(To the tune of Hotel California)
Once in Northern Virginia, a trademark was filed
A Mexican company a long list compiled
Cosmetics and phone cases, purses, hair gel and shoes
The list went on for six classes, just what did they have to lose?
During examination, a disclaimer was sought
The applicant gladly complied, any fear of refusal was for naught.
Then the mark was published, but the Eagles they did see
Their lawyers got involved
Said you can’t use this for free
Registering HOTEL CALIFORNIA
Such a lovely try (such a lovely try) Such a lovely cry
Don’t even try to use HOTEL CALIFORNIA
For any goods (for any goods) in our neighborhoods….
What Can That “Song” Possibly Mean?
Hotel California Baja, LLC filed an application to register the mark HOTEL CALIFORNIA for a long list of goods. The Eagles, of course, are indelibly etched into the American music scene by their 1976 hit Hotel California. In addition to the name of the song and album, over the years the Eagles have used HOTEL CALIFORNIA in connection with all kinds of merchandising including t-shirts, glasses and mugs, posters, key chains and refrigerator magnets. However, the Eagles never sought trademark registration for HOTEL CALIFORNIA in connection with these collateral goods. Regardless, these goods are similar (and even identical in some respects) to the goods Hotel California Baja listed in their application. The Eagles have now opposed registration of HOTEL CALIFORNIA based on their use of the HOTEL CALIFORNIA mark for merchandising goods.
Many times artists and entertainers will seek registration of things like band names, logos or album titles, but individual song names not so much. Sometimes, though, song titles become important to overall band merchandising. While registration of a trademark will secure Federal trademark rights, whenever a party uses a mark they will begin to accrue common law rights. Here, the Eagles did not seek registration of HOTEL CALIFORNIA before, so they are proceeding based on their common law rights in the mark. These common law rights can provide priority and prevent another party from using the same or a confusingly similar mark. In this case, it is entirely possible then that the Eagles’ prior use of HOTEL CALIFORNIA for merchandising items will preclude registration of the Hotel California Baja LLC application.
Takeaway: Search Registered and Non-registered Trademark Uses
What this situation teaches is that when considering whether to adopt a trademark it is important to look at not only Federal (and state) trademark registrations, but also look at non-registered common law uses of a mark. A good, thorough trademark search will look for these common law uses and, possibly, avoid problems like these.
If you are considering adopting a trademark to identify goods or services, contact one of our Intellectual Property attorneys to discuss your options and the best strategy for searching your marks.
Photo above Courtesy of Wikimedia Commons