31 March 2020Trademarks

American Cruise Lines sues rival over ‘American’ TMs

Connecticut-headquartered  American Cruise Lines (ACL) has taken its competitor  HMS Global Maritime to court after the marine management company attempted to expand its trademarks.

In a lawsuit filed yesterday, March 30, at the US District Court for the District of Delaware, ACL accused HMS and its overnight cruise subsidiary,  HMS American Queen Steamboat Company, of trademark infringement.

ACL—which provides cruise ship services within the US’ inland and coastal waterways (over 75 different rivers in 28 states)—owns trademark registrations and applications comprising the word “American”, in connection with the ACL services. Its trademarks include ‘American Cruise Lines’ and ‘American River Lines’.

“Since at least as early as 2013, ACL has used and continues to expand its ACL services under marks that focus on combining ‘American’ immediately followed by ‘River’,” said the claim, adding that ACL also uses ‘Rollin’ on the River’ in connection with advertising and marketing.

HMS is infringing these trademarks in the US, said ACL.

ACL doesn’t take issue with HMS’s trademarks, which combine the word “American” and another term suggesting a female position of royalty in connection with these services, such as ‘American Queen’, but it’s the other applied-for marks that have driven ACL to file suit.

HMS’s filing of ‘American Rivers’ in connection with cruise and passenger transport services “failed to include any term that suggests a position of royalty and deviated from its previous standard”, said the suit.

It added that, in a “recent attempt to expand its scope of use and registration” of ‘American River’ marks that don’t include a reference to its standard theme of royalty, HMS Global Maritime has applied for the trademark ‘Rollin’ on the American Rivers’.

“The recent change in circumstances and apparent expansion in use and attempted registration … dictates action by plaintiff as it is being damaged by such continued use and expansion beyond the scope of HMS’ prior use of and registrations for its American + Royalty marks,” added the claim.

This isn’t the first time that ACL has attempted to block HMS’ trademark registrations.

Back in 2016, HMS filed to register ‘Uniquely American River Cruises’, but this was opposed by ACL, based on a likelihood of confusion.

The Trademark Trial and Appeal Board suspended the proceeding in late 2017, pending the determination of a civil action. While an appeal is pending in the action, nothing relating to the ‘American River’ mark is ongoing, said the suit, and the cancellation proceeding remains suspended.

Now, ACL is seeking an injunction against HMS to stop the alleged infringement of its ‘American River’ and ‘Rollin’ on the River’ trademarks, a cancellation of HMS’ ‘Uniquely American River Cruises’ trademark, destruction of infringing promotional materials and damages.

It has also asked the court to place “reasonable but effective restrictions” on HMS’ future transactions and activities to prevent fraud on the court.

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