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Supreme Court, New York County, New York.

WYNDHAM COMPANY et al., Plaintiffs, v. WYNDHAM HOTEL COMPANY et al., Defendants.

Decided: December 31, 1997

Frankfurt, Garbus, Klein & Selz, New York City (Gerald E. Singleton, of counsel), for plaintiffs. Cobrin Gittes & Samuel, New York City (Peter T. Cobrin, of counsel), for defendants.


‘Y’, as in ‘Wyndham’, is a crooked letter, consistent with its 1450 English origin, history, geography and genealogy!  ‘I’, as in ‘Windham’, is a straight letter and self possessive pronoun consistent with the parties' battle for exclusive use of its name and mark in the middle east of Manhattan.   The exclusive use of the ‘Wyndham’ (a/k/a ‘Windham’) name and mark are common, but competitive, objects in this complex intellectual property battle since 1992.   It links a ‘world famous' family hotel, sited in Manhattan with a North and Central American hotel chain, based in Texas, with issues of novel impression.   Such includes:  Whether unsolicited or celebrity media coverage, sales success, length and exclusivity of use and likelihood of confusion show sufficient secondary meaning to the name “Wyndham”.

B. PROCEDURAL HISTORY & FACTS, C. HISTORY, D. PARTIES' CONTENTIONS & E. THE TRIAL are set forth in the filed DECISION & ORDER and edited for publication.


 As noted in this Court's Decision/Order dated August 12, 1996, (aff'd 236 A.D.2d 220, 653 N.Y.S.2d 852 [1st Dept.1997]), the name, “Wyndham”, is a surname and a geographic term, though not extensively or primarily but sufficiently to raise the issue of “secondary meaning”.   The traditional factors include:

1.  Advertising expenditures

2.  Consumer surveys

3.  Sales success

4.  Unsolicited media coverage

5.  Attempts to plagiarize the Mark

6.  Length and exclusivity of use.

See, Centaur Communications, Ltd. v. A/S/M Communications, Inc., 830 F.2d 1217, 1223 (2d Cir.1987).   While plaintiffs' proof was very strong on factors numbers 3, 4 and 6 (19-20 years) above, moderate on factor number 5, and weak on factors numbers 1 and 2. (see pp. 1001-02 below).

 However, according to recent caselaw, secondary meaning may be obviated for injunctive relief under the Lanham Act, 15 U.S.C. §§ 1052 et seq., 1114(1);  § 1125(a) [1996] where there is a likelihood of, if not actual, confusion.   See, Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir.1961), cert. denied 368 U.S. 820, 82 S.Ct. 36, 7 L.Ed.2d 25 (1961);  Resource Developers, Inc. v. Statue of Liberty-Ellis Island Foundation, Inc., 926 F.2d 134 (2d Cir.1991).   As Professor J. Thomas McCarthy observes, “secondary meaning and likelihood of confusion, although two separate legal issues, will be difficult to distinguish in viewing the evidence.”   2 McCarthy, Trademarks and Unfair Competition § 15.03.   Thus, “[p]roof of instances of actual confusion of buyers may suffice either to prove the existence of secondary meaning, or may itself be sufficient to warrant judicial relief without even considering secondary meaning.” 2, 3 McCarthy, Trademark and Unfair Competition § 15.04[4][b];  § 23.02[1] [4th ed.1997] or at common law, Allied Maintenance Corp. v. Allied Mechanical Trades, Inc. 42 N.Y.2d 538, 543, 399 N.Y.S.2d 628, 369 N.E.2d 1162 (1977).

Numerous American courts have previously recognized the interdependence between secondary meaning and confusion, finding evidence of one the equivalent of the other.   See, e.g., Interpace Corp. v. Lapp, Inc., 721 F.2d 460, 465 (3d Cir.1983) (“proof of one is proof of the other”);  American Scientific Chemical, Inc. v. American Hospital Supply Corp., 690 F.2d 791, 793 (9th Cir.1982) (“actual confusion is an indicium of secondary meaning”).

