Francis X. Donnelly

The Detroit News

Kalamazoo — Seldom is heard a discouraging word in the offices of Discover Kalamazoo and Southwest Michigan First. The two groups traffic in rote positivity as they sell the charms of southwest Michigan.

But a fight between the organizations is producing a stream of public discord: threats, lawsuits, angry outbursts, and accusations of deception and chicanery.

The source of the consternation is something that sounds benign — an area code: 269.

Discover Kalamazoo, which is the Kalamazoo County Convention and Visitors Bureau, created a marketing slogan in 2010: “269 Cool Things to do in Area Code 269.”

Six years later, Southwest Michigan First, an economic development group, began a publication named “269 Magazine.”

Discover Kalamazoo officials said they were the first to use 269 and, by doing so, had exclusive rights to the area code. Their application for a trademark is pending.

The two sides tried to work out an agreement where the publication could be named “269 Magazine” but couldn’t do so, leading to a two-year battle that has spread to federal agencies and federal court, where they swapped lawsuits.

To residents, the high dudgeon seems to be over low stakes. The “269 Cool Things” is featured most prominently on a free brochure, and “269 Magazine” also is free.

There are more important things to work on, said Adam Kapela, general manager of Kelvin & Co., a barbecue restaurant in downtown Kalamazoo.

“It’s silly to file lawsuits,” Kapela said. “They should focus on getting more people here.”

The feuding groups declined to discuss their dispute.

Nonprofit groups in Kalamazoo share many members, and these two organizations aren’t any different. Executives from Southwest Michigan First had served on the advisory board of Discover Kalamazoo since 2008.

On its website, Southwest Michigan First lists Discover Kalamazoo among 31 partners in economic development it extols “for their commitment to the spirit of collaboration.”

The two groups sit just 400 feet apart in downtown Kalamazoo.

Interviews in the no man’s land between the combatants, which includes two bars and a coney-island restaurant, yield much puzzlement. Customers and merchants aren’t sure what to make of the war.

“Shouldn’t they be doing more important stuff with their time?” asked Andrea Goodman, a customer at The Wine Loft.

Trademark battle

When Southwest Michigan First planned to start the magazine, it contacted Discover Kalamazoo officials in 2015 to let them know about the name, according to emails between the groups, which are contained in the lawsuits.

But Southwest Michigan First took it a step further, sending the other group a proposed consent agreement to allow it to seek a trademark for the name.

“Attached is an agreement ... to ensure we are not stepping on your toes,” Southwest Michigan First President Ron Kitchens wrote in a September 2015 email.

The email seemed to set off warning bells.

Discover Kalamazoo didn’t respond for two weeks and, when it did, it said its lawyer needed to review the matter, according to the lawsuits. The group eventually declined to sign the agreement because it would restrict its rights to the 269 trademark.

Its lawyer threatened to file a lawsuit over the magazine’s name, Kitchens wrote in an October 2015 email. Discover Kalamazoo denied it did so.

Two months later, Discover Kalamazoo filed an application with the U.S. Patent and Trademark Office to receive a trademark for 269.

It’s possible to trademark an area code as long as the applicant uses it in a distinctive way, patent experts said. Anheuser-Busch, preparing to market a craft beer tailored toward different regions, trademarked 15 area codes in 2011.

“They have to acquire distinctiveness,” said Mark Burzych, a trademark attorney based in Okemos. “(Groups have) spent enough money on marks that people know who they are.”

After Discover Kalamazoo filed for the trademark, the group received what it called a “berating” voicemail from Kitchens, according to its lawsuit. The group offered Kitchens a license to use 269 if he acknowledged the group had exclusive rights to the area code.

“If this is not of interest to you, then you need to create an original brand identity for your magazine,” Discover Kalamazoo President Greg Ayers wrote in a December 2015 email. “We are not in a position to become your creative team.”

Four hours after receiving the email, Southwest Michigan First applied for its own trademark, for 269 Magazine, according to the legal filings.

Suit and countersuit

The bimonthly 269 Magazine debuted in January 2016. Among its sections are Made in 269, Design in 269 and Around 269.

One feature, the 269 List, sometimes mimicked Discover Kalamazoo’s “269 Cool Things to do in Area Code 269,” even playing off its use of 269. A list in the spring 2016 issue showed two places to go boating, six places to bike and nine places to hike.

The magazine’s bid to trademark its name was suspended last year after the patent office said it was too similar to Discover Kalamazoo’s pending request, according to federal records.

Meanwhile, Discover Kalamazoo’s bid was placed in the patent office’s Trademark Official Gazette in November. The weekly publication shows the application passed initial hurdles and gives the public a chance to oppose it.

Southwest Michigan First filed such a challenge in January.

The group also reached out to their adversary with a proposal in March: It would limit 269 to the name of the magazine and attribute its use of 269 to the other group.

“Our motivation in sending it is to ensure that we do not get to a point that this matter is blown out of proportion in terms accelerating legal costs, loss of public funding and reputational damage,” Kitchens wrote to Ayers in a March 30 email.

Ayers said he was glad Kitchens finally acknowledged Ayers’ right to the trademark, but that he couldn’t discuss the offer until Kitchens dropped his opposition to Ayers’ bid for a trademark. But Kitchens’ attorney told Ayers’ lawyer the opposition wouldn’t be withdrawn until an agreement was reached.

Five days after the email, Discover Kalamazoo filed the lawsuit for trademark infringement in U.S. District Court in Grand Rapids.

It accused Southwest Michigan First, by naming the publication 269 Magazine, of trying to mislead the public and divert readers and advertisers from Discover Kalamazoo.

Southwest Michigan First filed a countersuit in June, saying the area code was too generic to trademark.

It also argued Discover Kalamazoo wasn’t the only entity using 269. Among others are 269 Design, 269 Holdings, 269 Lofts, 269 Motorsports, 269 Realty, 269 Rental, and 269 Print and Design, according to state records.

Based on the continuing legal filings in the twin lawsuits, it doesn’t appear the conflict will be going away anytime soon.

The owner of Tempo Vino Winery, which sits between the two warring groups, said they need to quickly work out their differences, maybe even over a glass of pinot grigio.

“(The fighting) looks bad for both organizations who are trying to promote the city,” owner Alex Mantakounis said.

fdonnelly@detroitnews.com

Twitter: @francisXdonnell