Enforcing Hospitality Industry Trademark Infringement Claims
By Steven D. Weber Managing Partner, Stark Weber PLLC | July 28, 2019
Trademarks can be an integral part of a hospitality brand. Certain trademarks might express a brand in a way that is instantly recognizable to a customer. Based on that trademark, customers might make split second decisions on whether to make purchases. The success of a trademark may lead to imitations. Those imitations might be used in the same industry or market. When used in the same industry or market, the use of an infringing mark may confuse customers.
Customer confusion may decrease the amount of customers who are purchasing from a hospitality player who is the rightful owner of the mark. While litigation can be costly, a hospitality player that does not actively enforce the its rights in relation to its trademarks may risk surrendering any rights and benefits associated with those trademarks. Hospitality players should be aware of this risk when considering whether to enforce their trademark rights and when confronting infringers.
Federal law defines a trademark as "any word, name, symbol, or device, or any combination thereof--(1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this Act, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknow." Under the law, a person may include a firm, corporation or other organization capable of suing and being sued in a court of law.
When a hospitality player encounters a trademark that appears to be infringing on its rights, then they may send a cease and desist letter. The cease and desist letter puts an alleged infringer on notice that it is infringing on a mark. A cease and desist letter may cite case law and facts in support of the claims in the letter as to why a mark is infringing. In some instances, a cease and desist letter will make a demand with terms that the recipient can accept and comply with to avoid further action from the sender.
A cease and desist letter may set a deadline to respond. To the extent that a recipient receives a cease and desist letter, not responding or ignoring such a letter may have consequences. In at least some cases, a hospitality player may be able to resolve any infringement through a cease and desist letter and before engaging in litigation. In other instances, litigation cannot be avoided and a hospitality player should be wary of relying on sending a cease and desist letter to protect its rights.
Claims related to trademark infringement may arise under state and federal law. The Lanham Act, 15 U.S.C. 1114, sets forth at least one potential basis for seeking damages for trademark infringement. While the applicable law depends on the jurisdiction, at least some courts find that to prove infringement under the Lanham Act, the holder of the mark must show that the infringer used a registered mark in commerce without consent and that the use was likely to cause confusion. With respect to the first prong, an infringer may challenge whether any trademark is valid and whether the mark is registered. There may be other challenges as well.