 Moreover, where it is shown that a defendant did not adopt its mark in “good faith,” as shown here, proof of secondary meaning is not required to obtain relief for common law unfair competition.  Coach Leatherware Co. v. AnnTaylor, Inc., 933 F.2d 162, 169 (2d Cir.1991) (reaffirming the rule that a showing of secondary meaning is not necessary to prove unfair competition under New York common law);  Perfect Fit Industries, Inc. v. Acme Quilting Co., 618 F.2d 950, 953-954 (2d Cir.1980), cert. denied 459 U.S. 832, 103 S.Ct. 73, 74 L.Ed.2d 71 (1982).

 Polaroid, 287 F.2d 492, 495, supra, sets forth a still applicable balancing test with respect to ‘likelihood of confusion’ of the following eight (8) factors, including the:

1. strength of the mark;

2. the degree of similarity between the two marks;

3. proximity of the products;

4. likelihood the senior user of the mark (or prior owner) will bridge the gap;

5. evidence of actual confusion;

6. junior user's evidence of bad faith (or reciprocal of its good faith) in adopting the mark;

7. quality of the junior user's mark and/or product;

8. sophistication of the relevant consumer's group (buyers).

See, Estee Lauder, Inc. v. The Gap, Inc., 108 F.3d 1503 (2d Cir.1997).

 No one of the Polaroid factors is dispositive, and the list is not exhaustive;  “the analysis of the factors is not a mechanical process.”   Arrow Fastener Co. v. Stanley Works, 59 F.3d 384, 391 (2d Cir. 1995);  see, Gruner + Jahr USA Publishing v. Meredith Corp., 991 F.2d 1072, 1077 (2d Cir.1993).   A trial court's finding as to each factor is one of fact, subject to review for a clearly erroneous standard.

1. Strength of the Mark

 The strength of a mark is “the distinctiveness of the mark, or more precisely, its tendency to identify the goods sold under the mark as emanating from a particular, although possibly anonymous source․, or its ‘origin-indicating’ quality, in the eyes of the purchasing public.”   McGregor-Doniger, Inc. v. Drizzle, Inc., 599 F.2d 1126, 1131 (2d Cir.1979).   Its assessment uses two factors:  (1) the degree to which it is inherently distinctive;  and (2) the degree to which it is distinctive in the marketplace.  W.W.W. Pharmaceutical Company, Inc. v. The Gillette Company, 984 F.2d 567, 572 (2d Cir.1993).

“[S]trength' ․ ultimately depends on the degree to which the designation is associated by prospective purchasers with a particular source.”

Restatement [Third] of Unfair Competition § 21, comment i (1995).

In Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir.1976), Judge Henry J. Friendly, to gauge the inherent distinctiveness of a mark, created a spectrum of trademark protection into four (4) categories, ranging from least to most protection under the Lanham Act:  (1) generic-a common description of goods and never protected;  (2) descriptive-describes the products features, qualities or ingredients in ordinary language protected only with secondary meaning;  (3) suggestive-uses terms which do not describe but merely suggest the features of the product.   It requires the purchaser to use imagination, thought and perception to reach a conclusion as to the nature of goods.   It signifies to the public the generic name other than the source of a particular brand of that article and is protected without proof of secondary meaning;  (4) arbitrary or fanciful;  always protected without proof of secondary or dictionary meaning and with ease of establishing infringement.  Abercrombie & Fitch Co. v. Hunting World, Inc., supra at 11;  see also, Gruner + Jahr USA Publishing v. Meredith Corp., supra at 1075-1076.

 “Where the products are competitive and the marks quite similar ․ the senior user of a more than descriptive mark need not prove secondary meaning.”  McGregor-Doniger Inc., supra, at 1132;  American Home Products v. Johnson Chemical Co., 589 F.2d 103, 106 (2d Cir.1978).   Surely the Mados Wyndham Hotel has an arbitrary or fanciful mark and is protected without secondary meaning.   The Court finds, in fact and law, “Wyndham” is suggestive of England and English and European architecture, decor, elegance, style which attract celebrity guests as Sir Lawrence Olivier, Joan Plouright, Sir Alec Guiness, Peter O'Toole, Glenda Jackson, Peter Ustinov and anglophiles such as Gore Vidal, Hume Cronin and Jessica Tandy, Harold Pinter, Vincent Price, Julie Harris, and many American authors and stars of stage and screen.

