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El Mocambo's iconic neon palms trapped in trademark dispute

The El Mocambo's iconic neon palm trees are locked in a trademark battle with an American company, says Toronto trademark and copyright lawyer Taras Kulish. See CityTV

Kulish, a senior associate at Steinberg Title Hope and Israel, is acting for The El Mocambo’s new owner, investor and Dragon’s Den star, Michael Wekerle.

Wekerle paid just shy of $3.8 million for the 80,000-square-foot Spadina Avenue building and the famous name in 2014 and is investing millions more in renovations, hoping to reopen next spring. 

The heart of the issue is the famous 22-foot twin palm trees on the neon sign outside the nightclub. The sign is currently undergoing a rebuild at a cost of $43,000, according to the Toronto Star. The image had been trademarked but during the years the club was shuttered, it wasn't renewed by the previous owners.

“The trademark fell dormant and Michael has plans to extend the El Mo’s brand beyond a live music venue,” Kulish tells AdvocateDaily.com. “Which is very prudent because you can’t make it just on a nightclub alone in Toronto like that.

"He wants it to be not only a place for live music, but where musicians can record and stream over the internet. There will be a recording studio, a record label and a store selling branded merchandise. So we have to get the trademark issue settled.”

Kulish says they didn’t anticipate any issues when they filed the trademark application to resurrect the neon palms in a couple of different configurations.

“They're a part of Toronto’s history, they’re legend and iconic,” he says. “Not just because of the Rolling Stones and Margaret Trudeau but because of all the musical history which has passed through there since 1948 when it was a Latin dance club.

When a trademark application is filed in Canada, there’s an opportunity for other trademark holders to object if they feel it impinges on their own emblem.

“A San Diego audio headset maker, Turtle Beach filed an objection claiming the El Mo’s sought-after palm trees, as a pair and one alone, impinged on their trademarks which are a single palm tree inside an inverted triangle and what appears to be two palm trees standing alone,” he says. “We’re in the discussion stage but we don’t feel our trademark is anything like theirs and we also have the history of the sign.”

The problem seems to turn on the fact that Turtle Beach not only uses palm trees in its trademark but that as a publicly traded company in the audio equipment space, it is claiming the value of its brand will be diluted, Kulish says.

He has filed a response to the objection and says the process could take up to two years to play out.

“It’s clear the neon palms of the El Mocambo are not some Johnny-come-lately interloper, there’s a long public history in Toronto with considerable brand recognition around the world," he says, adding he is hopeful the dispute will be resolved before the grand reopening in 2018, the 70th anniversary of the El Mocambo. "There is no choice but to follow this through because of the potential impact on the Toronto music scene, not to mention the brand."

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