Trademark Review - La Quinta Hotels, Kia, and Fab Again (September 2014)

Co-Existence Outside of the U.S. Might be Relevant to Obtaining a Permanent Injunction in U.S.

La Quinta has operated LA QUINTA hotels and motels in the United States since 1968.

Quinta Real operates QUINTA REAL luxury hotels in Mexico and has done so since 1986. In 1994 and again in 2007, Quinta Real announced plans to open a QUINTA REAL hotel in the United States, but has not yet done so. In the meantime, La Quinta opened several LA QUINTA hotels in Mexico .

La Quinta sued Quinta Real in 2009 to prevent them from using QUINTA REAL in the United States.The district court found a likelihood of confusion and granted a permanent injunction prohibiting use of QUINTA REAL for hotels in the United Sates. Quinta Real appealed that ruling to the Ninth Circuit Court of Appeals.

The Ninth Circuit affirmed the district court’s finding of likelihood of confusion, but remanded the case to the district court for further consideration of its ruling to grant a permanent injunction. The Ninth Circuit was concerned that a permanent injunction would bar Quinta Real from opening a QUINTA REAL hotel in the United States, while La Quinta would be free to operate LA QUINTA hotels in Mexico. The court did not rule that co-existence in Mexico is determinative and expressed no opinion on whether the district court should issue a permanent injunction. Rather, the Ninth Circuit’s ruling was that the District Court should consider the fact that the parties co-exist outside of the United States when deciding if granting a permanent injunction is fair and equitable.

La Quinta Worldwide LLC v. Q.R.T.M., S.A. de C.V., 2014 DJDAR 10437 (9th Cir., August 6, 2014).

K-9 CAR ALARM Prevents Kia from Registering KIA K9

Kia’s application to register the mark for automobiles was rejected based on likelihood of confusion with the earlier mark K-9 CAR ALARM for car alarm systems.

The Board ruled that the marks are highly similar and the goods are complementary in that car alarm systems are used as part of automobiles. The Board acknowledged that manufacturers and sellers of car alarms may not necessarily make and/or sell automobiles; however, third-party registrations submitted by the Examining Attorney indicated that companies that manufacture and/or sell automobiles may also offer accessories, such as car alarms, under the same mark. “As a result, there may be reverse confusion in the present situation if automobiles and car alarms were sold under confusingly similar marks, with consumers purchasing a car alarm under the mistaken belief that it emanates from or is authorized by the same source as their automobile. Or a consumer might not purchase a car alarm if he thought that the car alarm was designed only for a particular manufacturer’s automobiles.”

The Board found that the words “CAR ALARM” in the earlier mark was generic. Therefore, K9, the only distinctive portion of the mark, was virtually identical to the K-9 portion of Kia’s mark. The Applicant argued that K9 in its mark gives the impression the product is one in the line of KIA automobiles, subsequent in line to its KIA K7 automobile. KIA, however, did not submit any evidence to show that it offers a K7 automobile, let alone that consumers would recognize K9 in its mark as referencing other models or trademarks.

In re Kia Motors Corporation, Serial No. 85769874 (TTAB, July 24, 2014) [not precedential]

FAB AGAIN Fails to Show any Use for Live Performances

The Applicant sought to register the mark FAB AGAIN for "entertainment in the nature of visual and audio performances, namely, musical band, rock group, gymnastic, dance, and ballet performances." The Trademark Manual of Examining Procedure provides that entertainment services in the nature of performances, such as those rendered by a musical group, must be live. TMEP Section 1402.11(g). Thus, the specimens must show use in connection with a live performance before an audience. The Applicant submitted a webpage showing a music CD for sale, but with no reference to a live performance. When that specimen was rejected, the Applicant submitted a specimen showing a link to allow streaming audio from the album. The Examining Attorney also rejected that specimen.

The Board affirmed refusal of the application on the ground that the Applicant failed to submit an acceptable specimen showing use of the mark in connection with live performances. The specimens only showed use of the mark in connection with recorded entertainment, which is properly registered in Class 9 as a product.

In re Titan Music, Inc., Serial No. 77344197 (TTAB, August 20, 2014) [not precedential].