Marriott hits back at Delta’s TM suit, claiming breach of contract

Marriott International has claimed that Delta Airlines breached a co-existence agreement by  suing the hotel chain for trademark infringement earlier this year.

In March, Delta sued Marriott over its use of “Delta” in connection with hotel, restaurant, catering, bar, and related services.

The counterclaim, filed in the US District Court for the Northern District of Georgia, claimed that the two companies had shared “a worldwide coexistence agreement memorialising their respective uses and registrations of ‘Delta’ in their respective hotel and airline industries”.

Marriott noted that its uses and registrations of its ‘Delta’ marks in connection with hotel, restaurant, catering, bar, and related services are permitted by the agreement.

According to Marriott, Delta breached its contractual obligation not to challenge, object to, and/or oppose Marriott’s use and registration of the mark ‘Delta’ or any mark incorporating “Delta”.

The hotel chain contends that Delta entered into a worldwide coexistence agreement with Marriott’s predecessor-in-interest, Delta Hotels, in March 2015.

The filing noted that “shortly after the agreement was executed, Marriott purchased the Delta Hotels brand and business” and that “Marriott’s acquisition was widely reported in the press”, including “before the worldwide coexistence agreement was signed”.

It added that “at least one [Delta] executive discussed Marriott’s then-upcoming acquisition with a Marriott executive before the agreement was signed”.

According to Marriott’s filing, Delta also agreed to the hotel chain’s domestic use of the trademark. It noted that since the application for the mark was filed in July 2013, Delta has never objected to the US registration of Marriott’s “Delta” marks, and, until recently, took no issue with Marriott’s continued use of its “Delta” marks in the US.

Marriott’s suit states that Delta does not own a monopoly on the word “Delta” and that marks comprised of or containing ‘Delta’ have been used for many products and services since at least the 1800s.

The hotel chain accused Delta of making “sensationalised allegations”, including claims that Marriott “embarked upon a calculated strategy” to “trade on” Delta’s “hard-earned goodwill”, and denied “that it has attempted to interfere with Delta’s trademark rights by opposing the company’s trademark applications in the US and elsewhere”.

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