You are on page 1of 22

Case 1:17-cv-02402-TWP-DML Document 1 Filed 07/14/17 Page 1 of 22 PageID #: 1

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF INDIANA
INDIANAPOLIS DIVISION

CHOICE HOTELS INTERNATIONAL, INC., )
)
Plaintiff, )
)
vs. ) Case No.: 1:17-CV-2402
)
AMERICAN HOSPITALITY SOLUTION, LLC, )
)
Defendant. )

COMPLAINT AND DEMAND FOR JURY TRIAL

Comes now Plaintiff, Choice Hotels International, Inc., by counsel, and submits

its Complaint against Defendant, American Hospitality Solution, LLC, and, in support

thereof, alleges and states as follows:

I. PARTIES

1. Plaintiff, Choice Hotels International, Inc. (“Choice Hotels”), is a Delaware

corporation, conducting business in the State of Indiana, and having a principal place of

business at 1 Choice Hotels Circle, Rockville, Maryland 20850.

2. Defendant, American Hospitality Solution, LLC (“AHS”), is a domestic

limited liability company, having a principal place of business in Indianapolis, Indiana.

AHS regularly conducts business and/or at relevant times conducted business in the

State of Indiana by engaging in the provision of hotel/motel services at 7610 E. Old

Trails Road, Indianapolis, Indiana 46219.
Case 1:17-cv-02402-TWP-DML Document 1 Filed 07/14/17 Page 2 of 22 PageID #: 2

II. JURISDICTION AND VENUE

3. This Court has federal question jurisdiction over this case pursuant to 28

U.S.C. § 1331.

4. This Court has original jurisdiction over the Lanham Act claims in this

action pursuant to 15 U.S.C. § 1121 and 28 U.S.C. §§ 1331, 1338(a).

5. This Court has original jurisdiction in this case pursuant to 28 U.S.C. §

1338(b) because this civil action asserts a claim for unfair competition joined with a

substantial and related claim under the trademark laws.

6. This Court has supplemental jurisdiction over the state and common law

claims in this action pursuant to 28 U.S.C. § 1367(a) because those claims are so related

to the Lanham Act claims as to form a part of the same case or controversy under

Article III of the United States Constitution.

7. AHS has sufficient contacts with the State and District such that the

Court’s exercise of personal jurisdiction over it comports with traditional notions of fair

play and substantial justice.

8. Venue is proper in this Court pursuant to 28 U.S.C. § 1391.

III. CHOICE HOTELS AND THE COMFORT MARKS

9. Choice Hotels is in the business of franchising hotels.

10. Choice Hotels can trace its roots to the 1930s when it was compromised of

a small chain of roadside hotels. Since that time, Choice Hotels has become one of the

largest and most successful lodging franchisors in the world.

2
Case 1:17-cv-02402-TWP-DML Document 1 Filed 07/14/17 Page 3 of 22 PageID #: 3

11. Choice Hotels is now a publicly traded company with approximately

6,000 franchised hotels.

12. Choice Hotels offer high value, mid-price, hotel and motel services under

such well-known brands as CAMBRIA® HOTELS & SUITES, COMFORT INN®,

COMFORT SUITES®, QUALITY®, SLEEP INN®, CLARION®, MAINSTAY SUITES®,

SUBURBAN EXTENDED STAY HOTEL®, ECONO LODGE®, and RODEWAY INN®.

13. Choice Hotels and/or its predecessor in interest has been offering lodging

under a family of COMFORT marks since at least 1984.

14. Choice Hotels is the owner of several United States Registered

Trademarks for its COMFORT family of marks, as defined herein below.

15. Choice Hotels is the owner of United States Registered Trademark No.

1,788,677 (“the ‘677 Registration”) for the mark COMFORT, for use in connection with

hotel and motel services, and hotel and motel reservation services. A true and accurate

copy of the Certificate of Registration is attached hereto as Exhibit “1,” and

incorporated herein by this reference. The ‘677 Registration has become incontestable

under Section 15 on the Lanham Act, 15 U.S.C. § 1065.

