Airline sues hotel for trademark infringement. DELTA v. MARRIOTT

Using a trademark in commerce is the key to acquiring trademark rights. The first user to use a trademark to brand goods is referred to as the senior user of a trademark. Subsequent users of a trademark are considered junior users. A senior user is granted priority to a trademark over junior users. In the United States a trademark user is not required to register a trademark to be granted rights to a trademark.

Registration of a trademark does strengthen the rights associated with a trademark and puts the public on notice that the trademark applicant has an interest in the trademark. If someone brands products with a trademark in a way that causes consumers to be confused with respect to the identity of the producer of a product, that can be considered trademark infringement.

When a plaintiff claims that their trademark is being infringed, the plaintiff must demonstrate that the defendant’s actions are likely to cause consumer confusion. Courts use several factors to determine whether a plaintiff has demonstrated a likelihood of confusion. These factors are generally referred to as the Polaroid factors. The name is derived from a 1961 trademark infringement case that introduced them. Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961).

The factors Polaroid vary slightly between the different Federal Circuit Courts within the United States, however the principle behind the factors are similar. The factors are: 1. Strength of the senior user’s mark; 2. Similarity of the marks; 3. Similarity of the products or services; 4. Likelihood that the senior user will bridge the gap; 5. The junior user’s intent in adopting the mark; 6. Evidence of actual confusion; 7. Sophistication of the buyers; 8. Quality of the junior user’s products or services; and 9. related products and services.

DELTA AIR LINES, INC., v. MARRIOTT INTERNATIONAL, INC., 1:20-cv-01125 (N.D.GA 2020) is a case which will depend on the Polaroid factors. The plaintiff in this case is a well known airline that operates in the United States and internationally. The plaintiff was established in 1925, and has grown into the world’s No. 1 airline by total revenue. In addition to air travel, the plaintiff also offers travel and hospitality services. The plaintiff has invested heavily in promoting its trademark which is reproduced above on the left.

The defendant operates hotels in several different counties including the United States. The defendant operates using the MARRIOTT trademark as well as 30 other famous or well-known hotel brands in the United States. In 2015, the defendant acquired Delta Hotel Limited Partnership (“DHLP”), a hotelier that operated solely in Canada, with no presence in the United States. After the acquisition the defendant changed the Delta Hotel trademark to one that closely resembled the plaintiff’s trademark. The defendant has also opened numerous “airport hotels” under the Delta Hotels Marks, and marketed the brand to consumers, including airline travelers. An example of the defendant’s trademark is reproduced above on the right.

The plaintiff asserts that the defendant’s branding change is a concerted effort to sow confusion and trade off on the plaintiff’s strong reputation and trademark rights. Online reviews of the defendant’s hotels note that consumers were confused into thinking that they were booking a room at a hotel operated by the plaintiff. The defendant has also filed oppositions to several trademark applications filed by the plaintiff in the United States and Europe.

Given all these facts the plaintiff filed a complaint for trademark infringement in March 2020. The complaint seeks permanent injunctive relief to stop the defendant’s infringing activity, as well as monetary damages to compensate the plaintiff from the harm suffered as a result of the defendant’s use of the Delta Hotels trademark. The complaint also requests declaratory judgement that the plaintiff is the senior user of the DELTA trademark and thus does not infringe on the defendant’s trademarks.

Given the plaintiff’s long history of using the DELTA trademark it is difficult to predict how the defendant will successfully defend itself. We will have to wait and see how the defendant answers the complaint.

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