Florida Keys News
Monday, March 29, 2010
Guesthouse wins battle in war of words

A U.S. Patent and Trademark Office appeals board has denied summary judgment requests in a case involving a local lodging group trying to strip a guesthouse of its trademarked name.

The Key West Innkeepers Association claims that Key West Bed and Breakfast is too generic and wants other guesthouses to be able to use the wording to promote their businesses, especially online.

The Trademark Trial and Appeal Board said in a March 17 order that the association did not meet the standard for summary judgement in trying to prove that the business' entire name is generic, not just the phrases "Key West" and "bed and breakfast."

Key West Bed and Breakfast, owned by Jody Carlson and also known as The Popular House, argues it has acquired distinctiveness in its 20 years in business, meaning people associate the phrase with its services, according to attorney Oliver Ruiz of Miami-based Malloy Malloy, PA. Ruiz's request for a summary judgement in favor of his client also was dismissed.

The attorney for the innkeepers association disagrees.

"In this case, the registrant, Jody Carlson, had admitted that her mark is generic, and all that the innkeepers association is striving to do is protect tourism as well as the ability to accurately describe the services that they provide," said Robert Thornberg of the Miami office of Allen Dyer Doppelt Milbrath & Gilchrist, PA.

The appeals board also said the innkeepers association cannot use the argument that the name of the guesthouse is "geographically descriptive" because it did not plead that reason in its original petition to cancel. Under trademark law, any term deemed geographically descriptive, such as the name of a city, cannot be trademarked.

The innkeepers association also tried to have the trademark canceled on grounds that the trademark application was filled out in Carlson's name, but was submitted by a corporate name. The board considered this a correctable error and not enough of a reason to revoke the trademark, Ruiz said.

"The bottom line is that the Trademark Trial and Appeal Board has denied both parties' motions for summary judgment. The dates for trial have been set, and we look forward to resolving this in a way that protects the right of businesses to describe what they do and where they do it," said Ian Whitney, president of the innkeepers association, in a prepared statement.

A final decision on the matter is not expected until late summer. The next step is a testimony period for both sides, which ends on July 14, followed by a rebuttal period and oral arguments before the board renders a decision, Ruiz said.

Despite how the board rules on the trademark registration, Carlson may still have the sole right to use the name under common-law trademark rights, said Malloy & Malloy attorney Francisco Ferreiro.

According to the U.S. Patent and Trademark Office, federal registration is not required to establish rights in a trademark. Common-law rights arise from actual use of a mark. Generally, the first to either use a mark in commerce or file an intent to use application has the ultimate right to use and registration, the agency says on its Web site.

The innkeepers association filed the cancellation petition in November 2008 after the Key West Bed and Breakfast, which was a founding member of the innkeepers association in 1994, issued cease-and-desist letters to other guesthouse owners who were using the phrase in their marketing.

"We were losing our identity because other guesthouses started using our name," Carlson told The Citizen at the time.

Carlson said the trouble began as far back as 2005 when Google AdWords began selling advertisements related to keyword searches, such as "Key West bed and breakfast."

"So other guesthouses started adding it to their name to get their placement higher," she said. "Our own guests couldn't find us because when they went looking for us, 14 other guesthouses came up. ... Some of the other guesthouses are using 'Key West bed and breakfast' more than a dozen times on their site."

The association and its attorneys argue that anyone who has a bed and breakfast in Key West should be able to use that term.

"Every Key West bed and breakfast should be able to market themselves as such, and we expect that this will be the final outcome of this two-year saga," Whitney said Wednesday.

The association also claims that Carlson has created confusion by calling her guesthouse by two different names.

Carlson purchased the guesthouse in 1987 and has been calling it the Key West Bed and Breakfast since that time. The Popular House is the incorporated name registered with the state.

Carlson said when she and her then-partners bought the property in the 1980s, they planned to own several guesthouses, and intended for The Popular House to be the name of the parent company that would own and operate all of the properties. Carlson stuck with just one guesthouse.

amswary@keysnews.com

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