Modification of Generic Term Insufficient for Protectability

The court granted defendant’s motion for summary judgment that plaintiff’s “The Inn San Francisco” mark was generic. “Like ‘,’ the term ‘The Inn San Francisco’ is an answer to ‘what are you?’ rather than ‘who are you?’ Any lodging services provider in San Francisco could answer ‘what are you?’ with ‘an inn in San Francisco.’ Conversely, [a competitor of plaintiff] asked to refer someone to ‘an inn in San Francisco’ could reasonably offer its own services. That is good evidence of the genericness of the claimed mark, which modifies a clearly generic term by prepending ‘the’ and deleting ‘in.’ To be sure, adding or deleting a preposition from a generic term may in some cases result in a non-generic term. But the undisputed evidence here shows that the exact term ‘Inn San Francisco’ is used by many other lodging providers in San Francisco.”

Inn S.F. Enterprise, Inc. v. Ninth Street Lodging, LLC, 3-16-cv-00599 (CAND 2018-01-09, Order) (James Donato)

2018-01-11T13:40:10+00:00 January 11th, 2018|Docket Report, Trademark|