16. Choice Hotels is the owner of United States Registered Trademark No.

3,050,364 (“the ‘364 Registration”) for the mark COMFORT + Wave Design for use in

connection with hotel and motel services, hotel and motel reservation services for

others, and online hotel and motel reservation services for others. A true and accurate

copy of the Certificate of Registration is attached hereto as Exhibit “2,” and

3
Case 1:17-cv-02402-TWP-DML Document 1 Filed 07/14/17 Page 4 of 22 PageID #: 4

incorporated herein by this reference. The ‘364 Registration has become incontestable

under Section 15 of the Lanham Act, 15 U.S.C. § 1065.

17. Choice Hotels is the owner of United States Registered Trademark No.

3,050,881 (“the ‘881 Registration”) for the mark COMFORT HOTEL for use in

connection with hotel and motel reservation services for others, and online hotel and

motel reservation services for others. A true and accurate copy of the Certificate of

Registration is attached hereto and marked as Exhibit “3,” and incorporated herein by

this reference. The ‘881 Registration has become incontestable under Section 15 of the

Lanham Act, 15 U.S.C. § 1065.

18. Choice Hotels is the owner of United States Registered Trademark No.

1,712,481 (“the ‘481 Registration”) for the mark COMFORT HOTEL for use in

connection with hotel and motel services. A true and accurate copy of the Certificate of

Registration is attached hereto and marked as Exhibit “4,” and incorporated herein by

this reference. The ‘481 Registration has become incontestable under Section 15 of the

Lanham Act, 15 U.S.C. § 1065.

19. Choice Hotels is the owner of United States Registered Trademark No.

3,050,880 (“the ‘880 Registration”) for the mark COMFORT HOTEL & SUITES for use in

connection with the provision of hotel and motel services, hotel and motel reservation

services for others, and online hotel and motel reservation services for others. A true

and accurate copy of the Certificate of Registration is attached hereto and marked as

Exhibit “5,” and incorporated herein by this reference. The ‘880 Registration has

become incontestable under Section 15 of the Lanham Act, 15 U.S.C. § 1065.

4
Case 1:17-cv-02402-TWP-DML Document 1 Filed 07/14/17 Page 5 of 22 PageID #: 5

20. Choice Hotels is the owner of United States Registered Trademark No.

3,231,180 (“the ‘1180 Registration”) for the mark COMFORT HOTEL & SUITES + Wave

Design for use in connection with hotel and motel services, hotel and motel reservation

services for others, and online hotel and motel reservation services for others. A true

and accurate copy of the Certificate of Registration is attached hereto and marked as

Exhibit “6,” and incorporated herein by this reference. The ‘1180 Registration has

become incontestable under Section 15 of the Lanham Act, 15 U.S.C. § 1065.

21. Choice Hotels is the owner of United States Registered Trademark No.

3,050,860 (“the ‘860 Registration”) for the mark COMFORT HOTEL + Wave Design for

use in connection with hotel and motel services, hotel and motel reservation services for

others, and online hotel and motel reservation services for others. A true and accurate

copy of the Certificate of Registration is attached hereto and marked as Exhibit “7,” and

incorporated herein by this reference. The ‘860 Registration has become incontestable

under Section 15 of the Lanham Act, 15 U.S.C. § 1065.

22. Choice Hotels is the owner of United States Registered Trademark No.

1,315,180 (“the ‘5180 Registration”) for the mark COMFORT INN for use in connection

with hotel and motel services. A true and accurate copy of the Certificate of

Registration is attached hereto and marked as Exhibit “8,” and incorporated herein by

this reference. The ‘5180 Registration has become incontestable under Section 15 of the

Lanham Act, 15 U.S.C. § 1065.

23. Choice Hotels is the owner of United States Registered Trademark No.

3,050,882 (“the ‘882 Registration”) for the mark COMFORT INN for use in connection

5
Case 1:17-cv-02402-TWP-DML Document 1 Filed 07/14/17 Page 6 of 22 PageID #: 6

with hotel and motel reservation services for others, and online hotel and motel

reservation services for others. A true and accurate copy of the Certificate of

Registration is attached hereto and marked as Exhibit “9,” and incorporated herein by

this reference. The ‘882 Registration has become incontestable under Section 15 of the

Lanham Act, 15 U.S.C. § 1065.

