WEST VIRGINIA RECORD

CLARKSBURG - A downtown Morgantown hotel is suing another local establishment in federal court, arguing that the upstart hotel has stolen its name and is hurting its reputation.

The Hotel Morgan Company LLC filed a 12-page complaint against defendants Sahaj Morgantown LLC and Himanshu Bhatia, individually, in the U.S. District Court for the Northern District of West Virginia Thursday.

The Hotel Morgan, now called the Historic Clarion Hotel Morgan, is located on High Street and has been open since 1925.

The hotel is suing the owners of the Hotel Morgantown and Conference Center, which opened on Saratoga Avenue near Star City in 2011, for trademark infringement, false designation of origin and false advertising under federal law. In addition, it is suing the owners of the hotel for related claims of common law trademark infringement, unfair competition, unjust enrichment, dilution, and breach of fiduciary duty under West Virginia law.

"Upon information and belief, Defendants were aware of Plaintiff's Hotel Morgan service mark and intended to derive a benefit from, and trade off of, Plaintiff's reputation and considerable goodwill by its adoption and use of the name Hotel Morgantown," Charles C. Wise III, of Morgantown law firm Bowles Rice McDavid Graff and Love LLP, wrote for the Hotel Morgan.

"Defendants' use of the Hotel Morgantown name creates an impermissibly high likelihood of confusion in the minds of the consuming public as to the source of the goods and services."

In fact, Wise says the hotel has evidence of "actual confusion" caused and created by the defendants' "impermissible" use of the Hotel Morgantown name.

He points to the use of the hotel's website, www.hotelmorgantown.com.

"The domain name improperly and unlawfully incorporates Plaintiff's valuable common law service mark, creating and furthering confusion in the minds of the public, and perpetuating the improper association with Hotel Morgan," Wise wrote in the complaint.

Bhatia, Hotel Morgantown's owner, disagrees.

Bhatia told The Associated Press last week he doesn't think the full names of the two hotels are very similar at all and that the Hotel Morgan has no legal grounds to sue.

"Morgantown is a town. It's not a proprietary name," he told the AP. "We don't have any guests calling us saying, 'Are you Hotel Morgan?' And if they do, we say we are not.

"We are not confusing any customer," he said.

The Hotel Morgan is asking the federal court to:

- Preliminarily and permanently enjoin the defendants from using the name Hotel Morgantown for all purposes in all forms, variants and iterations, in any media, of whatever nature or description;

- Order the defendants to remove the name from its website title tag and all other metatags;

- Order the defendants to remove the name from all products, packaging, interior and exterior signage, labels, catalogues, flyers, pamphlets, napkins, menus, notepads, room keys, floor mats, administrative systems, marketing, promotional and advertising materials, including all Internet uses (including, among others, Expedia, Travelocity, TripAdvisor and similar services; Facebook, Twitter and other social media websites), and any and all other items or uses bearing or displaying the Hotel Morgantown name;

- Order the defendants to change the name of its hotel and conference facility to a name that is not likely to confuse consumers, and does not contain the words "Hotel," "Morgan" and "Morgantown," or any combination, form, variant, or iteration thereof, or any other symbol, design, logo, device likely to cause confusion;

- Order the defendants to provide written, duly executed assurances that they will not use the name Hotel Morgantown, or any other name containing the words "Hotel," "Morgan" and "Morgantown;"

- Order the defendants to assign, transfer, set over and convey to the plaintiff for the consideration of $10, all its rights in and to the domain name www.hotelmorgantown.com, and to obtain another domain name that does not contain the words "Hotel," "Morgan" and "Morgantown;"

- Order the defendants to file with the Secretary of State's Office a cancellation and termination of the Hotel Morgantown tradename;

- Order the defendants to account to the plaintiff for any and all profits derived by them for products found to violate the plaintiff's rights, and to pay damages to the plaintiff for the acts forming the basis of its complaint;

- Award the plaintiff enhanced profits and trebled damages based on the defendants' willful and intentional use of the plaintiff's mark and willful and intentional effort to pass off the defendants' products and services;

- Order the defendants to pay to the plaintiff the costs of the action and the plaintiff's reasonable attorneys' fees; and

- Order the defendants to pay prejudgment and post-judgment interest on any monetary award.