Travel-Related Trademarks Extend Beyond Physical Region: 1st Cir.

By Aditi Mukherji, JD on November 07, 2013 | Last updated on March 21, 2019

For trademark attorneys with clients in the travel industry, life is good. Last month, we discussed the First Circuit Court of Appeals' recent ruling in Dorpan, S.L. v. Hotel Melià.

But let's take a look at another major takeaway of the case: That a senior trademark user of a mark related to travel is entitled to trademark protection that goes beyond its immediate geographic region.

Gran Melià v. Hotel Melià

Plaintiff-appellee Dorpan is a subsidiary of Sol Melià, S.A., which owns and operates the largest hotel chain in Spain and third largest in Europe.

Dorpan has held several U.S. trademarks in the "Melià" mark since the late 1990s in connection with the hotel industry. Dorpan opened a Gran Melià about 80 miles outside of Ponce, Puerto Rico in 2007.

Meanwhile, defendant-appellant Hotel Melià has operated the Hotel Melià in Ponce, Puerto Rico, for over 100 years, although it had never registered for a trademark. The two Meliàs duked it out in a trademark infringement suit and removed the case to a federal district court in Puerto Rico.

Hotels 'n Other Travel Companies: The World Is Your Trademark Oyster

The district court granted Dorpan's motion for a summary judgment. The court didn't find a likelihood of confusion and found a lack of intent on Dorpan's part to profit from Hotel Melià's common law marks.

As far as the district court was concerned, Hotel Melià could operate in the Ponce, Puerto Rico region and Dorpan could operate everywhere else and the two trademarks shall ne'er meet. But that line of reasoning didn't fly with the First Circuit. To the contrary, the court concluded that the appropriate scope of Hotel Melià's mark likely extends well beyond Ponce, Puerto Rico.

The three-member panel reasoned that companies that cater to a wide geographic area -- such as hotels and other participants in the travel industry -- enjoy a broader geographic scope for their trademark rights.

In disagreeing with the district court's analysis -- that Hotel Melià was only entitled to use its mark in the Ponce area -- the court sent an interesting message to trademark attorneys: Trademarks that are designed to attract customers in distant places can surpass the reach of common law trademarks beyond the company's physical geographic area.

Related Resources:

Copied to clipboard