This story has been updated.
Atlanta BeltLine, Inc. says it has a responsibility to protect its Beltline trademark in the interest of the public, which is why ABI aggressively pursues people who use all or parts of the Beltline name.
“ABI has a fiduciary responsibility to protect this public asset in the interest of the public,” ABI spokesperson Ericka Davis wrote in a letter. “We realize that in many ways we aren’t going to please everyone on this issue but please be assured that our every intent is to protect the name and image of this amenity FOR the public so that citizens can continue to have civic pride in it.”
However, despite having spent more than $350,000 specifically to protect the trademark, ABI does not seem to have a clearly established standard way of enforcing the trademark. It’s also not stopping multiple businesses from using the name.
A review of business filings, licensing agreements, trademark guidelines and other documents, show numerous Atlanta businesses and a few websites continue to use the word without any licensing agreements with ABI.
The Georgia business registration site shows 39 active businesses that contain the word “Beltline.” Of those, at least 27 have registered since ABI obtained their trademark in 2008. Other entities use the word Beltline tagged onto developments or businesses, such as “Beltline Kroger,” even though that is not the official name.
In the past, ABI has enacted licensing agreements with three for-profit businesses, charging them from $1,000 to $10 for use of the word “Beltline” either in their business name or in a website domain. Those agreements have now expired, but all three businesses continue to use the word “Beltline.”
There are also more than 200 domain names containing the word “Beltline.” Many of those are not active domains. But domains like www.beltlinebasecamprovisions.com and www.thebeltlineteam.com have had active websites without having a current licensing agreement with ABI. Beltlinebasecamprovisions.com was active as recently as last Thursday, but is currently offline.
“We have not been provided any information to support your claim regarding the businesses that you refer to in order to be able to speak to them, but note that entities that have used ‘Beltline’ in their name prior to our trademark filings or use of ‘Beltline’ may have a defense of prior use, others may be among those we are addressing, and there may be others that we need to pursue,” Davis wrote in response to a question about how ABI decides who gets to use the Beltline trademark. “We do not target non-businesses over businesses or vice versa. The issue is whether the particular use violates the trademark rights either by creating potential confusion as to source, sponsorship or affiliation with respect to ABI and its marks or dilute the marks.”
ABI has frequently and aggressively pursued some people and entities using the word “Beltline,” most recently asking Jessie Fream to stop using the name on her Facebook group Humans of the Atlanta Beltline. Fream created the group as hobby, posting pictures and stories from people who walk the popular multi-use trail.
In 2013, ABI sued the Andrew Realty Group in U.S. District Court for using the word “Beltline” as part of their business. ABI won the lawsuit, and the court ordered the real estate group to stop using the name.
After entrepreneur Michael Tavani launched Beltline & Co., a tech incubator in Ponce City Market in 2014, ABI sent him a cease-and-desist letter. Rather than fight the issue, Tavani chose to change the name of his business, and blogged about his decision on Medium.
Prior to launch, Decaturish.com, the owner of Atlanta Loop, registered www.beltlinenews.com, www.thebeltlinenews.com andwww.datelinebeltline.com. Within days of registering these domains, Decaturish was served with a cease-and-desist letter in which ABI demanded we relinquish the domain names to their control.
It is not clear how many cease and desist letters ABI has sent out over the years. Davis said ABI has sent out more than 70 letters regarding the 200 domain names, many of which have the same registrar. Of those domains, ABI now controls 50.
The costs for this aggressive protection adds up to more than $350,000 in legal costs since December 2009. ABI has billed 1,028 hours in fees and costs adding up to $349, 772. They have 47 hours of work in progress worth $15,436 in fees and costs.
According to ABI trademark guidelines, no third parties are allowed to use the word without a license.
“All third parties seeking to use any of the ABI Marks in connection with any products or services or as other indicia of source must obtain a license from ABI, except for news organizations referring to the ABI Marks for news reporting purposes and not as a name or mark in connection with the production, marketing or sale of any product or service,” the guidelines state.
ABI did not provide a clear explanation of why they have not prevented some businesses from using the word.
ABI provided Atlanta Loop with all their licensing agreements. In three of the agreements, the entity did not pay ABI any money as part of the agreement. Of those three agreements, one is with the Atlanta BeltLine Partnership, another was for use of the word in a book and a third is with a non-profit farm that ABI partners with.paid any money related to the agreements.
In three other licensing agreements, businesses paid ABI to use the word. FCS Urban Ministries paid $500 to use the name Beltline Bicycle Shop for one year, but was specifically prohibited from using a domain name. The agreement included providing 3-4 bicycles available for ABI staff to use at their convenience. That agreement expired in July 2015.
Derrick Duckworth, with the realty group The Beltline Team, paid $10 to use the word related to marketing of real estate services, including use of the URL www.thebeltlineteam.com. That agreement expired in December 2013, but the realty team still uses the web domain.
Last year, Rival Entertainment paid $1,000 for use of the word and domain name with its neighborhood festival “Blue Moon Beltline Boil.” The agreement included numerous stipulations including free tickets for Atlanta Beltline Partnership staff and volunteers. That agreement expired in December 2015, but the website is still active.
When asked how ABI decides how much to charge for licensing agreements, Davis said trademark counsel makes those decisions.
“Additionally, we are not a fundraising entity,” she wrote. “Our priority and responsibility is to protect the trademark as opposed to monetizing it.”
ABI uses a trademark monitoring service that alerts them to the use of ABI’s registered marks, Davis wrote.
After getting an alert, legal counsel reviews it to if there is a violation, Davis wrote. Sometimes the Office of Communications reaches out to the individual or organization to make them aware of the registered trademarks and the option to request a license agreement. Then the Office of Communications notifies the legal department of their response.
In the final step, CEO Paul Morris consults with the legal department to make the final decision on how to proceed.
This story has been edited to add information about the money ABI has spent on legal fees to protect its trademark.