Happy Halloween !
Trademork brought back some memories with his post last Saturday (link here) regarding recently filed applications for the mark INFOCOM by two separate companies.
The first intent-to-use application for INFOCOM, filed on July 2, 2007, by a German man named Oliver Klaeffling, covers game software. However, the second application, filed on October 3, 2007, by a company named Omni Consumer Products LLC, is a use-in-commerce application for the mark INFOCOM for a similar class of goods claiming first use in March 2006. Given the fact that the German INFOCOM application already has been approved for publication, one would suspect Omni Consumer Products to file an opposition.
As most 80s computer gamers surely remember, INFOCOM was the software company that published several text-based adventure games in the 80s, such as the Zork series, Infidel, Cutthroats, The Hitchiker’s Guide to the Galaxy, and Leather Goddesses of Phobos. The company was bought by Activision in 1986, but eventually was shut down by the publisher in 1989 even though some games were released in the 1990s under the Zork brand (e.g., Return to Zork).
For those of us with fond memories of playing adventure and fantasy role playing games on their Apple II computers, here are a few trademark registrations that I hope will bring back some memories:
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.]
On October 10, 2007, First Niagara Insurance Brokers, Inc. (“FN Insurance”), located in Niagara Falls, Ontario, filed a lawsuit in the U.S. District Court in for the Southern District of New York against First Niagara Financial Group, Inc. (“FN Financial”). See First Niagara Insurance Brokers, Inc. v. First Niagara Financial Group, Inc., Case 7:07-cv-08720 (SDNY). FN Insurance is seeking an injunction against FN Financial to stop the company from using the First Niagara name and also seeking $532 million in actual damages (pre-tax net revenues the bank has taken in since adopting the name in January 2000) and treble damages of $1.5 billion.
The trademark dispute has been on ongoing one for several years – with the two parties fighting over the First Niagara name in the U.S. Patent and Trademark Office for some time. When the decision was made back in January 2000 for Lockport Savings Bank to change its name to First Niagara Financial, FN Financial filed intent-to-use trademark registration applications right away on January 7, 2000, including FIRST NIAGARA, FIRST NIAGARA (and design), FIRST NIAGARA FINANCIAL GROUP (each application covering four classes of goods and services, including insurance services in Class 36)
In February 2001, FN Insurance instituted oppositions with the Trademark Trial and Appeal Board (“TTAB”) against FN Financial’s applications seeking to prevent registration on the grounds of Section 2(d) likelihood of confusion. See Opposition Nos. 91122072, 91122193, 91122224, 91122450, 91122712 and 91150237.
Meanwhile, on September 27, 2002, FN Insurance filed its own trademark applications, FIRST NIAGARA INSURANCE BROKERS and FIRST NIAGARA (both for insurance agency services), claiming use in commerce back to 1984. FN Financial filed its own opposition against FN Insurance’s application for FIRST NIAGARA INSURANCE BROKERS (Opposition No. 91163457, which was suspended pending the outcome of the other consolidated oppositions) while prosecution on FN Insurance’s other application was suspended.
On October 21, 2005, the TTAB, in a precedential decision, decided against FN Insurance finding that FN Insurance could not establish use of its marks for insurance brokerage services “regulable by Congress.” See First Niagara Insurance Brokers Inc. v. First Niagara Financial Group, Inc., 77 USPQ2d 1334 (TTAB 2005) (decision here). In essence, because FN Insurance only offered its services in Canada, and not in the U.S., its use could not constitute use in commerce because Congress does not regulate use in commerce outside of its borders. The TTAB disregarded evidence of FN Insurance’s advertising efforts in the United States as use in commerce within the United States. Without such use, the TTAB found FN Insurance could not establish priority, could not make out a claim for Section 2(d) likelihood of confusion, and dismissed the oppositions.