24. Choice Hotels is the owner of United States Registered Trademark No.

1,448,467 (“the ‘467 Registration”) for the mark COMFORT INN for stationery,

including letterhead, post cards, writing paper, envelopes, folders, pens, pencils, paper

coasters, paper wrappers, paper bags, paper or cardboard signs, catalogues, brochures,

and pamphlets. A true and accurate copy of the Certificate of Registration is attached

hereto and marked as Exhibit “10,” and incorporated herein by this reference. The ‘467

Registration has become incontestable under Section 15 of the Lanham Act, 15 U.S.C. §

1065.

25. Choice Hotels is the owner of United States Registered Trademark No.

2,264,702 (“the ‘702 Registration”) for the mark COMFORT INN & SUITES for use in

connection with hotel and motel, and online hotel and motel, reservation services. A

true and accurate copy of the Certificate of Registration is attached hereto and marked

as Exhibit “11,” and incorporated herein by this reference. The ‘702 Registration has

become incontestable under Section 15 of the Lanham Act, 15 U.S.C. § 1065.

26. Choice Hotels is the owner of United States Registered Trademark No.

3,050,883 (“the ‘883 Registration”) for the mark COMFORT INN & SUITES for use in

connection with hotel and motel services. A true and accurate copy of the Certificate of

6
Case 1:17-cv-02402-TWP-DML Document 1 Filed 07/14/17 Page 7 of 22 PageID #: 7

Registration is attached hereto and marked as Exhibit “12,” and incorporated herein by

this reference. The ‘883 Registration has become incontestable under Section 15 of the

Lanham Act, 15 U.S.C. § 1065.

27. Choice Hotels is the owner of United States Registered Trademark No.

3,050,868 (“the ‘868 Registration”) for the mark COMFORT INN & SUITES + Wave

Design for use in connection with hotel and motel services, hotel and motel reservation

services for others, and online hotel and motel reservation services for others. A true

and accurate copy of the Certificate of Registration is attached hereto and marked as

Exhibit “13,” and incorporated herein by this reference. The ‘868 Registration has

become incontestable under Section 15 of the Lanham Act, 15 U.S.C. § 1065.

28. Choice Hotels is the owner of United States Registered Trademark No.

3,050,363 (“the ‘363 Registration”) for the mark COMFORT INN & Wave Design for use

in connection with hotel and motel services, hotel and motel reservation services for

others, and online hotel and motel reservation services for others. A true and accurate

copy of the Certificate of Registration is attached hereto and marked as Exhibit “14,”

and incorporated herein by this reference. The ‘363 Registration has become

incontestable under Section 15 of the Lanham Act, 15 U.S.C. § 1065.

29. Choice Hotels is the owner of United States Registered Trademark No.

3,050,866 (“the ‘866 Registration”) for the mark COMFORT INN & Wave Design (color)

for use in connection with hotel and motel services, hotel and motel reservation services

for others, and online hotel and motel reservation services for others. A true and

accurate copy of the Certificate of Registration is attached hereto and marked as Exhibit

7
Case 1:17-cv-02402-TWP-DML Document 1 Filed 07/14/17 Page 8 of 22 PageID #: 8

“15,” and incorporated herein by this reference. The ‘363 Registration has become

incontestable under Section 15 of the Lanham Act, 15 U.S.C. § 1065.

30. Choice Hotels is the owner of United States Registered Trademark No.

3,050,877 (“the ‘877 Registration”) for the mark COMFORT RESORT for use in

connection with hotel and motel services, hotel and motel reservation services for

others, and online hotel and motel reservation services for others. A true and accurate

copy of the Certificate of Registration is attached hereto and marked as Exhibit “16,”

and incorporated herein by this reference. The ‘877 Registration has become

incontestable under Section 15 of the Lanham Act, 15 U.S.C. § 1065.

31. Choice Hotels is the owner of United States Registered Trademark No.

3,231,176 (“the ‘176 Registration”) for the mark COMFORT RESORT & Wave Design for

use in connection with hotel and motel services, hotel and motel reservation services for

others, and online hotel and motel reservation services for others. A true and accurate

copy of the Certificate of Registration is attached hereto and marked as Exhibit “17,”

and incorporated herein by this reference. The ‘176 Registration has become

incontestable under Section 15 of the Lanham Act, 15 U.S.C. § 1065.