2. Similarity of Marks

 The pertinent inquiry on this factor is “the general impression conveyed to the purchasing public by the respective marks.”  C.L.A.S.S. Promotions, Inc. v. D.S. Magazines, Inc., 753 F.2d 14, 18 (2d Cir.1985);  and whether the similarity of the marks, if any, is likely to provoke confusion among potential customers, considering all factors which the buyer will likely perceive or remember.  McGregor-Doniger, Inc. v. Drizzle Inc., supra at 1133.   It looks to “the nature of the products themselves and the structure of the relevant market which include the class of customers to whom sold, the manner of advertisement and the channels through which the goods are sold”.  Vitarroz v. Borden, Inc., 644 F.2d 960, 967 (2d Cir.1981).   See Fact # 8 below.

The names “Wyndham Hotel” are identical in the identical business, though with differing size, style (i.e. garden or resort) and market.

3. Proximity of the Products

 This prong concerns whether, and to what extent, the two products compete with each other.   To the extent goods (or trade names) serve the same purpose, fall within the same general class, or are used together, the use of similar descriptions is more likely to cause confusion.  Lang v. Retirement Publishing Co., Inc., 949 F.2d 576, 582 (2d Cir.1991).   The concern represented by the proximity factor is whether it is likely that consumers will assume either that the junior user's product is associated with or a product of the senior.  Centaur Communications Ltd. v. A/S/M Communications, Inc., 830 F.2d 1217, 1226 (2d Cir.1987).   Thus, the Court may consider whether the products, or trade names differ in content, geographic distribution, market position or audience appeal.  C.L.A.S.S. Promotions, Inc. v. D.S. Magazines, Inc., supra at 18.

The products herein, hotel service is identical, though with differing size and place.

4. Bridging the Gap

 This factor looks to “whether the senior user of the mark is likely to enter the market in which the junior user is operating.”  Centaur Communications, Ltd. v. A/S/M Communications, Inc., 830 F.2d at 1227, supra.   Trademark law protects the senior user's right to enter a related field in the future.  Scarves by Vera, Inc. v. Todo Imports Ltd., 544 F.2d 1167, 1172 (2d Cir.1976).

The senior user, plaintiffs, entered the hotel service market in 1963, almost twenty (20) years before the junior user entered the market in 1982 though with a different style and scale.

5. Actual Confusion

The fifth Polaroid factor looks to whether any consumers have actually been confused by the two products.   The Lanham Act seeks to prevent consumer confusion that enables a seller to pass off its goods or trademark as that of another.  W.W.W. Pharmaceutical Company, Inc. v. The Gillette Company, 984 F.2d supra at 574.   Where reverse confusion is alleged, it “is likely to cause consumers to believe erroneously that the goods marketed by the prior user are produced by the subsequent user.”  Lang v. Retirement Living Pub. Co., 949 F.2d supra at 583.

 The issue of likelihood of confusion turns on whether “numerous ordinar [il]y prudent purchasers are likely to be misled or confused as to the source of the product in question because of the entrance in the marketplace of defendant's mark.”  Gruner + Jahr USA Publishing v. Meredith Corp., supra at 1077;  see e.g., Plus Products v. Plus Discount Foods, Inc., 722 F.2d 999, 1005, 1008 (2d Cir.1983).   Likelihood of confusion means a probability of confusion;  “it is not sufficient if confusion is merely ‘possible’.”   3 McCarthy, Trademarks and Unfair Competition § 23.01[3][a], at 23-10-23-11 (3d ed.1996).

Plaintiffs' claim 4,000 misdirected telephone calls a year, or 10-15 calls daily plus misdirected mail.   The fact that Mados-Wyndham Hotel is in Manhattan and that the Texas Wyndham Hotel spent $35,000,000 in advertising, maintains an active sales office (generating between 1984 and 1992 $300,000,000 in revenue) in Manhattan does support likelihood of confusion.

6. Junior User's Bad Faith

This test factor considers “whether defendants adopted its mark with the intention of capitalizing on plaintiff's reputation and good will and any confusion between his (sic. defendant) and the senior user's (sic. plaintiff) product.  Lang v. Retirement Living Pub. Co., supra at 583.

 It is alleged by the plaintiff's that Texas Wyndham Hotel, not only violated its ‘gentleman's agreement’ but after the stay of Trammell Crow at the Mados Wyndham Hotel on March 11,1983 (PX-69) was aware of the plaintiffs' mark prior to using the Wyndham name.   This, defendants' deny, pointing to a prior memo (from Carine Kline to Trammel Crow) dated October 28, 1981 discussing room rate at a soon to open Wyndham Hotel.   In this circuit, proof of actual knowledge can give rise to an inference of bad faith.  Centaur Communications, Ltd. v. A/S/M Communications, Inc., 830 F.2d 1217, 1228 (2d Cir.1987).   Accordingly, the plaintiffs may demonstrate that Texas Wyndham Hotel acted in bad faith, a factor that will weigh towards issuance of an injunction.  W.W.W. Pharmaceutical Company, Inc. v. The Gillette Company, 984 F.2d 567, 575 supra.   See also, Scarves by Vera, Inc. v. Todo Imports Ltd., 544 F.2d supra at 1172.

Plaintiff has not fully sustained its burden of proof herein.

7. Quality of Junior User's Product

As evidence of the quality of the product, Mados Wyndham Hotel has submitted reference to its hotel in studies, travel guides, books, magazines and TV interviews.

8. Sophistication of the Consumers

 As a general rule, sophistication of the consumer is a factor that will weigh against a finding of likelihood of confusion of the relevant purchasers.  Arrow Fastener Co. v. Stanley Works, 59 F.3d 384, 399 supra, citing-W.W.W. Pharmaceutical Co. v. Gillette Co., supra at 573 & 575;  see also, Cadbury Beverages v. Cott Corp., 73 F.3d 474, 480 (2d Cir.1996).   The defendant suggests that the hotel consumer group is small, sophisticated and somewhat elite and not likely to be confused.   See, 3 Callman, The Law of Unfair Competition, Trademarks and Monopolies § 81.2, at 577 (4th Ed.-1983).

9. Discussion of Lanham Act § 32 and Common-Law Infringement Claims

Plaintiff claims trademark infringement under both the Lanham Act and the state common law.   Infringement of a registered trademark is prohibited by 32(1) of the Lanham Act (15 U.S.C. § 1114[1].)   Section 32(1) prohibits the use of a registered trademark without permission, in connection with the sale or advertising of goods or services, in a manner that is likely to cause confusion or mistake or to deceive the purchaser as to the source or sponsorship of the goods.  (15 U.S.C. § 1114[1];  see, Gruner + Jahr USA Pub. v. Meredith Corp., 991 F.2d 1072, 1075, supra.)

 The standard for granting preliminary injunctive relief in this state and federal circuit is well settled.   Mados Wyndham Hotel must show “(a) irreparable harm and (b) either (1) likelihood of success on the merits or (2) sufficiently serious questions going to the merits to make them a fair ground for litigation and a balance of hardships tipping decidedly toward the party requesting the preliminary relief.”  Jackson Dairy, Inc. v. H. P. Hood & Sons, Inc., 596 F.2d 70, 72 (2d Cir.1979) (per curiam).   See, Hasbro Bradley, Inc. v. Sparkle Toys, Inc., 780 F.2d 189, 192 (2d Cir.1985).


1. Registrationa. Federal

Defendants duly registered (No. 1,962,596) the service mark “WYNDHAM GARDEN” on March 19, 1996, with the United States Patent and Trademark Office (“USPTO-DX O”).   Defendants had previously filed a federal trademark application with the USPTO (Reg. No. 1,424,204) on February 14, 1992 which sought concurrent hotel service use of the name and mark “WYNDHAM” throughout the United States, except for New York.   Thereafter, on June 20, 1995, defendants amended their Federal trademark application to include New York except for the “trading area bounded by 63rd Street on the North, Fifth Avenue on the East, the Hudson River on the West and 57th Street on the South.”  (Plaintiffs' exhibits 33, 34).  (Subsequently, Yassky Wyndham Partnership filed its notice of opposition to any New York extension [Opp.   No. 97,831]).   Such opposition was later withdrawn by agreement between defendants and the Yassky Wyndham Partnership, dated November 1, 1995.

Defendants claim that, pursuant to 15 USC § 1057(b) a Mark's certificate of registration is prima facie evidence of:

(1) its validity and registration;

(2) registrant's ownership thereof;  and

(3) registrant's exclusive right to use the registered mark in connection with services specified in the certificate.

Putting aside plaintiff's claims of misrepresentation before the USPTO, the later issued a decision in March, 1994 that, inter alia, stated:

“․ it is in the interest of judicial economy to stay this Administrative Board proceeding pending a final decision in the state court action․

In view of the circumstances of this case, it is believed that the proper course of action is to suspend all proceedings pending the final determination of the civil case.”  (Plaintiff's exhibit 95).

Thus, USPTO has deferred to this Court's final decision.

b. State

On April 1, 1996, plaintiffs filed applications to register the service marks:  (1) “WYNDHAM”;  (2) “THE WYNDHAM HOTEL”;  and (3) “THE WYNDHAM” with the Wyndham crest which were duly registered on April 12, 1996, under General Business Law (“GBL”) 209-a, which certificate shall be prima facie evidence of the right to exclusive use in the State of New York of such name(s) by the registrant.   Such is subject to cancellation by the Court in its reasonable discretion if primarily a surname or geographic place, for improper registration, unless it has become distinctive of the applicant's services.   See, GBL §§ 209-a, 209-c, 361 & 367.  (N.B. the court notes that this action was commenced on or about June 30, 1992, and its trial began on or about May 1, 1996, which dates have some proximity to U.S. and N.Y. registration dates.).

2. Secondary Meaning

This issue, as noted above at 117, supra, is obviated by its equivalent issue, likelihood of confusion.  (2 McCarthy, op. cit., § 15.03 et seq.)   In any event, plaintiff is strong on traditional (Centaur v. A/S/M Communications, Inc, supra) factors # 3 (sales success-85% occupancy rate) and # 4 (unsolicited [a/k/a free] coverage-i.e. celebrity guests and newspaper column and book citations) moderate on factors # 5 (attempts to plagiarize name-Trammel Crow 1983 stay in plaintiff's hotel and later name use) and # 6 (length and exclusivity of use of name-since the 1920's by the Hotel-1963-1983-20 years by plaintiffs) though weak on factors # 1 (advertising expenditures) and # 2 (consumer surveys).

In any event, the mark (i.e. “Wyndham” name with an English origin) if not arbitrary is inherently distinctive as suggestive (i.e. English and European decor, architecture and celebrity guests) not requiring secondary meaning.   See, Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 supra;  (see 119-120, supra).

3. Wyndham a Surname & Geographical Place

Relatively speaking, “Wyndham” as a surname in the metropolitan area (target of injunctive relief) is sparse (less than a total of ten [10] telephone directory listings) and, thus, not “primarily a surname” (GBL § 361[e][3] [emphasis added] ).

As a geographical place, all other names within the sought injunctive radius area (50 miles) are spelled “Windham” not “Wyndham”.   While genealogically significant in England and New England, it did not bar New York State registration under GBL §§ 209-a & 209-c.   If not prima facie evidence of exclusivity this was in addition to plaintiff's rights under the lease to which defendants are subject since November 1, 1995.

