Choice Hotels International, Inc. v. Patel
940 F. Supp. 2d 532
S.D. Tex.2013Background
- Choice Hotels sues two former franchisees, the Patels, for continuing to use Comfort Inn marks after termination on April 8, 2009.
- Choice asserts liability on four counts (Lanham Act infringement, false designation, and Texas common-law claims) and seeks damages and treble damages.
- Evidence shows Mr. Patel displayed the marks in signage, receipts, and Wi‑Fi, after termination; exterior signs were notably left in place until late 2011.
- Patels claim extensive removal efforts in 2009–2011, including removing/altering in-room materials and repainting exterior signage; Mrs. Patel’s involvement is more contested.
- Court grants in part and denies in part; Mr. Patel is liable on all four claims; Mrs. Patel’s liability is uncertain; permanent injunction granted against Mr. Patel; monetary damages and treble damages unresolved.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Mr. Patel infringed the Comfort Inn marks | Choice claims Mr. Patel used marks in commerce after consent withdrew. | Patel argues removal efforts show no ongoing use in commerce or intent to infringe. | Mr. Patel liable on all four trademark-related claims. |
| Whether Mrs. Patel can be personally liable for infringement | Choice asserts active participation or control by Mrs. Patel. | Mrs. Patel was not involved in day‑to‑day management; testified she left hotel duties in 2004. | Genuine issues of material fact prevent summary judgment against Mrs. Patel. |
| Whether a permanent injunction should be issued against the Patels | Injury is irreparable; continued confusion justifies injunction. | No new infringement if signs are altered; remedy in equity contested by Patel. | Permanent injunction granted as to Mr. Patel. |
| Whether Choice is entitled to profits, royalties, or treble damages at summary judgment | Patents’ profits and royalties, plus treble damages, are warranted due to willful infringement. | Willfulness and extent of damages are disputed; need for more fact-finding. | No summary judgment on profits, royalties, or treble damages; issues of fact remain. |
Key Cases Cited
- American Rice, Inc. v. Producers Rice Mill, Inc., 518 F.3d 321 (5th Cir. 2008) (likelihood of confusion framework for trademark infringement)
- Elvis Presley Enters., Inc. v. Capece, 141 F.3d 188 (5th Cir. 1998) (ownership and protectability of marks; used in commerce)
- Paulsson Geophysical Servs. v. Sigmar, 529 F.3d 303 (5th Cir. 2008) (presumption of confusion when defendant uses exact marks)
- Bandag, Inc. v. Al Bolser's Tire Stores, Inc., 750 F.2d 903 (Fed. Cir. 1984) (royalties and profits as damages; partial appropriation limits)
- Seatrax, Inc. v. Sonbeck Int'l, Inc., 200 F.3d 358 (5th Cir. 2000) (factors for evaluating profits and accounting remedies; willfulness relevance)
- Quick Techs., Inc. v. Sage Group PLC, 313 F.3d 338 (5th Cir. 2002) (intent to confuse or deceive as a factor in remedies)
- Brennan's Inc. v. Dickie Brennan & Co., 376 F.3d 356 (5th Cir. 2004) (willfulness and equitable considerations in damages)
- Am. Registry of Radiologic Technologists v. Garza, 512 F. Supp. 2d 902 (S.D. Tex. 2007) (discussion of counterfeit marks and 1117(b) applicability)