Trademarks – Is a Little Mark Better than None at All?
In re Hartz Hotel Services, Inc.
Conventional wisdom holds that it is better, at least in the long run, to adopt and register a strong trademark than a weak one. Still, weak marks have their allure: they are easier to invent than strong marks and, as a recent precedential decision by the United States Trademark Trial and Appeal Board (TTAB) demonstrates, the weaker they are, the easier they may be to register. The ruling is In re Hartz Hotel Services, Inc., Serial No. 76692673 (March 19, 2012) [precedential], which came to my attention via John Welch’s THE TTABlog, one of my favorite IP blogs. Hartz Hotel Services, Inc. (“Hartz”) was trying to register GRAND HOTELS NYC for hotel services, clearly a very weak mark, and they faced a refusal on the basis that there would be a likelihood of confusion with a prior registered mark, GRAND HOTEL for, guess what, hotel services.
Given how close the marks were to each other and that the services were the same, one might easily agree that refusing registration to the junior user was the right thing to do. But in an ironic twist, the weakness of the prior registered mark (emphasized by evidence of numerous other registrations for “GRAND” hotel marks), worked in Hartz’s favor, and the TTAB reversed the refusal. The TTAB reasoned that the weakness of the senior user’s registered mark and the numerous other similar marks in coexistence with it gave distinguishing significance to even the slightest difference between the Hartz’s mark and the prior registered mark. Thus, the presence of the added “NYC” was sufficient to prevent a likelihood of confusion between the marks.
Had Hartz’s mark been nearly identical to a strong mark for the same services, there is no chance that Hartz could have won registration. This is because strong marks are afforded a much greater range of protection than weak ones, i.e., a likelihood of confusion is more readily found for a strong mark than for a weak one, even when the conflicting mark differs somewhat from the original. So, by picking a fight with a weak mark, Hartz won a registration.
Does the Hartz ruling prove that choosing a weak mark is smarter than choosing a strong one? Not when you consider how things look from the point of view of Grand Hotel Company, the owner of the prior registration for GRAND HOTEL. In applying conventional “DuPont factors” to assess likelihood of confusion between marks, the TTAB had so little regard for GRAND HOTEL that it permitted the registration of GRAND HOTELS NYC for exactly the same services. Could a mark be any weaker? Does Grand Hotel Company stand any chance in discouraging competitors from infringing its GRAND HOTEL trademark, save in the case of an exact match between the conflicting marks? Probably not. The GRAND HOTEL brand is destined to ongoing dilution by virtually any competitor that is willing to swim in such tepid waters.
Grand Hotel Company would have fared much better with a stronger mark, i.e., a mark that is relatively unique and that is a word or phrase that carries little or no obvious inherent connection to hotel services. So why do hoteliers (and other businesses) so often shy away from adopting strong marks? Because the lack of obvious inherent connection between the mark and the services makes it difficult for consumers to remember the brand, at least at first, and because the investment in time and advertising dollars required to cement that memory in does not pay off in the short run – recognition is not won overnight. Still, at some point a hotelier has to decide if they want to be an unmistakable Ritz-Carlton, Hilton or St. Regis, or just another GRAND HOTEL XXX. Companies that want to create and retain value in their brands take the high road and adopt strong marks. There’s no substitute for puttin’ on the Ritz.
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