32. Choice Hotels is the owner of United States Registered Trademark No.

4,279,333 (“the ‘333 Registration”) for the mark COMFORT SUITES for use in

connection with hotel and motel services, hotel and motel reservation services for

others, and online hotel and motel reservation services for others. A true and accurate

copy of the Certificate of Registration is attached hereto and marked as Exhibit “18,”

8
Case 1:17-cv-02402-TWP-DML Document 1 Filed 07/14/17 Page 9 of 22 PageID #: 9

and incorporated herein by this reference. The ‘333 Registration has become

incontestable under Section 15 of the Lanham Act, 15 U.S.C. § 1065.

33. Choice Hotels is the owner of United States Registered Trademark No.

1,712,482 (“the ‘482 Registration”) for the mark COMFORT INN SUITES for use in

connection with hotel and motel services. A true and accurate copy of the Certificate of

Registration is attached hereto and marked as Exhibit “19,” and incorporated herein by

this reference. The ‘482 Registration has become incontestable under Section 15 of the

Lanham Act, 15 U.S.C. § 1065.

34. Choice Hotels is the owner of United States Registered Trademark No.

3,164,021 (“the ‘021 Registration”) for the mark COMFORT SUNSHINE for use in

connection with hotel services, namely providing a complimentary breakfast to hotel

guests. A true and accurate copy of the Certificate of Registration is attached hereto

and marked as Exhibit “20,” and incorporated herein by this reference. The ‘021

Registration has become incontestable under Section 15 of the Lanham Act, 15 U.S.C. §

1065.

35. Choice Hotels is the owner of United States Registered Trademark No.

2,665,525 (“the ‘525 Registration”) for the mark CS COMFORT SUITES + Design for use

in connection with hotel and motel services. A true and accurate copy of the Certificate

of Registration is attached hereto and marked as Exhibit “21,” and incorporated herein

by this reference. The ‘525 Registration has become incontestable under Section 15 of

the Lanham Act, 15 U.S.C. § 1065.

9
Case 1:17-cv-02402-TWP-DML Document 1 Filed 07/14/17 Page 10 of 22 PageID #: 10

36. Choice Hotels is the owner of United States Registered Trademark No.

3,449,308 (“the ‘308 Registration”) for the mark CS COMFORT SUITES + Design (color)

for use in connection with hotel and motel services, hotel and motel reservation services

for others, and online hotel and motel reservation services for others. A true and

accurate copy of the Certificate of Registration is attached hereto and marked as Exhibit

“22,” and incorporated herein by this reference. The ‘308 Registration has become

incontestable under Section 15 of the Lanham Act, 15 U.S.C. § 1065.

37. Choice Hotels is the owner of United States Registered Trademark No.

3,050,867 (“the ‘867 Registration”) for the mark Design Wave Comfort (color) for use in

connection with hotel and motel services, hotel and motel reservation services for

others, and online hotel and motel reservation services for others. A true and accurate

copy of the Certificate of Registration is attached hereto and marked as Exhibit “23,”

and incorporated herein by this reference. The ‘867 Registration has become

incontestable under Section 15 of the Lanham Act, 15 U.S.C. § 1065.

38. Since the inception of their use, the trademarks described above in

paragraphs 15 through 37 (hereinafter, collectively “the COMFORT family of marks”),

have been used by Choice Hotels, its predecessors, and franchisees, only in connection

with the provision of the highest value hotel and motel services. Each of the

COMFORT family of marks is famous and highly distinctive and is recognized by the

public as identifying Choice Hotels’ goods and services.

39. Choice Hotels has used the COMFORT family of marks throughout the

United States and has heavily advertised and promoted them. These marks have

10
Case 1:17-cv-02402-TWP-DML Document 1 Filed 07/14/17 Page 11 of 22 PageID #: 11

developed and represent valuable, substantial and exclusive goodwill and reputation

inuring to Choice Hotels’ benefit. Choice Hotels has always exercised great care, skill

and diligence in maintaining uniform standards of high quality for its goods and

services bearing the COMFORT family of marks. The reputation associated with and

the goodwill developed in the COMFORT family of marks in the United States is of

high value to Choice Hotels.

