Waging a war on ‘W’: On the dominancy test down to the letter

Can a company assert ownership and exclusivity over a single letter?

The Supreme Court tackled this issue with nuance in the case of Starwood Hotels & Resorts Worldwide, LLC (formerly Starwood Hotels & Resorts Worldwide, Inc.), v. Oceanic Empire Limited, promulgated on Jan. 28.

Starwood Hotels filed opposition cases with the Intellectual Property Office (IPOPHL) against Oceanic’s trademark applications seeking to register the following marks: “W GLOBALCENTER” and “W FIFTHAVENUE” covering Class 36 – Real Estate Affairs.

Apart from the oppositions, Starwood also filed a cancellation petition against Oceanic’s “W TOWER” registered trademark in Class 36. Starwood argued that Oceanic’s marks are confusingly similar to its own registered marks, namely the “W” (word mark) and “W HOTELS” (stylized mark), covering Classes 37, 41, 43, and 44.*

The IPOPHL ruled that Starwood has no right to monopolize any letter of the English alphabet. It was also found that the services are unrelated. Emphasis was placed on the differences in the services covered by the mark, as Starwood’s marks covered hotels and resorts while Oceanic’s marks are used in connection with services for high-end real estate development. As these are not ordinary consumable household items, the IPOPHL held that buyers would be more discriminating in these types of purchases. The Court of Appeals affirmed the IPOPHL’s ruling, finding that no confusing similarity existed between the parties’ marks and that the services covered by the marks differed.

A BATTLE OF MONOPOLY
The Supreme Court, on appeal, noted that Starwood registered its “W” mark as a word mark — a mark where the word itself is the subject of protection. The Court reiterated the findings of the lower tribunals that the “W” mark alone used as a plain letter of the alphabet by Starwood is not sufficiently distinctive to identify Starwood as the sole origin of business. Hence, Starwood cannot claim exclusivity in the use of the plain letter.

However, Starwood asserted its ownership over its stylized “W” mark rather than all configurations of the letter. With regard to the stylized “W” mark, as opposed to the “W” word mark, the Court ruled that there is confusing similarity between Starwood’s stylized “W” mark (“W HOTELS”) and Oceanic’s “W” marks.

Using the well-established Dominancy Test, the Court found that the stylized “W” is in fact the dominant element of the two parties’ marks. The Dominancy Test “requires courts to give greater weight to the similarity of the appearance of the product or service arising from the adoption of the main, essential, and dominant features of the mark, disregarding minor differences.”

The Court stated that it can be assumed that to an average consumer’s eye, the competing marks share a resemblance. Oceanic argued that the additional words (e.g., “TOWER”) differentiate these marks from Starwood’s. However, the Court ruled differently, stating that those portions of Oceanic’s marks are generic and/or descriptive, and cannot be distinctive. Hence, the stylized “W” is the dominant element of the competing marks.

Finally, the Court reiterated its past ruling that the use of product or service classifications as the primary factor in determining relatedness has been abandoned. In this case, the Supreme Court found that the services covered by the competing marks are related. It was noted that the industries of real estate, hospitality, and lifestyle overlap and the use of the marks in commerce is also similar, through the display of the marks on respective buildings and online. The resemblance of the marks, particularly their dominant element, coupled with the relatedness and proximity of the services of the competing marks, lead to the conclusion of the presence of a likelihood of confusion.

WHO TAKES THE ‘W’?
Because a likelihood of confusion was present, the Supreme Court ruled in favor of Starwood, denying the registration of Oceanic’s trademark applications and cancelling its registered “W TOWER” trademark.

This ruling presents an interesting set of facts where the Supreme Court ruled that nobody may assert exclusive rights over the use of a plain letter of the alphabet, but a stylized letter may be subject of protection.

* Class 37 – Building construction, repair, installation services; Class 41 – Entertainment services including live entertainment services; Class 43 – Hotel, motel, resort hotel, and motor inn services; hotel reservation services; services providing food and drink; provision of information relating to holidays; provision of conference, meeting and social function facilities; Class 44 – Beauty salon and hair dressing services.

This article is for informational and educational purposes only. It is not offered and does not constitute legal advice or legal opinion.

Beatriz Maria Sofia C. Pangalangan is an associate of the Intellectual Property Department of the  Angara Abello Concepcion Regala & Cruz Law Offices (ACCRALAW).

bcpangalangan@accralaw.com

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