4. Laches and Estoppel

 Defendants claim that between their July 31, 1984 letter and the commencement of this action on or about June 30, 1992, plaintiff did nil to enforce their claimed rights to injunctive relief.   This knowledge of defendants' name use was inexcusable delay (8 years) and prejudices defendants by inequitable assertion of rights to support an affirmative defense of laches with the above elements of equitable estoppel.  (Saratoga Vichy Spring Co. v. Lehman, 625 F.2d 1037, 1040 [2d Cir.1980] citing Cuban Cigar Brands N.V. v. Upmann International, Inc., 457 F.Supp. 1090, 1096 [S.D.N.Y.1978] [Weinfeld, J.].)  Saratoga Vichy is factually distinguishable in that it failed to bring suit for 61 (1910-1971) years but that its claim of abandonment was dismissed for lack of requisite intent.

Plaintiff's persuasively argue that it relied on the 1984 ‘gentleman's agreement’ until 1992 which was de facto, performed year to year, upon which plaintiff relied rebutting inexcusable (as distinct from ‘mere’) delay.

Thus, it appears to this Court that a balancing of the equities, including possible egregious conduct as defendants expanded, negates a laches defense.

5. Gentleman's Agreement

Plaintiffs claim, while defendants deny citing GOL § 5-701 (Statute of Frauds), there was a ‘gentleman's agreement’ following plaintiff's July 31, 1984 ‘cease and desist’ letter after defendants' opening of a sales office, at 10 Columbus Circle, New York, New York. Such oral ‘gentlemen's agreement’ provided defendants would refrain from opening a “Wyndham” hotel in New York City and redirect any misdirected inquiries or telephone calls by disclaiming any plaintiff's affiliation and provide its correct telephone number.   In support, plaintiffs note defendants did re-direct approximately 4,000-4,500 inquiries per year and defendants' public relation firm referred to same in communications with Jerry Hulse, former Los Angeles Times travel editor.

This Court believes, like the wise, diplomatic cleric, that both parties are correct, plaintiffs-factually and defendants-legally. So there was a de facto oral agreement renewable, year to year.

6. Attorneys' Fees

Lanham Act or 22 NYCRR 130-1.1 (Rules of Chief Administrator of Courts) held in abeyance.


(a) Injunctive Relief

 Applying the above noted 123, supra classic caselaw principles to this case, the Court finds, under the facts and circumstances herein;  by a fair preponderance of the credible evidence:

(a) Plaintiffs, Mados-Wyndham Hotel would sustain irreparable harm by threatened family hotel business extinction or diminution (to the East 57th to 63rd Streets, Fifth Avenue to Hudson River Manhattan) by defendants Texas Wyndham Hotels owner or operator of 72 by last count, hotels, motels and resorts-after 35 profitable years.   All of this under a lease expiring May 31, 2020, whose proprietary rights were transferred from the Yasky's to the Texas Wyndham Hotels on November 1, 1995.

(b) Plaintiff's likelihood of success on the merits was best and definitively articulated by the Appellate Division:  First Department on March 1, 1994, (202 A.D.2d 159, 608 N.Y.S.2d 182) when its per curiam stated in this very case:

“We agree with the IAS Court (sic:  Carmen Beauchamp Ciparick, J .-157 Misc.2d 307 et seq) that the lease, read as a whole, supports plaintiff hotel lessee's contention that it was to have exclusive use of the hotel name “Wyndham” during the life of the lease.  (See, Shubert v. Columbia Pictures Corp., 189 Misc. 734, 72 N.Y.S.2d 851, aff'd 274 App. Div. 751, 80 N.Y.S.2d 724).”

(c) Since defendants, Texas Wyndham Hotels, have now merged, by its November 1, 1995, acquisition, their interest with the Yasskys this moots the second cause of action.   Furthermore, as noted above by the Appellate Division:  First Department, plaintiff, Mados-Wyndham Hotels has exclusive use of the hotel name “Wyndham” during the life of the lease until May 31, 2020, whose other bound signatory was the Yasskys originally and now, since November 1, 1995, defendants, Texas Wyndham Hotels.   Thus, plaintiff has a reasonable likelihood of success on the merits.