40. Each registration identified above in paragraphs 15 through 37, i.e. the

COMFORT family of marks, remains active, valid and enforceable.

IV. DEFENDANT’S UNAUTHORIZED USE OF
THE COMFORT FAMILY OF MARKS

41. Choice Hotels has not authorized AHS to use Choice Hotel’s COMFORT

family of marks in connection with Defendant’s provision of hotel and motel services.

42. Choice Hotels has not signed a franchise agreement with AHS.

43. Choice Hotels has not agreed to allow AHS to operate a hotel or motel

business on its behalf.

44. AHS owns and operates a hotel or motel at 7610 E. Old Trails Road,

Indianapolis, Indiana 46219 (the “Subject Property”), where AHS provides hotel and

motel services under the name “Comfort Stay Inn.”

45. AHS registered and uses the domain name <comfortstayinn.com>, which

redirects to a website that advertises and promotes Defendant’s hotel or motel services

in direct competition with those offered by Choice Hotels’ COMFORT franchised hotel

properties.

11
Case 1:17-cv-02402-TWP-DML Document 1 Filed 07/14/17 Page 12 of 22 PageID #: 12

46. The COMFORT mark is prominently displayed on the signage and

buildings at the Subject Property. Photographs taken of the Subject Property on June 19,

2017, are attached hereto and marked as Exhibit “24.”

47. On March 9, 2017, Choice Hotels sent a letter to AHS notifying AHS that it

was infringing on Choice Hotels’ COMFORT family of marks. A copy of that letter is

attached hereto and marked as Exhibit “25.” In the March 9 letter, Choice Hotels

demanded that AHS immediately cease and desist using the COMFORT family of

marks and to notify Choice Hotels of AHS’s compliance with the demand by March 23,

2017.

48. On March 27, 2017, Choice Hotels sent a second letter to AHS, enclosing a

copy of the March 9, 2017, letter, and demanding that AHS respond by March 31, 2017.

A copy of the March 27 letter is attached hereto and marked as Exhibit “26.”

49. On June 15, 2017, Choice Hotels sent a letter to AHS enclosing copies of

the March 9 and March 27 cease and desist letters. A copy of the June 15 letter is

attached hereto and marked as Exhibit “27.” In the June 15 letter, Choice Hotels

demanded that AHS provide to Choice Hotels, by June 29, 2017, written and

photographic evidence that the COMFORT family of marks were no longer in use at the

Subject Property.

50. AHS did not comply with Choice Hotels’ requests on or before June 29,

2017, or, upon information and belief, to date.

51. AHS has willfully and with full knowledge that it does not have any

license, right, or privilege to do so, used and continues to use one or more of the

12
Case 1:17-cv-02402-TWP-DML Document 1 Filed 07/14/17 Page 13 of 22 PageID #: 13

COMFORT family of marks in connection with the provision of hotel and motel services

at the Subject property.

52. The continued use of one or more of the COMFORT family of marks in

connection with the provision of hotel and motel services by AHS has irreparably

damaged, and will continue to irreparably damage, the value and valuable goodwill

associated with the COMFORT family of marks.

V. FIRST CLAIM FOR RELIEF –
INFRINGEMENT OF FEDERALLY REGISTERED TRADEMARKS (15 U.S.C. § 1114)

53. Choice Hotels incorporates by reference paragraphs 1-52 of this

Complaint as if fully set forth herein.

54. Choice Hotels is the owner of the COMFORT family of marks, which it

uses in connection with the provision of hotel and motel services. Included in that

family of marks are at least the following United States Trademark Registrations: the

‘677 Registration, ‘364 Registration, ‘881 Registration, ‘481 Registration, ‘880

Registration, ‘1180 Registration, ‘860 Registration, ‘5180 Registration, ‘882 Registration,

‘467 Registration, ‘702 Registration, ‘883 Registration, ‘868 Registration, ‘363

Registration, ‘866 Registration, ‘877 Registration, ‘176 Registration, ‘333 Registration,

‘482 Registration, ‘021 Registration, ‘525 Registration, ‘308 Registration, and the ‘867

Registration.

