Choice Hotels International Inc, Re

This matter concerns Trade Mark Application No. 535999, lodged by CHOICE HOTELS INTERNATIONAL INC., a Delaware corporation. The applicant sought to register the words "CHOICE HOTELS" in Part A of the Register for hotel, motel, restaurant, catering, cafe, and cafeteria services, and all other services within Class 42. An examiner raised objections under paragraphs 24(1)(c), (d), and (e) of the Trade Marks Act, asserting that the mark was not invented, had direct reference to the character or quality of the services, and was not distinctive.

The legal issues before the delegate of the Registrar of Trade Marks were whether the mark "CHOICE HOTELS" was inherently adapted to distinguish the services for which registration was sought, and if not, whether any evidence of use could overcome this lack of inherent distinctiveness. Specifically, the delegate had to determine if the words "CHOICE HOTELS" were merely laudatory or descriptive of hotel and related services, and if the applicant's evidence of use, primarily relating to franchising services, was sufficient to establish distinctiveness for the services as originally specified.

The delegate applied the principles established in *Burger King Corporation* and *Mark Foy's Ltd v. Davies Coop & Co Ltd*, which hold that inherently descriptive or laudatory marks are generally refused registration, even if evidence of use has rendered them distinctive. The delegate found that "CHOICE" is a common laudatory epithet, and its use in conjunction with "HOTELS" was an ordinary and apt description of the services. The evidence of use provided by the applicant related to franchising services, which were not covered by the original specification and fall into a different class. Furthermore, the delegate distinguished the present case from the acceptance of "SUPER SUITES," noting that while a combination of descriptive words can sometimes create a mark with some inherent distinctiveness, "CHOICE HOTELS" as a whole was considered a straightforward laudatory description.

Consequently, the delegate determined that the mark was not registrable in either Part A or Part B of the Register due to its total lack of inherent distinctiveness for the specified services. The application was therefore refused.