La Quinta has operated LA QUINTA hotels and motels in the United States since 1968.
Quinta Real operates QUINTA REAL luxury hotels in Mexico and has done so since 1986. In 1994 and again in 2007, Quinta Real announced plans to open a QUINTA REAL hotel in the United States, but has not yet done so. In the meantime, La Quinta opened several LA QUINTA hotels in Mexico .
La Quinta sued Quinta Real in 2009 to prevent them from using QUINTA REAL in the United States.The district court found a likelihood of confusion and granted a permanent injunction prohibiting use of QUINTA REAL for hotels in the United Sates. Quinta Real appealed that ruling to the Ninth Circuit Court of Appeals.
The Ninth Circuit affirmed the district court’s finding of likelihood of confusion, but remanded the case to the district court for further consideration of its ruling to grant a permanent injunction. The Ninth Circuit was concerned that a permanent injunction would bar Quinta Real from opening a QUINTA REAL hotel in the United States, while La Quinta would be free to operate LA QUINTA hotels in Mexico. The court did not rule that co-existence in Mexico is determinative and expressed no opinion on whether the district court should issue a permanent injunction. Rather, the Ninth Circuit’s ruling was that the District Court should consider the fact that the parties co-exist outside of the United States when deciding if granting a permanent injunction is fair and equitable.
La Quinta Worldwide LLC v. Q.R.T.M., S.A. de C.V., 2014 DJDAR 10437 (9th Cir., August 6, 2014).