55. Despite receiving notice of its unauthorized use of the COMFORT family

of marks, AHS continued to use, and continues to use, one or more of the COMFORT

13
Case 1:17-cv-02402-TWP-DML Document 1 Filed 07/14/17 Page 14 of 22 PageID #: 14

family of marks in connection with the provision of hotel and motel services at the

Subject Property.

56. AHS had actual knowledge of the COMFORT family of marks owned by

Choice Hotels, and without the consent of Choice Hotels, knowingly, willfully,

intentionally and deliberately used in commerce, in connection with the provision of

hotel and motel services, marks which are likely to cause confusion, mistake or

deception in violation of Section 32 of the Lanham Act, 15 U.S.C. § 1114(1).

57. The acts of AHS described herein constitute infringement of one or more

of the COMFORT family of marks.

58. As a direct and proximate result of the herein described infringing acts of

AHS, Choice Hotels has been damaged in an amount to be determined at trial.

59. Choice Hotels is entitled to recover its damages, the profits of AHS, and

the costs of this action under 15 U.S.C. § 1117.

60. Unless restrained and enjoined by the Court, the acts of AHS described

herein will continue to cause serious irreparable injury to Choice Hotels and to the

goodwill associated with the COMFORT family of marks.

61. Choice Hotels has no adequate remedy at law for such injuries, and

therefore is entitled to injunctive relief under 15 U.S.C. § 1116.

62. The acts of AHS as described herein have been knowing, intentional,

wanton, willful, malicious and oppressive, and thus warrant being designated as

exceptional under 15 U.S.C. § 1117 and the imposition of treble damages and an award

of attorney’s fees in favor of Choice Hotels, as well as punitive damages.

14
Case 1:17-cv-02402-TWP-DML Document 1 Filed 07/14/17 Page 15 of 22 PageID #: 15

VI. SECOND CLAIM FOR RELIEF –
FALSE DESIGNATION OF ORIGIN (15 U.S.C. § 1125(A)

63. Choice Hotels incorporates by reference paragraphs 1-62 of this

Complaint as if fully set forth herein.

64. AHS had knowledge of the COMFORT family of marks owned by Choice

Hotels and, without the consent of Choice Hotels, knowingly, willfully, intentionally

and deliberately used in commerce, in connection with the provision of hotel and motel

services, marks which are likely to cause confusion, mistake or deception in violation of

Section 43 of the Lanham Act, 15 U.S.C. § 1125(a).

65. AHS used, and continues to use, one or more of the marks in the

COMFORT family of marks in commerce, in connection with the provision of hotel and

motel services.

66. Such use constitutes a false designation of origin and/or a false or

misleading description and/or representation of fact, which is likely to cause confusion,

or to cause mistake, or deceive as to the affiliation, connection or association between

Choice Hotels and AHS, or as to the source, origin, sponsorship or approval of the

services and commercial activities of AHS by Choice Hotels.

67. As a direct and proximate result of AHS’s acts, as described herein, Choice

Hotels has been damaged in an amount to be determined at trial.

68. Choice Hotels is entitled to recover its damages, the profits of AHS and

the costs of this action under 15 U.S.C. § 1117.

15
Case 1:17-cv-02402-TWP-DML Document 1 Filed 07/14/17 Page 16 of 22 PageID #: 16

69. Unless restrained and enjoined by the Court, the acts of AHS, as described

herein, will continue to cause serious irreparable injury to Choice Hotels and the

goodwill associated with the COMFORT family of marks.

70. Choice Hotels has no adequate remedy at law for such injuries, and

therefore, Choice Hotels is entitled to injunctive relief under 15 U.S.C. §1116.

71. The acts of AHS, as described herein, have been knowing, intentional,

willful, wanton, malicious and oppressive, and thus warrant this case being designated

as exceptional. Under 15 U.S.C. §1117, the imposition of treble damages and an award

of attorney’s fees in favor of Choice Hotels, as well as punitive damages, is therefore

appropriate.

VII. THIRD CLAIM FOR RELIEF –
INDIANA STATE LAW TRADEMARK INFRINGEMENT

72. Choice Hotels incorporates by reference paragraphs 1-71 of this

Complaint as if fully set forth herein.

