Tuesday, February 12, 2008

Las Vegas’ World Market Center embroiled in another trademark battle over WORLD JEWELRY CENTER

After my lengthy post yesterday, I am opting for a more succinct post today.

I previously wrote about the lawsuit between the Las Vegas-based World Market Center (“WMC”) and Cost Plus World Market over the mark WORLD MARKET CENTER (link here). That post was based on an article authored by Las Vegas Business Press writer Valerie Miller. Yesterday, Ms. Miller wrote a follow-up piece (link here) over a new trademark battle involving WMC – only this time, it is WMC claiming trademark infringement.

Probity International Corp. (“Probity”), based in Beverly Hills, California, is developing a 1.1 million square foot jewelry mart modeled after WMC’s furniture marketplace (and even located within walking distance) designed to attract wholesale gem buyers and sellers. The jewelry mart is part of a $927 million mixed use project in downtown Las Vegas and will include a 125,000 square foot retail center and 50+ floor residential condominium tower.

Probity chose the name World Jewelry Center for its jewelry mart. On September 7, 2005, Heritage-Nevada VIII, LLC (“Heritage”), Probity’s Nevada-based subsidiary which owns the land being developed and will own the World Jewelry Center, filed a Section 1(b) intent-to-use trademark application for the mark WORLD JEWELRY CENTER (JEWELRY CENTER disclaimed) for various services including retail showroom and wholesale store services in the field of jewelry; real estate management services; health club services; restaurants, bars, and catering services; beauty salon and health spa services; and security guard services. When the mark was published for opposition on September 4, 2007, however, WMC filed an opposition opposing registration on the grounds of likelihood of confusion. See World Market Center Venture, LLC v. Heritage-Nevada VIII, LLC, Opposition 91181644 (T.T.A.B. Filed January 2, 2008).

Heritage filed a second Section 1(b) intent-to-use trademark application for WORLD JEWELRY CENTER (and Design) on August 22, 2006, for a variety of services including retail store services and jewelry trade shows and exhibitions (pictured above). The application is set to be published for opposition in the near future.

But instead of fighting with WMC at the Trademark Trial and Appeal Board, Heritage, on January 30, 2008, opted to file a lawsuit against WMC in the U.S. District Court for the District of Nevada seeking a declaratory judgment of non-infringemen based on its “reasonable apprehension of litigation” arising from WMC’s opposition. See Heritage-Nevada VIII, LLC v. World Market Center Venture, LLC, Case No. 08-CV-00130 (D. Nev.).

No comments: