Tuesday, October 16, 2007

Las Vegas Tropicana Owner Goes Double-Down on Trademark Infringement Gamble Against Users of the Name TROPICANA

On September 28, 2007, the Business Courier of Cincinnati ran an article titled “Yung takes owner of other Vegas 'Tropicana' to task.” The story was about how Tropicana Entertainment, LLC, the owner of the Las Vegas Tropicana Hotel and Casino and the "Tropicana" trademark, had filed a trademark infringement lawsuit on September 17, 2007, in the U.S. District Court in the Eastern District of Kentucky against Jackson-Shaw Company, the owner of the “Hampton Inn Tropicana” in Las Vegas. See Tropicana Entertainment, LLC v. Jackson-Shaw Company, Case No. 2:2007cv00147 (E.D. Ky.)

William Yung, the owner of Columbia Sussex Corp. based in Ft. Mitchell, Kentucky, acquired the Las Vegas Tropicana Hotel and Casino (along with its intellectual property and goodwill) in January when it bought Aztar Corporation for $2.75 billion. Click here for a good background article that ran in the Courier Press regarding the buyout and Bill Yung.

In addition to the Las Vegas Tropicana Hotel and Casino property, Yung's company also obtained two trademark registrations for the name TROPICANA (Reg. # 1572514 for casino services and Reg. # 1530186 covering two classes of services, entertainment services and hotel and restaurant services). The marks were originally registered in 1989 by Ramada Inc., but use in commerce goes back to 1957.

Yung apparently wasted no time in asserting his newly acquired intellectual property. The assignments which formally assigned the marks from Aztar to Tropicana Entertainment were not even executed until September 12, 2007, and recorded with the USPTO on September 13, 2007 (links to USPTO Assignments database here and here). Four days later, the company’s first trademark infringement lawsuit was filed.

The Business Courier article noted that there are hotels, restaurants and nightclubs all over the world using the name Tropicana, including a Newport, Kentucky business named Jeff Ruby's Tropicana at Newport on the Levee. Ruby's nightclub opened in 2002 and was apparently modeled after the Tropicana casino on Newport's Monmouth Street that closed in the early 1960s. Both the Newport and Las Vegas casinos came along long after 1939, which is the year that the Tropicana Cabaret was established in Cuba.

The article noted that there was no indication that Yung was planning a similar legal action against anyone else. Well, that changed yesterday when Tropicana Entertainment, LLC, on October 16, 2007, filed a new trademark infringement lawsuit against Jeff Ruby Culinary Entertainment, Inc. in the U.S. District Court in the Eastern District of Kentucky. See Tropicana Entertainment, LLC v. Jeff Ruby Culinary Entertainment, Inc., Case No. 2:2007cv00168 (E.D. Ky.)

Without seeing a copy of the actual complaint, Tropicana Entertainment is likely seeking injunctive relief to stop Mr. Ruby from using the Tropicana name for his nightclub on the grounds of 1) Section 32 trademark infringement (15 USC § 1114) of Tropicana Entertainment’s registered trademark on TROPICANA for entertainment services; 2) Section 43(a) trademark infringement, false designation of origin, false representation and unfair competition (15 USC § 1125(a)) with respect to Tropicana Entertainment’s TROPICANA marks; and 3) maybe even a Section 43(c) claim of trademark dilution (15 USC § 1125(c)) of Tropicana Entertainment’s “famous” TROPICANA mark. [As a sidenote, on the subject of trademark dilution, check out Michael Atkins’ Seattle Trademark Lawyer Blog (link here) for his discussion of the current state of court interpretations regarding the Trademark Dilution Revision Act of 2006.] Finally, Tropicana Entertainment will probably throw in the usual actual damages, treble damages, costs and attorneys fees.

Given the length of time in which both parties have been operating, one fully expects both defendants to assert laches as a defense to these not-so-timely allegations of trademark infringement. Assuming the parties decide to fight it out with Mr. Yung.

[10/17/07 (11:41 a.m.) Update: The Cincinnati Enquirer ran an article today (link here) about the lawsuit filing. Apparently, Ruby was contacted by Yung several months ago and discussions were ongoing to resolve the dispute. The lawsuit does claim trademark dilution in additon to unfair competition.]

Las Vegas Tropicana (Circa late 1950s)

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