However, that decision was reversed by the Court of Appeals for the Federal Circuit (“CAFC”) in its own precedential ruling holding that the TTAB had used the wrong standard in holding that use must be use “regulable by Congress.” First Niagara Insurance Brokers, Inc. v. First Niagara Financial Group, Inc., Appeal No. 06-1202, 81 USPQ2d 1375 (Fed. Cir. Jan. 9, 2007). The CAFC, finding that FN Insurance had submitted sufficient evidence to demonstrate use of its mark in the United States to satisfy the requirements of Section 2(d), found that the TTAB had clearly erred in dismissing the oppositions and remanded the case back to the TTAB for further proceedings.
On remand, the TTAB sustained three of the oppositions in part and dismissed the oppositions in the other three cases. See First Niagara Insurance Brokers Inc. v. First Niagara Financial Group, Inc. (TTAB June 6, 2007) (decision here). The Board found a likelihood of confusion between FN Insurance’s marks and three of FN Financial’s applications when used in conjunction with insurance services (class 36). The court did not find such a likelihood of confusion with respect to the other classes of goods in those three FN Financial’s applications nor with FN Financial’s other three trademark applications (which were directed only to banking services).
Both parties have appealed this recent TTAB decision to the CAFC. FN Insurance is apparently not satisfied that FN Financial will continue to use the name First Niagara in association with banking services (which FN Insurance maintains is closely related to insurance services). On the other side, FN Financial is apparently not satisfied that FN Insurance has shown sufficient use within the United States to establish Section 2(d) likelihood of confusion.
FN Insurance, however, appears to have gotten impatient with the wait and has decided to take much more drastic action. By going straight to District Court, FN Insurance can seek an injunction to stop FN Financial from using the name FN Insurance. Of course, given the fact that the two businesses have coexisted for some time, FN Insurance may be hard pressed to show that it now faces irreparable harm, much less a strong showing of likelihood of confusion to justify a presumption of irreparable harm in order to obtain a quick preliminary injunction against FN Financial. After all, the TTAB in its second decision found that so-called evidence of actual confusion (the 2600 misdirected e-mails) may have been more the result of confusion over the parties similar domain names and not from a confusion as to source. In addition, the emails were apparently addressed to specific individuals, and not general inquiries searching for insurance policies.
There is also some question of whether a presumption of irreparable harm should follow a finding of likelihood of confusion or whether the holding of the U.S. Supreme Court in eBay, Inc. v. MercExchange, L.L.C., 126 S. Ct. 1837 (U.S. 2006), which involved an injunction in the area of patents, has set a new standard by which federal courts should abide in deciding whether to grant injunctions for trademark infringement. For an interesting article on this uncertainty, see “The Unsettled State of Preliminary Injunctions for Trademark Infringement,” Day Pitney LLP Alert (July 26, 2007) (link here).
Wham-O's Yellow and Blue Slip 'N Slide
Rival companies suspected that a friendship between John McIlhenny and then President Theodore Roosevelt (a second lieutenant in Roosevelt’s Rough Riders) may have influenced the government’s decision to grant the trademark. However, the Commissioner of Patents later withdrew the “Tabasco” registration in 1909 based on an alleged false declaration by John McIlhenny because McIllhenny could not claim that it had exclusively used the mark in commerce given the fact that other competitors had used the same term (i.e. McIllhenny had not used the mark exclusively). The action was upheld by the U.S. Court of Appeals for the District of Columbia in 1910.
McIllhenny Company was also sued for libel based on circulars titled “E. M. McIlhenny’s Son v. Infringers,” which were sent out by the company on July 17, 1906, publicizing its trademark registration and calling anyone else using the term “Tabasco” as an infringer. One competing Tabasco sauce maker, New Iberia Extract of Tabasco Pepper Co., Limited, sued McIllhenny and, in 1912, eventually won $5,000 in damages decision by Louisiana Supreme Court. The same court also determined that McIllhenny’s exclusive right to use the name Tabasco expired with its 1870 patent.
However, McIllhenny continued to fight for its right to use the mark exclusively. And on July 29, 1918, the Fifth U.S. Circuit Court of Appeals in Gaidry v. McIlhenny Co., 253 F. 613, recognized McIlhenny as the exclusive holder of the right to sell pepper sauce with the mark “Tabasco.” In short, the court found that despite the geographic descriptiveness of the word Tabasco, it had acquired a secondary meaning to the public as an source identifier, namely identifying McIllhenny’s red pepper sauce.