73. AHS has and continues to use, reproduce, and assist in the use of the

COMFORT family of marks without the consent of Choice Hotels, in commerce, in

connection with the provision of hotel and motel services, which is likely to create

consumer confusion in the marketplace; therefore, those activities constitute trademark

infringement under Indiana law.

74. The activities of AHS, as described herein, are unfair acts of infringement

of registered trademarks that have damaged the legitimate business of Choice Hotels;

16
Case 1:17-cv-02402-TWP-DML Document 1 Filed 07/14/17 Page 17 of 22 PageID #: 17

therefore, those activities are in violation of laws in the State of Indiana, including but

not limited to Ind. Code § 24-2-1-1 et seq.

75. The conduct of AHS as described herein has been knowing, intentional,

woeful, willful, malicious, and oppressive, thus warranting punitive damages.

76. The conduct of AHS as described has injured Choice Hotels in an amount

to be determined at trial, and has caused or threatened to cause irreparable injury to

Choice Hotels for which there is no adequate remedy at law. Absent relief from the

Court, Choice Hotels will continue to be so damaged.

77. Choice Hotels is also entitled to recover its damages, the profits of AHS,

and the costs of this action.

VIII. FOURTH CLAIM FOR RELIEF –
INDIANA UNFAIR COMPETITION LAW

78. Choice Hotels incorporates by reference paragraphs 1-77 of this

Complaint as if fully set forth herein.

79. AHS used, and continues to use, Choice Hotels’ mark or marks in

connection with the provision of hotel and motel services, which is likely to create

consumer confusion in the marketplace; passed off its goods and services as those of

another; used the mark or marks in commerce in such a way as to cause likelihood of

confusion or misunderstanding as to the source, sponsorship, approval or certification

of goods and services; used a mark or marks in commerce that cause the likelihood of

confusion or of misunderstanding as to affiliation, connection or association with or

17
Case 1:17-cv-02402-TWP-DML Document 1 Filed 07/14/17 Page 18 of 22 PageID #: 18

certification by another; and represented that its services have sponsorship, approval,

characteristics, ingredients, uses, benefits or qualities that they do not have.

80. AHS’s activities, as described herein, constitute unlawful, unfair and

fraudulent business practices as prohibited by Ind. Code § 27-4-1-1 et seq.

81. AHS’s acts of trademark infringement and/or vicarious and contributory

trademark infringement, as alleged herein, constitute unfair competition actionable

under the laws of the State of Indiana as unlawful business acts or practices, as well as

fraudulent, deceptive, and false advertising.

82. The activities of AHS as described herein were undertaken with full

knowledge of Choice Hotels’ rights to the COMFORT family of marks, and with

fraudulent, malicious and oppressive intent, and therefore constitute fraud, and

malicious and oppressive conduct.

83. The unfair, unlawful, and fraudulent activities of AHS as described herein

have caused actual injury to Choice Hotels, and will continue to do so, as set forth

herein, in an amount to be determined at trial.

84. In addition, the unfair, unlawful, and fraudulent activities of AHS have

caused, and threaten to cause, irreparable injuries to Choice Hotels for which there is no

adequate remedy at law. Choice Hotels will continue to be so damaged in the absence

of relief from this Court.

85. As a result of AHS’s activities described herein, AHS has been, and will

be, unjustly enriched by ill-gotten gains.

18
Case 1:17-cv-02402-TWP-DML Document 1 Filed 07/14/17 Page 19 of 22 PageID #: 19

86. AHS has willfully engaged in the foregoing trade practices, knowing them

to be deceptive. Accordingly, Choice Hotels is entitled to recover of its attorney’s fees.

