In most U.S. states, merely using a trademark confers trademark rights to the owner. As such, many companies question why they should spend time and money registering their trademarks with the United States Patent and Trademark Office (PTO). There are many reasons to register a mark, but one of the most important reasons was recently highlighted in a case from the First Circuit Court of Appeals (the federal appellate court whose rulings cover Massachusetts, Rhode Island, Maine, New Hampshire and Puerto Rico). That case is Dorpan, S.L. v. Hotel Melia, Inc., 728 F.3d 55 (1st Cir. 2013).
The case involved a dispute between two hotels over the right to use the mark "Meliá" in Puerto Rico. Hotel Meliá, Inc. ("HMI") has operated the Hotel Meliá in Ponce, Puerto Rico for over a century - since the 1890s - but had never registered that mark with the USPTO. The Hotel Meliá has a storied history, with many famous guests such as U.S. President Theodore Roosevelt.
The relative newcomer, Sol Meliá, owns and operates the third largest hotel chain in Europe, as...