Spurred on by the Fifth Circuit decision that McIllhenny had a common law trademark right to Tabasco name, McIllhenny then filed a trademark infringement suit in 1919 against Ed Bulliard, who made a sauce named “Evangeline Tabasco Sauce.” In 1920, the U.S. District Court for the Western District of Louisiana granted an injunction to stop Bulliard from using the term Tabasco. The companies negotiated an agreement that would allow Bulliard (as McIllhenny had done with other competitiors) to list simply list Tabasco peppers as one of the ingredients. McIllhenny had to go back years later to file another similar lawsuit to stop Bulliard’s use of the term Tabasco. In 1929, the McIllhenny family also won a trademark infringement suit against Trappey, thus firmly securing McIllhenny’s exclusive right to have the only sauce that could be called “Tabasco.”
The end result is one of the world’s oldest and most recognizable brands. A link to the original 1906 registration is not available, but based on the prior registrations cited in the oldest TABASCO mark that is viewable through PTO’s TARR database (Reg. # 223,310 for TABASCO, which registered on February 1, 1927), these 1906 registrations are likely Reg. # 53,928 and # 53,929. Another TABASCO trademark is its signature bottle shape (pictured below), which McIllhenny registered on March 15, 1966 (see Reg. # 805,671).
On October 9, 2007, Las Vegas Sands Corp. (“Las Vegas Sands”) filed a lawsuit against Joshua Murega, a California resident, in the U.S. District Court for the District of Nevada. A copy of the complaint can be downloaded here (courtesy of me).
As most people who live in Las Vegas know, Las Vegas Sands operates The Venetian Resort Hotel and Casino. In addition, Las Vegas Sands holds numerous registered trademarks and service marks for various goods and services that are variants of the mark VENETIAN. See, e.g., VENETIAN, THE VENETIAN, and THE VENETIAN RESORT HOTEL CASINO.
At issue in the complaint is Murega’s registration and ownership of various .COM domain names which contain the word “venetian,” including the following (for which I have purposely not included any hyperlinks):
Mr. Murega registered the domain names on or about August 29, 2007. On September 25, 2007, Las Vegas Sands’ counsel sent a cease and desist letter to Murega demanding that Murega cease all use of the domain names and that the domain names be transferred to Las Vegas Sands. Murega responded with a letter offering to transfer the domain names “if your response is favorable.” It is not clear from the complaint what, if anything, happened after that.
Las Vegas Sands alleges that the domain names were not registered in good faith and that Murega derives income from the links posted on the website. The complaint sets forth five counts: cybersquatting under 15 U.S.C. §1125(d), false designation of origin/unfair competition under 15 U.S.C. §1125(a), common law trademark infringement, deceptive trade practices under NRS 598.0903 et seq., and intentional interference with prospective economic advantage.
Las Vegas Sands is asking for an injunction prohibiting Murega from using the VENETIAN mark and from registering any more domain names containing the VENETIAN mark. Las Vegas Sands also requests an order to the domain name registrar of Murega’s domain names transferring the domain names to Las Vegas Sands. Finally, Las Vegas Sands asks for damages (compensatory, consequential, statutory, exemplary, and/or punitive) as well as interests, costs, and attorney’s fees.
Focusing on just the § 1125(d) cyber squatting count, the law states that a domain name registrant is liable to a trademark owner if the registrant (i) registers, traffics in, or uses a domain name that a) is identical or confusingly similar to a distinctive mark or b) is identical or confusingly similar to or dilutive of a famous mark and (ii) has a bad faith intent to profit from that trademark, including a personal name, which is protected as a trademark under Section 43 of the Lanham Act. See 15 U.S.C. § 1125(d)(1)(A).
It is safe to say that Mr. Murega has registered and is using a domain name that is confusingly similar to and possibly even dilutive (for some of the domain names) of a famous mark. So his liability for cybersquatting rests of the question of bad faith. The law sets forth the nine factors that courts can consider in determining whether a person had a “bad faith intent to profit.” See § 1125(d)(1)(B).
