I must admit that I had missed this local story about an interesting and ongoing Nevada state court trademark battle pitting two billionaires against each other over the hotel name “Plaza.”Reporter Brian Miller has an article appearing today on GlobeSt.com (link here) about the lawsuit filed last year by the Tamares Group (“Tamares”) – the owner of the Plaza Hotel & Casino in Downtown Las Vegas – against the El-Ad Group, Ltd. (“El-Ad”), the owner of New York’s famed “Plaza Hotel,” which it purchased in 2004 for $675 million. Tamares is owned by billionaire Poju Zabludowicz while El-Ad is a subsidiary of the Derek Group which is owned by billionaire Yitzhak Tshuva.
El-Ad (through its IP holding company Plaza IP Holdings, LLC) owns the federal registration for THE PLAZA design mark (pictured above) for hotel and restaurant services, which was registered on September 1, 1987 with claimed date of first use dating back to December 31, 1906. El-Ad also has several other pending applications for both the word mark THE PLAZA and THE PLAZA design mark for such services as condominium hotel services and casinos – most of which were filed in February 2007.
New York City's Plaza Hotel
In May 2007, El-Ad announced (click here) its acquisition from Phil Ruffin of a 34.5 acre parcel of land located on the Las Vegas Strip for an estimated $1.25 billion on the site where The New Frontier & Casino used to be located. El-Ad’s planned to develop the site for a $5 billion Las Vegas Strip resort project that was apparently going to use El-Ad’s “Plaza” brand name (LA Times story here).
In March 2008, El-Ad formed a joint venture (El-Ad IDB Las Vegas LLC) with a subsidiary of Israel’s largest business group, IDB Development Corp., in order to develop its “Plaza” project, which is currently slated to begin excavation sometime by the end of 2008 (click here the announcement of the approval of the project by the Clark County Commission).
In March 2008, El-Ad formed a joint venture (El-Ad IDB Las Vegas LLC) with a subsidiary of Israel’s largest business group, IDB Development Corp., in order to develop its “Plaza” project, which is currently slated to begin excavation sometime by the end of 2008 (click here the announcement of the approval of the project by the Clark County Commission).
Artist's rendering of The Plaza - Las Vegas
The only problem is that Las Vegas already has its own “Plaza” hotel – The Plaza Hotel & Casino located at the end of Fremont Street in downtown Las Vegas for the last 30 years. And while Las Vegas’ Plaza Hotel may not be as luxurious as the more well-known Plaza hotel in New York, fans of downtown Las Vegas will agree that this property has become a long-standing fixture of downtown Las Vegas and has held its own over the years amongst the hotel/casinos along “Glitter Gulch” and even amongst those on the Las Vegas Strip.
Las Vegas' Plaza Hotel (and Casino)
Of course, it should also be noted that when the hotel/casino originally opened in 1971, it was known as Union Plaza (changed from Union Hotel) because it was built on the site of the old Union Pacific Railroad Station (if you go back and watch the James Bond film Diamonds are Forever you can even see the Union Plaza under construction). When exactly the “Union” name was dropped is unclear -- in 1992 it was renamed Jackie Gaughan's Plaza and when it was sold to Barrick Gaming Corp. in 2004, the hotel appears to have been rebranded Plaza Las Vegas.
In addition to its common law usage of the “Plaza” name over the years, Tamares holds several Nevada state service mark registrations – although all of them were filed shortly after El-Ad announced its intended “Plaza” project:
- PLAZA (for casinos) – filed June 6, 2007, claiming first date of use back to 1/1/1977
- PLAZA (for hotels) – filed June 6, 2007, claiming first date of use back to 1/1/1977
- PLAZA HOTEL AND CASINO (for casinos) – filed June 6, 2007, claiming first date of use back to 12/31/1982
- PLAZA HOTEL AND CASINO (for hotels) – filed June 6, 2007, claiming first date of use back to 12/31/1982
- PLAZA LAS VEGAS (for casinos) – filed May 31, 2007, claiming first date of use back to 3/24/2004
- PLAZA LAS VEGAS (for hotels) – filed May 31, 2007, claiming first date of use back to 3/24/2004
In addition, on June 1, 2007, Tamares filed two federal servicemark applications for the mark PLAZA LAS VEGAS (for casinos and “Hotel, bar and restaurant services provided in Las Vegas, Nevada” [Comment: Interesting limitation of services]). Then on June 6, 2007, Tamares filed two additional service mark applications for PLAZA HOTEL AND CASINO (and design) for casinos and hotel, bar and restaurant services. Because El-Ad’s applications were earlier filed and because of the potential likelihood of confusion, the PTO suspended prosecution of Tamares’ applications pending disposition of El-Ad’s applications.
