La Quinta Worldwide LLC v. Q.R.T.M., S.A. De C.V.
762 F.3d 867
| 9th Cir. | 2014Background
- La Quinta operates over 800 U.S. hotels with registered La Quinta marks and strong advertising, nationwide presence, and franchise support.
- Quinta Real operates eight luxury Mexican hotels; intends to expand into the United States; its guests include American travelers.
- La Quinta sued in 2009 seeking a permanent injunction against Quinta Real using the Quinta Real name in the U.S.
- District court held there was federal jurisdiction over the Lanham Act claims and found likelihood of confusion.
- Eight-factor Sleekcraft test applied to evaluate confusion; court weighed factors and found confusion likely.
- Quinta Real challenged jurisdiction, laches defense, likelihood of confusion, and the permanent injunction.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Subject-matter jurisdiction under Lanham Act | Quinta Real argues no federal jurisdiction for use-in-commerce claims. | La Quinta contends jurisdiction exists under 15 U.S.C. §1121(a). | Jurisdiction exists; use-in-commerce not jurisdictional. |
| Likelihood of confusion between marks | Quinta Real asserts no likelihood of confusion given strong marks by both sides. | La Quinta argues factors support likelihood of confusion due to mark strength, proximity, channels, etc. | Court found likelihood of confusion supported by Eight Sleekcraft factors. |
| Laches as a defense | Quinta Real asserts laches should bar La Quinta's claim. | La Quinta argues delay prejudicial to it; E-Systems factors may weigh in favor. | Laches defense denied; delay not prejudicial enough to bar suit. |
| Permanent injunction standard | La Quinta seeks permanent injunction to prevent Quinta Real's U.S. use of its name. | Quinta Real contends injunction excessive; equities require balancing factors. | Injunction vacated and remanded for open-record equity analysis. |
Key Cases Cited
- Sleekcraft Boats, AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) (eight-factor likelihood-of-confusion test)
- Arbaugh v. Y & H Corp., 546 U.S. 500 (U.S. 2006) (distinguishes jurisdictional requirements from elements of a claim)
- Ebay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (U.S. 2006) (eBay factors for permanent injunctions in trademark law)
- Brookfield Communications, Inc. v. Western Coast Entm't Corp., 174 F.3d 1036 (9th Cir. 1999) (strength of mark and protection level)
- Surfvivor Media, Inc. v. Survivor Prod., 406 F.3d 625 (9th Cir. 2005) (dominant element and similarity considerations in likelihood of confusion)
- One Indus., LLC v. Jim O'Neal Distrib., Inc., 578 F.3d 1154 (9th Cir. 2009) (mark strength and protection in confusion analysis)