Web site, Fitzgerald suggested that "geographic terms or signs are not registrable as trademarks if they are geographically descriptive" of where goods and services originate.

She said there was no intention or desire on the part of the WCVB "to create any ambiguity that the WCVB Travel Planner is the same or related to Whitefish Magazine." Furthermore, she noted, several publications use the word "Whitefish" in their name.

"For example, the Whitefish Pilot is a trademark that does not limit your freedom to publish the Whitefish Free Press," Fitzgerald said.

In a response to Wright's editorial in the March 21 Whitefish Free Press, WCVB public relations manager Lisa Jones called Wright's action "sour grapes" over losing the bidding process to Old Town Creative.