In reviewing some of the pending oppositions (or extension of time to file oppositions) filed by the Las Vegas Convention and Visitors Authority against businesses with trademark applications that are some play on the WHIVSIV slogan (click here to see the list), I got to wondering about the status of the trademark dispute that started it all.
For those not familiar with the history of the WHIVSIV slogan, R & R Partners Inc. (“R&R”), a big powerhouse advertising and public relations firm in Las Vegas, came up with the ad slogan “What Happens Here Stays Here. Only Vegas.” (“WHHSH”) for the Las Vegas Convention and Visitors Authority (“LVCVA”). The slogan quickly gained in popularity thanks in part to ads which first ran on TV in February 2003. From there, the slogan took on a life of its own as it morphed into “What Happens In Vegas Stays In Vegas.” The WHIVSIV phrase could be heard in TV shows, movies, and news stories about Las Vegas. Steve Friess wrote a good article for the Chicago Tribune and Boston Globe back in 2004 titled “A firm hits jackpot on Las Vegas ads” about how the WHIVSIV phrase entered into the public lexicon.
The only problem is that neither R&R or LVCVA sought to apply for registration of its WHHSH slogan on the USPTO’s principal register. An enterprising lady named Dorothy Tovar, however, saw the commercial potential with the WHIVSIV phrase, and on February 28, 2003, filed two Section 1(b) intent-to-use applications with the USPTO to register the WHIVSIV mark for shirts and for underwear, sleepwear, and headwear.
R&R and LVCVA discovered Tovar’s use of the WHIVSIV slogan in selling T-shirts as well as her trademark applications, and on March 22, 2004, filed suit against Tovar and her company, Adrenaline Sports, Inc., in the U.S. District Court for the District of Nevada. See R and R Partners, Inc. v. Dorothy L. Tovar, Case No. 3:04-cv-00145-LRH-PAL (D. Nev.). On the same date, R&R filed its own trademark applications for WHHSH (for public relations). While the case was proceeding, Tovar’s two applications registered, respectively, on March 8, 2005 and August 16, 2005.
While there were news stories back in August 2006 (see here and here) that announced that Tolar had lost on summary judgment, the actual judgment did not get filed until May 17, 2007. The court’s order can be downloaded from the TTAB (link here) – where a copy of the judgment was included in a TTAB status report response. What I find interesting is that this judgment does not appear to have registered on the mainstream media’s radar screen (not like the judge’s determination back in August) – a little like a criminal being found guilty, but no one cares about the actual sentence given.
District Court Judge Larry Hicks apparently found that Tovar did not have the right to register the WHIVSIV mark and ordered her two registrations cancelled and five pending applications abandoned. The court also ordered her Nevada and California state trademark registrations cancelled. The court enjoined Tovar from selling any goods or services using the WHIVSIV mark, ordered her to remove all goods with the mark, and ordered her to transfer any domain names incorporating the WHIVSIV mark to LVCVA. Finally, the court ordered $81,258.90 in damages and $33,228.32 in costs, with post-judgment interest rate of 4.93%.
Tovar filed an appeal of the decision to the Ninth Circuit on May 21, 2007. See R&R Partners, Inc., et al v. Tovar, et al, Case No. 07-15928 (9th Cir.). However, Tovar does not appear to be expeditiously prosecuting the matter. She filed a motion to extend time to file her opening brief to October 6, 2007, which was granted (and extended to October 9th). However, it appears from the case docket that Tovar never filed her opening brief and R&R/LVCVA have filed a motion to dismiss for failure to prosecute.
Based on the district court’s judgment, Tovar’s two registrations have been canceled (as of October 1, 2007) and her remaining applications, to the extent they had not already gone abandoned, have been abandoned (although there is one still live – due either to the PTO’s backlog in canceling it or perhaps because this application was not explicitly mentioned in the court’s order, although such order did include catch-all order requiring Tovar to abandon all other federal and state applications).
While the battle continues at the Ninth Circuit, Tovar continues to fight LVCVA on another front. Tovar and another company, SanSegal Sportswear, Inc. (“SanSegal”), each filed oppositions (Opposition No. 9117036 and Opposition No. 91170135) against R&R’s trademark application for WHHSH on March 29, 2006. While Tovar’s opposition is suspended pending the outcome of the Ninth Circuit appeal, SanSegal continues its fight to oppose registration. R&R is currently seeking summary judgment before the TTAB.
The fight over WHIVSIV and WHHSH continues.