On September 20, 2012, two trademark lawsuits were filed in the U.S. District Court for the Southern District of Georgia, providing our first occasion for covering events in that court since the launch of this blog in early July 2012. One case generated publicity even before it was filed.
Virginia's Regent University Follows Through on Stated Intention to File Suit Against Georgia's Board of Regents
The genesis of the first of these two lawsuits was an announcement that on August 7, 2012, the Board of Regents for the University System of Georgia had voted to combine Augusta State University ("ASU") and Georgia Health Sciences University ("GHSU"), and to name the consolidated university GEORGIA REGENTS UNIVERSITY.
“The other two names that were being debated were Georgia Arts & Sciences University and University of Augusta - one that drew high praise from students and residents alike.”
According to a university website
, the inaugural class for the new university will enroll in fall 2013, and “[t]he $1.3 billion university will include nine colleges, nearly 10,000 students, more than 650 acres of campus, nearly 150 buildings, more than 1,000 full-time faculty, approximately 5,600 staff, an integrated health system and a growing intercollegiate athletics program.”
However, “[a]lmost immediately, the name choice drew controversy in the Augusta area where many residents wanted ‘Augusta’ to be part of the name.”
An Augusta Chronicle
article called the reaction “visceral and immediate,” reporting on the establishment of a Facebook page called “Everyone Against ‘Georgia Regents University’ Sound Off
” by a 2010 ASU graduate.
That article reported over 2,700 “likes” for that page; as of the time of this writing, the “likes” now total over 5,200.
Yet the first signs of controversy from the name choice were made known even before the vote occurred, and arose not from the Augusta community, but from Virginia.
“Regent University, founded in 1978 by televangelist Pat Robertson as CBN University, took its current name in 1990.”
In an August 4 letter to the Board of Regents, an attorney for Regent University expressed the view that selection of the name GEORGIA REGENTS UNIVERSITY “‘could create confusion and lead people to think the Georgia and Virginia institutions are related.’”
The letter concluded with a request that the Board choose another name, and a Board spokesman indicated that the Board would take the letter under advisement.
Reacting to the Board’s August 7 vote, Regent University announced on August 22 that it intended to file a trademark lawsuit against the Board.
Dr. Carlos Campo, the president of Regent University, released the following statement: “Regent University has consistently taken steps to protect its trademarked name.
We have respect for the Georgia Board of Regents but we believe that their selection of the name Georgia Regents University is an unfortunate infringement of our valuable federally registered trademark.”
On September 20, Regent University filed its lawsuit in the Augusta Division of the U.S. District Court for the Southern District of Georgia. Named as defendants are not only the Board of Regents itself, but also the Board d/b/a ASU and the Board d/b/a GHSU. Additionally, the complaint lists as defendants 18 individual Board members. The complaint identifies two federal registrations for the word mark REGENT UNIVERSITY and one for that expression with a design.
“Instead of honoring the historic and rich tradition of the Augusta community,” states the complaint, “Defendants decided on the name GEORGIA REGENTS UNIVERSITY without regard to Regent's well-known trademark rights.” The complaint includes not only trademark counts against the defendants, but also two counts based on 42 U.S.C. § 1983 in conjunction with the 14th Amendment to the U.S. Constitution, among other counts.
The case is Regent University v. Board of Regents of the University System of Georgia, et al.
, No. 1:12-cv-00141-JRH-WLB, filed 09/20/12 in the U.S. District Court for the Southern District of Georgia, Augusta Division. The case has been assigned to U.S. District Judge J. Randal Hill.
Choice Hotels Sues Holdover Licensee of Rodeway Inn® Marks
The second of the two lawsuits recites a fact pattern commonly alleged in trademark cases involving hotel franchises, namely, that a local franchisee operating an establishment under the hotel's name experiences termination of the franchise agreement, but then continues to use the franchisor's mark after that termination, without the franchisor's permission. Persons who continue to use licensed marks following termination of a franchise agreement (which typically includes a license to use the franchisor's marks) are commonly referred to as "holdover licensees." We already have a prior post
recounting such a fact pattern in a case involving Holiday Inn.®
The lawsuit filed September 20 in the Brunswick Division of the Southern District of Georgia involves the RODEWAY INN® family of marks, allegedly owned by the plaintiff Choice Hotels International, Inc. Choice Hotels asserts that it has used those marks since 1962 and owns several registrations for those marks.
The complaint alleges that in September 2005, Choice Hotels entered into a Franchise Agreement with defendants, licensing to them rights to use the RODEWAY INN® family of marks at a Brunswick property, but that later, "Defendants defaulted on their material obligations," including on payment of monthly franchise fees. Choice Hotels contends that it issued a Notice of Default in August 2010 that was not cured, and that it then issued a Notice of Termination in April 2011 that "instructed the Defendants to immediately cease and desist use of any and all marks owned by Choice Hotels." Choice Hotels further alleges that in 2012, it discovered that the defendants were continuing to use the RODEWAY INN® family of marks at the Brunswick site. The complaint asserts counts against the defendants for infringement of a federally-registered trademark and for false designation of origin § 43(a) of the Lanham Act.
The case is Choice Hotels International, Inc. v. Bijal LLC, Yogesh Patel and Kanaiyalal Patel, No. 2:12-cv-00156-LGW-JEG, filed 09/20/12 in the U.S. District Court for the Southern District of Georgia, Brunswick Division. The case has been assigned to U.S. District Judge James E. Graham.
Labels: § 43(a), false designation of origin, Fourteenth Amendment, holdover licensee, Judge Graham, Judge Hill, Lanham Act, Southern District of Georgia, trademark