United States (Virgin Islands): Court Cancels “St. Thomas Carnival” and “Virgin Islands Carnival” Trademarks

The U.S. District Court for the Virgin Islands in Case No. 3:22-cv-0019 has canceled the federally registered trademarks “St. Thomas Carnival” and “Virgin Islands Carnival,” dealing a major setback to the Virgin Islands Carnival Committee (VICC) in its dispute with the Government of the Virgin Islands.

The court also dismissed all federal claims brought by VICC against the government and individual defendants, granting the defendants’ motion for judgment on the pleadings. The dispute arose following the passage of Act No. 8153 in 2019, which created a Division of Festivals within the Virgin Islands Department of Tourism to manage and promote carnival events.

Background of the Dispute

The St. Thomas Carnival dates back to 1952, with VICC later incorporating as a nonprofit in 1976. In 2004, VICC applied to register “St. Thomas Carnival” and “Virgin Islands Carnival” as trademarks. Although initially rejected as generic and geographically descriptive, the marks were eventually registered in 2007 after appeal.

Relations between VICC and the government deteriorated after the 2019 legislation. In 2022, the government promoted events under similar names, including “St. Thomas Carnival V.I.”, prompting VICC to file suit alleging trademark infringement and unconstitutional taking.

Court Finds Marks Generic

Relying on a prior Third Circuit ruling, the court found that the trademarks were generic and geographically descriptive, making them ineligible for trademark protection. The court noted that “Carnival” is a common descriptor for festivals across the Caribbean, while “St. Thomas” and “Virgin Islands” are geographic terms that cannot indicate a unique source.

Because the marks were not legally protectable, the court dismissed VICC’s trademark infringement claims.

Trademark Registrations Canceled

The court also granted the government’s counterclaim seeking cancellation of the trademarks based on their generic nature. Citing trademark law and precedent, the court held that generic terms cannot function as trademarks and may be canceled at any time.

As a result, both “VIRGIN ISLANDS CARNIVAL” and “ST. THOMAS CARNIVAL” registrations were canceled.

Fifth Amendment Claims Rejected

VICC also alleged unconstitutional taking of property, including trademark rights, office space, and organizational materials. The court rejected most of these claims, finding no protected property interest in the trademarks.

Although the court acknowledged that VICC plausibly alleged seizure of certain property and records, it ruled that the claims were barred by the applicable two-year statute of limitations.

Case Outcome

With all federal claims dismissed and the trademarks canceled, the court declined to exercise jurisdiction over remaining local claims. The case, VI Carnival Committee, Inc. v. Boschulte, was decided on March 31, 2026.

The ruling clarifies that generic and geographic event names may not qualify for trademark protection and highlights the importance of distinctiveness in trademark registration.