(d) The balance of hardships (accelerated diminution or extinction for plaintiffs as against stunted progressive hotel chain expansion for defendants) though temporarily uncertain if Texas Wyndham Hotels have sold their interest to a REIT named Patriot American Hospitality, Inc. (see, XIII Crain's New York Business, No. 15, at 15, cols 3-5 [Dec. 15-21, 1997] ).

2.  The Appropriate Zone of Injunctive Protection

What is an appropriate boundary must begin by recognition that trademark protection is deeply rooted in the common law, with emphasis on the focus on the property rights of a proprietor who, by hard work over a long period and sensitivity to his customers, needs has built up goodwill in the name of his business.   The courts have recognized that the property right from the use of a particular name or symbol in connection with a business, a product or a service is essentially a common law property right.   See, Keebler Co. v. Rovira Biscuit Corp., 624 F.2d 366, 372 (1st Cir.1980);  International Order of Job's Daughters v. Lindeburg & Co., 633 F.2d 912, 919 (9th Cir.1980), cert. denied 452 U.S. 941, 101 S.Ct. 3086, 69 L.Ed.2d 956 (1981) (trademark is a form of business property).

In Siegel Co. v. Federal Trade Commission, 327 U.S. 608, 612, 66 S.Ct. 758, 760, 90 L.Ed. 888 (1946), Justice Douglas referred to trade names as “valuable business assets” and to “the policy of the law to protect them as assets of a business.”   Almost 150 years ago, in Howard v. Henriques, 3 Sandf. Super. 725, 727 (N.Y.1850), the New York Superior Court proclaimed:

“[I]f one man has, by close attention to the comfort of his guests, and by superior energy, made his hotel desirable for the traveler, and caused its name to become popular throughout the land, another man ought not be permitted to assume the same name in the same town, and thus deprive him who first appropriated the name, of some portion of the fruits of that good will which honestly belongs to him alone.”

The Howard case has been cited by state as well as federal courts in cases involving hotels and the principle established therein remains a vital component of modern trademark law.   See, Neva-Wet Corp. of America v. Never Wet Processing Corp., 277 N.Y. 163, 13 N.E.2d 755 (1938);  White Studio v. Dreyfoos, 221 N.Y. 46, 116 N.E. 796 (1917);  American Safety Table Co. v. Schreiber, 269 F.2d 255 (2d Cir.1959).

While plaintiff, Mados-Wyndham Hotels is entitled to exclusive use of its name, there are certain relative constraints.   First, the Court notes that, thus far, that plaintiff's proof of any damages has been purely speculative.   There appears no fair, concrete formula or amount(s) to assess damages except to a reference to the sale of the remaining leasehold with negotiations herein unsuccessful.   Secondarily, there is declining time (22 5/12 years) since the lease ends May 31, 2020 and then, as of now, reverts to defendants.   Third, defendants have already built hotels within the 50 mile radius (i.e. Piscataway and Hauppague, Wyndhams) while plaintiff did not act (laches).   There is a time conflict here-19th century style in the late 20th century, both facing the 21st century imminently.

In the interests of reasonable justice and fairness this Court finds that the reasonably appropriate injunctive protection after considering gradually shrinking time and area zones, but determined such create more factual and practical issues than resolved, should be the Borough of Manhattan or New York County only.   Thus all other areas without the Borough of Manhattan or New York County may use the name (but not the crest) “WYNDHAM,” subject to all four (4) conditions set forth in this Court's Order, dated August 12, 1996.


Accordingly, for the above stated reasons, plaintiff's first and second causes of action declaring plaintiff's have the use and mark “Wyndham” in connection with the operation of its Mados-Wyndham Hotel for the unexpired term of its lease until May 31, 2020, including injunctive relief is granted against defendants, Texas Wyndham Hotel and Yassky Wyndham Partnership to the extent set forth hereinabove;  otherwise denied.   Claim for attorneys' fees held in abeyance until further Order of the Court.

[Portions of opinion omitted for purposes of publication.]

NORMAN C. RYP, Justice.

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