I seriously doubt Mr. Murega can show any other trademark rights to the name. He has no prior use of the domain name in connection with a bona fide offering of any goods or services. Upon receiving Las Vegas Sands’ cease and desist letter, he offered to transfer the sites without having used or having a bona fide attempt to use the domain name to offer any goods or services. Given the fame of the VENETIAN mark, he could not have legitimately believed or had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful. The combination of the word VENETIAN with such words as weddings, casinos, shows, and dining clearly shows a connection of the mark VENETIAN to the Las Vegas hotel and casino (and not as an adjective pertaining to Venice). Finally, the complaint alleges that his domain names went to directory websites that provided "click-through" links to various other hotel websites which compete with The Venetian. All of these factors favor a finding of “bad faith intent to profit.”
However, Mr. Murega may be setting up to assert a “fair use” defense. I did not download all of the exhibits to the complaint, and therefore, do not know what the websites looked like before today. But when I visited a few of Murega’s sites (the few that were even working), what I discovered was a page with a 10 second countdown that said “You Are Being Redirected to The . . . .” (origin of gaming, beautiful city of the world, etc.) On this page (for at least one of the sites), there was a Vegas.com banner ad that one could click on. Then after the 10 second countdown, a page appears providing eleven paragraphs of factual data about Venice. If you are really curious and have to see it to believe it, click here and have a good laugh at a web page that looks like it was put together by a 12-year old.
Very clever, Mr. Murega. But judges are not as naïve as you may think. They have a great deal of discretion in this area, and will likely see this lame attempt to make some “fair use” out of your website as further evidence that your original registration of such domains was indeed in bad faith.
I would be surprised if Mr. Murega even answers the complaint. If he does, I would suspect it will be “in pro per” as I doubt any attorney would want to represent Mr. Murega in defending his domain names – at least not without making sure to get a large retainer upfront.
As for why Las Vegas Sands did not first pursue arbitrations under ICAAN’s Uniform Domain-Name Dispute-Resolution Policy, the most likely reason is that Las Vegas Sands wanted a legal order in place that it can assert to prevent Mr. Murega , under penalty of the law, from ever doing this again. After all, now that Las Vegas Sands has opened The Venetian Macao, Mr. Murega may try again. http://www.venetianmacaocasinos.com/ is available!
In addition, apparently several other schools use the name or a derivation of SUN DEVILS, including two California schools and one in Colorado.
The article notes that the name Sparky is not trademarked by ASU, but rather actually belongs to the National Fire Protection Association, Inc. for their own Dalmation mascot). With a little coaxing from the article’s author, Dietrich, the NFPA’s president said he would consider (with a slight grin and chuckle) sending ASU its own cease and desist letter.
But given that the SPARKY word mark held by NFPA covers promoting public awareness and understanding of fire prevention and protection, ASU could probably register the same name itself for its own goods and services – if not under §1, then certainly under §2(f) given the notoriety of the name as used in conjunction with ASU’s mascot.
While ASU may have overlooked registering the SPARKY name, they certainly did not overlook getting registrations for the Sparky logo (pictured above) covering the same categories as the SUN DEVIL mark: T-shirts and other clothing; mugs, cups, etc.; publications concerning the University; and sponsoring athletic events. In addition, ASU did obtain a registration for TEAM SPARKY (for sponsoring intramural, intercollegiate and exhibition athletic and sporting events).
While any trademark attorney can appreciate ASU’s position in policing the use of a team name that is much more distinctive than such common team names as Wildcats, Rangers, or Cowboys, one does have to wonder why ASU waited nearly 19 years to take action against the school. Is this really about protecting ASU’s valuable intellectual property or another case of a “brand name bully.” (Click here for a good article in The Southeast Texas Record by John G. Browning titled “Legally Speaking: Brand Name Bullies” talking about the growing trend of big companies wielding their trademark portfolios against individuals and small businesses).
Ryan Gile is a trademark and intellectual property attorney with Weide & Miller, Ltd. – a full-service intellectual property law firm that has earned Martindale Hubbell’s highest peer review rating (an AV® certification).
Phone: (702) 382-4804