Six Flags St. Louis sues hotel for trademark infringement, ranked as second dirtiest

Hmm...I stayed at this hotel last spring. It seemed decently clean enough, with a great pool/entertainment area and VERY convenient location.

I guess that's not really the matter at hand...just thought I'd throw it out there.

There must be some legal backing to this otherwise there wouldn't be so many hotels listed as "Maingate" vs. Disney World in the proximity to Disney World.

^If you put Disney in your name and are NOT paying the Mouse/affiliated in some form - you WILL be sued. My understanding is they're a little less litigious than in previous decades...but that's probably because they're turning their attention to overseas markets. In England alone there were at least a dozen instances where I saw clearly unlicensed Disney-ania...

I think SF has every right to complain...

There's too much precedent for the hotel to have any choice but to change their name.

Except for the gazillion other hotels doing the same thing with the Six Flags name.

No one has really answered this definitively, but can you try to enforce this with one property and continue to allow others to do it?

Gonch - in addition to that, is there a time limit for SF to enforce their trademark?

If a particular hotel has been operating as "Days Inn - Six Flags" for 10 or 15 or 20 years, can Six Flags NOW decide they don't want the association when no legal one existed before (i.e. they aren't breaking a contract)? This is one of the reasons companies like Disney aggressively protect their trademark. If one is allowed to operate for too long, it becomes harder and harder to stop anyone else from infringing.

I would think, at the very least, if they are suing one, that it would apply to all of them as well.

There is some precedent that you have to defend your mark to, uh, defend it, but I'm not sure what the courts consider a reasonable effort to do so. I mean, do you need a full-time person looking for infringers? I would think not, but I'm sure burying your head in the sand isn't good enough either.

These are all good, valid questions. I don't know whether it's possible to file a blanket suit against "anyone using Six Flags name in the name of its hotel." It may not be feasible to file individual suits against everyone doing it. I also don't think this hotel can use the excuse that other places are doing it as a defense. They were caught; they were sued.

Jeff, I assume Six flags has a law firm that handles all their legal business (not an in-house attorney). I would think a firm should be able to dedicate a person to look for copyright or trademark infringements. Just last week, I saw an article that Springsteen was suing a club in NYC because a band playing there did 3 of his songs, and no payment was made to ASCAP or BMI. That's some thorough investigation there.

ASCAP and BMI are not a bankrupt amusement park chain that was worth a fraction of the music business at large. I doubt very much that's a luxury that Six Flags can afford. It doesn't matter if they're internal or not, law firms bill when they take a crap on your behalf.

RatherGoodBear said:
I also don't think this hotel can use the excuse that other places are doing it as a defense. They were caught; they were sued.

I absolutely think they can.

You can't pick and choose when to defend your trademarks, you either do or you don't.

Even worse that Six Flags points potential visitors to hotels doing this same thing as they can't claim ignorance. This is quite simply SF saying, "We don't want you using our trademark this way, but others doing the same thing can" - and I just don't see how that can fly.

That's exactly how you defend against this lawsuit - show cases where this type of use is (and has been) accepted and tolerated.

I think the rebuttal to ^that^ line of reasoning goes like this (same is prob true for Springsteen referenced above): "When we become aware people are doing it, we'll either get paid or we'll stop them from using our IP." And if there are people out there taking advantage of our IP that we DON'T know about, yet, that provides no protection to your usage/company...

I have to admit, that would be MY stand - and I would be liking my chances with a judge/arbitrator...

Let me make one key change to the last line of my post:

That's exactly how you defend against this lawsuit - show cases where this type of use is (and has been) knowingly accepted and tolerated.

But how do you prove "knowingly?"

...and judges are supposed to look favorably upon any agreements between parties, without consideration for whether both parties get fair value - meaning that any sort of offer/acceptance for use would be considered valid use. In this case, I'm thinking a (discounted/free) hotel rooms for visiting SF employees from out-of-town would be something of little if any value that could still be viewed as creating some sort of "partnership arrangement".

SF would face an uphill battle if they wanted to take on every instance...they clearly don't have the resources...

Jeff said:
But how do you prove "knowingly?"

The fact the the SF website in general (and the SFStL page in particular in this case) links to hotels using "Six Flags" in their names...and has for quite a while. They're aware of it.

rollergator said:
In this case, I'm thinking a (discounted/free) hotel rooms for visiting SF employees from out-of-town would be something of little if any value that could still be viewed as creating some sort of "partnership arrangement".

Agreed and I suppose that's the angle they can use. (I think I mentioned the whole "business affiliation" thing somewhere along the way)

SF would face an uphill battle if they wanted to take on every instance...they clearly don't have the resources...

Maybe. But I'd argue that it's their responsibility to do so - especially in identical situations of use. Like other hotels using the trademark in their own business name whereas bootleg merchandise, for example, would be an entirely different situation and this suit wouldn't be dependent on their actions in an unrelated area like that.

To oversimplify:

I can understand something like, "But you let them keep making t-shirts!" not getting anywhere - it's apples and oranges. But I can totally see something to the effect of, "But you're allowing hundreds of other hotels to do this - and you've never ask us (or any of them) to stop in the past!" to hold some weight.

OK, so if they do know, I'm still not convinced that matters if they see it as adding value to their business. The rules change when the roach motel starts associating with you and you don't want that.

Is this any different than an individually owned hotel that falls below brand standards having its use of that brand's name revoked? i.e. Best Western may force a hotel owner to remove its name from a hotel that's not up to snuff.

Yes, it's completely different.

What you describe is part of the franchise agreement. There's a business agreement in place. The hotel owner is doing business with the hotel chain. Inspections are done and measureable standards are expected.

As far as we know (and I'm pretty sure we're right) there is no kind of agreement or affiliation in place in this situation. Six Flags is not affiliated with any of the hotels doing this - they've just chosen this one to sue based on a TripAdvisor list.

Yeah, I know about the franchise agreement. I also have family who are in the hotel business, hence my use of the BW chain name. I meant that maybe Six Flags may generally overlook the use of its name in conjunction with a hotel as a type of symbiotic relationship.

However, when that one hotel goes so far as getting a "dirtiest hotel award, I wonder if it WOULD be okay for Six Flags to selectively disallow that one hotel from using its name. Kind of a penalty, per se.

Yeah, I follow. But SF is not in a position to "penalize" anyone. They're not in business nor have an agreement with these hotels (again, as far as I know).

If they were, there wouldn't be the need for legal action.