Although not the title to an Eagles’ song like “Hotel California,” Hotel Chicago is in the news as it is at the heart of a trademark dispute. As I was booking a room at the Fairmont in Chicago for next month, I must admit I thought for a second about changing my reservation to the Hotel Chicago Autograph Collection hotel by Marriott to see what all the fuss is about.
LHO Chicago River, LLC (“LHO”) owns Hotel Chicago, a boutique hotel that is part of Marriott’s Autograph Collection hotels. Shown below.
LHO is suing Joseph Perillo, Rosemoor Suites, LLC and Portfolio Hotels & Resorts, LLC (collectively “Defendants”) who opened a new “Hotel Chicago” on Jackson Boulevard in Chicago. It is located near LHO’s Hotel Chicago.
Earlier this year, Defendants filed two intent-to-use applications for the HOTEL CHICAGO mark. The first intent-to-use application was for the words HOTEL CHICAGO at U.S. Serial No. 86/910,607.
The second intent-to-use application was for the design plus words at U.S. Serial No. 86/926,504 below:
In support of its claims, LHO asserts that the Hotel Chicago manager registered the domain name of “thehotelchicago.com” in 2013 and has used the HOTEL CHICAGO mark since at least as early as February 2014. Interestingly, LHO did not file its own application for the HOTEL CHICAGO mark. Considering that there are 100 applications or registrations for the MARRIOTT mark in connection with hotel services this is surprising. Although I did not review all 100, I would anticipate that the majority (if not all) of these applications and registrations are affiliated with LHO and Marriott hotels.
LHO asserts that its Autograph Collection hotels are the fastest growing upscale brand hotels in the industry. Guests can enjoy the award-winning loyalty Marriott rewards program to obtain points for free nights and special treatment. In fact, my colleague and friend John just convinced me to sign up yesterday. Further, LHO asserts that it has spent a considerable amount of money and effort promoting the HOTEL CHICAGO and garnered lots of goodwill. LHO also alleges that approximately 246,000 rooms have been booked at the Hotel Chicago under the HOTEL CHICAGO mark.
Mr. Perillo has filed a motion to dismiss him in his individual capacity. The remaining Defendants have asserted the following affirmative defenses: (1) genericness; (2) geographically descriptive/no secondary meaning; (3) lack of notice; (4) non ownership, (5) lack of confusion, (6) senior use (likely based on the filing with the Illinois Secretary of State), and (7) trademark misuse/unfair competition.
Defendants’ attorney also told Law 360 that Perillo was the first to use the mark by notifying the Illinois Secretary of State in 2013 that he planned to use the name in relation to a hotel. This is likely the basis for the senior use affirmative defense. Significantly, he waited until 2016 to actually file his intent-to-use applications. Query if the case would have a different result if he had filed the intent-to-use applications in 2013 before LHO/Marriott had begun using the mark.
LHO has gone on record in an article in Law 360 stating that Defendants did not think it was generic when they filed an application with the United States Patent and Trademark Office for the mark to be registered. Moreover, in the Law 360 article, LHO’s attorney stated that “[e]ven if each of the constituent words, Hotel and Chicago, is generic, the phrase Hotel Chicago is not generic because Hotel Chicago is not the common name for hotel services.”
In addition, Defendants have brought counterclaims against LHO for unfair competition under Illinois Deceptive Trade Practices (815 Ill. Comp. Stat. 510/1 et seq.) and Illinois Consumer Fraud and Deceptive Business Practices (815 Ill. Comp. Stat. 505/2). They allege, among other things, that LHO should have known that the expression HOTEL and CHICAGO are descriptive if not generic for hotel services offered in Chicago. Indeed, there is evidence (an Office Action) that HOTEL CHICAGO has been rejected under a descriptiveness standard.
It should be noted that the Office Action states that:
Applicant should submit a disclaimer in the following standardized format:
No claim is made to the exclusive right to use “HOTEL CHICAGO” apart from the mark as shown.
Thus, it could be argued that the Office Action supports the position of LHO in Law 360 wherein it was stated that the phrase is not generic.
How do you think this dispute will come out?