IX. PRAYER FOR RELIEF

WHEREFORE, Choice Hotels requests this Court enter judgment in its favor, and

against the Defendant, American Hospitality Solution, LLC, as follows:

(a) That AHS has infringed, contributorily infringed and/or induced the

infringement of one or more of the marks in the COMFORT family of marks, including

but not limited to, the marks appearing in the ‘677 Registration, ‘364 Registration, ‘881

Registration, ‘481 Registration, ‘880 Registration, ‘1180 Registration, ‘860 Registration,

‘5180 Registration, ‘882 Registration, ‘467 Registration, ‘702 Registration, ‘883

Registration, ‘868 Registration, ‘363 Registration, ‘866 Registration, ‘877 Registration,

‘176 Registration, ‘333 Registration, ‘482 Registration, ‘021 Registration, ‘525

Registration, ‘308 Registration, and the ‘867 Registration, and any marks confusingly

similar thereto are derivative thereof;

(b) AHS, along with its agents, employees, servants, representatives,

attorneys, and all those in active concert or participation with AHS, be preliminarily,

permanently, and forever enjoined from using any of the marks in the COMFORT

family of marks, including but not limited to the ‘677 Registration, ‘364 Registration,

‘881 Registration, ‘481 Registration, ‘880 Registration, ‘1180 Registration, ‘860

Registration, ‘5180 Registration, ‘882 Registration, ‘467 Registration, ‘702 Registration,

‘883 Registration, ‘868 Registration, ‘363 Registration, ‘866 Registration, ‘877

Registration, ‘176 Registration, ‘333 Registration, ‘482 Registration, ‘021 Registration,

19
Case 1:17-cv-02402-TWP-DML Document 1 Filed 07/14/17 Page 20 of 22 PageID #: 20

‘525 Registration, ‘308 Registration, and the ‘867 Registration; and any marks

confusingly similar thereto are derivative thereof;

(c) Directing an accounting of profits and damages resulting from AHS’s

trademark infringement, and the trebling of such damages under trademark laws

because of the knowing, intentional, willful and wanton nature of Defendant’s conduct;

(d) That Choice Hotels be awarded judgment for the damages against Choice

Hotels resulting from AHS’s violation of Section 32 of the Lanham Act, 15 U.S.C. § 1114

and Section 43 of the Lanham Act, 15 U.S.C. § 1125(a), respectively, including:

(1) all profits received by AHS from sales and revenues of any kind as

a result of the actions complained of herein;

(2) all damages sustained by Choice Hotels as a result of Defendant’s

acts of infringement and unfair competition, including, but not

limited to, lost profits, loss of goodwill and actual damages;

(3) the trebling and increase of the damages described above, to three

times the amount awarded, in view of the Defendant’s knowing,

intentional, wanton and willful infringements; and

(4) in light of the deliberate and willful actions of the Defendant, the

designation of this action as an exceptional case, thereby entitling

Choice Hotels to an award of all reasonable attorney’s fees, costs,

and expenses incurred by Choice Hotels in this action pursuant to

15 U.S.C. § 1117, and an award of such relief.

20
Case 1:17-cv-02402-TWP-DML Document 1 Filed 07/14/17 Page 21 of 22 PageID #: 21

(e) That Choice Hotels be awarded judgment for monetary damages, in an

amount to be determined at trial, against Defendant for its violation of the above-listed

Indiana State laws, including, but not limited to, the unfair competition statute, Ind.

Code §27-4-1-1 et seq. and the Indiana Trademark Act, Ind. Code § 24-2-1-1 et seq.;

(f) That Choice Hotels be awarded its attorney’s fees, costs, and expenses of

this suit;

(g) That Choice Hotels be awarded punitive damages against Defendant for

its intentional, malicious, oppressive, and reckless acts; and

(h) That this Court award Choice Hotels any other just and proper relief in

the premises.

Respectfully submitted,

CARSON BOXBERGER LLP

/s/ Calvert S. Miller
Calvert S. Miller #18079-02
Attorney for Plaintiff

301 W. Jefferson Blvd., Suite 200
Fort Wayne, IN 46802
(260) 423-9411
25803.2

21
Case 1:17-cv-02402-TWP-DML Document 1 Filed 07/14/17 Page 22 of 22 PageID #: 22

DEMAND FOR JURY TRIAL

Comes now Plaintiff, Choice Hotels International, Inc., by counsel, and pursuant

to Rule 38(b) of the Federal Rules of Civil Procedure, hereby demands a trial by jury as

to all issues so triable.

Respectfully submitted,

CARSON BOXBERGER LLP

/s/ Calvert S. Miller
Calvert S. Miller #18079-02
Attorney for Plaintiff

301 W. Jefferson Blvd., Suite 200
Fort Wayne, IN 46802
(260) 423-9411

22