Eagles dispute with Hotel California dismissed
A trademark dispute between US rock band Eagles and a Mexican hotel over the song “Hotel California” has come to an end.
“Hotel California” was released in 1976 by the Eagles, and is one of their biggest hits.
The dismissal comes after a hotel based in Todos Santos, Mexico, withdrew its trademark application for the mark ’Hotel California’ from the US Patent and Trademark Office (USPTO).
On Thursday, January 18, the lawsuit was dismissed with prejudice by the US District Court for the Central District of California, following the parties’ request for dismissal the previous day.
The complaint was filed in May last year, and the case was due to proceed to trial on May 8, 2018.
“For over 30 years, the Eagles have sold merchandise bearing the trademark ‘Hotel California’, which has come to be associated uniquely with the band,” said the claim.
The band owns the word mark ’Hotel California’, US trademark number 87,306,414, covering international classes 14, 15, 16, 25, and 28. This includes key chains, guitar picks, posters, clothing, and playing cards.
The mark, which was registered in January 2017, was pending at the time of filing the lawsuit.
Originally, the hotel operated under the Hotel California name in 1950 before going through ownership changes. It was acquired by Debbie and John Stewart in 2001, and they sought to revive its original name.
The claim alleged that the hotel’s merchandise, sold to tourists and bearing the mark ‘Hotel California’, led consumers to believe that the hotel was associated with the band.
Eagles had sought injunctive relief, triple damages, profits, and costs.
The Mexican establishment applied to the USPTO to register the mark ‘Hotel California’ for use on merchandise such as footwear, accessories, cosmetic items, and bed linen, according to the complaint. The mark, number 86,822,138, was published for opposition in September 2016.
Hotel California's owners requested the dismissal of the lawsuit in June 2017, according to WIPR, alleging that the complaint should be barred due to the doctrines of estoppel, unclean hands, and laches.
The establishment also denied that the hotel had sought to create a false connection between itself and the band, and asserted that guests were unlikely to be confused.
The joint dismissal of the lawsuit follows the hotel owners’ withdrawal of their application to trademark the name ‘Hotel California’ in the US, which was accepted by the USPTO on Wednesday, January 17.
Each party will bear its own costs.
Bill Seiter, Hotel California's legal representative in this matter, confirmed that the matter was settled by mutual agreement of the parties.
Seiter said that the hotel will continue using the name, service mark and trademark 'Hotel California' in Mexico. He added that the owners of Hotel California have 28 valid Mexican trademark registrations for the mark 'Hotel California' and its variants.
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