So, naturally, when El-Ad’s applications started getting published for opposition, it is no surprise that Tamares filed oppositions to registration. See Tamares Las Vegas Properties, LLC v. Plaza IP Holdings LLC (USA), Opposition Nos. 91181304, 91181273, 91181266, and 91181236 (T.T.A.B. Filed December 12, 2007). Of course, all of these oppositions have been suspended pending the outcome of the civil action.
While the lawsuit was initially filed in Clark County District Court, El-Ad removed the case to federal court; however, Tamares succeeded in having the case remanded back to state court (background article from Haaretz.com). After deciding various summary judgment motions brought by both parties, the court scheduled the case for jury trial beginning next week.
Vegas™Esq. Comments:
So, naturally, when El-Ad’s applications started getting published for opposition, it is no surprise that Tamares filed oppositions to registration. See Tamares Las Vegas Properties, LLC v. Plaza IP Holdings LLC (USA), Opposition Nos. 91181304, 91181273, 91181266, and 91181236 (T.T.A.B. Filed December 12, 2007). Of course, all of these oppositions have been suspended pending the outcome of the civil action.
While the lawsuit was initially filed in Clark County District Court, El-Ad removed the case to federal court; however, Tamares succeeded in having the case remanded back to state court (background article from Haaretz.com). After deciding various summary judgment motions brought by both parties, the court scheduled the case for jury trial beginning next week.
Vegas™Esq. Comments:
This should be an interesting case. Without the benefit of any pleadings, I can only speculate as to the claims and counterclaims -- other than the obvious claims by Tamares that El-Ad's use of the “Plaza” name for its “Plaza Las Vegas” hotel will cause reverse confusion.
El-Ad is probably trying to argue that consumers will not confuse its famed high-end luxury “Plaza” brand with Tamares’ downtown hotel and casino, which explains why the jury will actually be touring the Plaza Hotel & Casino during the trial. However, I think most consumers encountering just the marks alone “Plaza Las Vegas” and “Plaza Hotel & Casino” would believe they are affiliated – and moreover, would associate “Plaza Las Vegas” with the Plaza Hotel & Casino given the long-standing use of the “Plaza” name in connection with this Las Vegas hotel and casino.
While El-Ad could try to argue that “plaza” is so widely used in conjunction with hotels nationwide that the word doesn’t serve as a source identifier (do a Google search for the words "plaza" and "hotel" and see what you find after you get past the obvious hits), that kind of argument would seem to go against El-Ad’s own trademark interests in the “Plaza” brand name.
El-Ad may also try to argue that it actually has superior senior rights to “The Plaza” name for hotel services due to the long-standing use and fame of the name in connection with its New York hotel; however, El-Ad will have a tough time trying to explain away Tamares’ long-standing open and notorious use of the “Plaza” name in connection with its Las Vegas hotel/casino (although the Las Vegas hotel/casino may have only been known just by the words “Plaza” since 2004 which gives El-Ad some argument that its rights are superior -- and also helps should Tamares attempt to assert a laches defense to any counterclaim of infringement by El-Ad). In addition, “The Plaza” is famous for hotels, but can the same be true for “casino services.”
However, if El-Ad cannot stop Tamares’ use of the “Plaza” name, I would think that El-Ad would be more concerned that consumers might actually think that the Plaza Hotel & Casino is somehow affiliated with El-Ad’s Plaza Las Vegas and be disappointed when the Plaza Hotel & Casino is not as upscale as they would have expected from the owners of “The Plaza Las Vegas” – which ultimately harms El-Ad’s goodwill in its own “Plaza” brand. But I guess if you pay $675 million for an old piece of New York property with a well-recognized name, you might be eager to try and exploit that name to get your money's worth on your investment.
El-Ad is probably trying to argue that consumers will not confuse its famed high-end luxury “Plaza” brand with Tamares’ downtown hotel and casino, which explains why the jury will actually be touring the Plaza Hotel & Casino during the trial. However, I think most consumers encountering just the marks alone “Plaza Las Vegas” and “Plaza Hotel & Casino” would believe they are affiliated – and moreover, would associate “Plaza Las Vegas” with the Plaza Hotel & Casino given the long-standing use of the “Plaza” name in connection with this Las Vegas hotel and casino.
While El-Ad could try to argue that “plaza” is so widely used in conjunction with hotels nationwide that the word doesn’t serve as a source identifier (do a Google search for the words "plaza" and "hotel" and see what you find after you get past the obvious hits), that kind of argument would seem to go against El-Ad’s own trademark interests in the “Plaza” brand name.
El-Ad may also try to argue that it actually has superior senior rights to “The Plaza” name for hotel services due to the long-standing use and fame of the name in connection with its New York hotel; however, El-Ad will have a tough time trying to explain away Tamares’ long-standing open and notorious use of the “Plaza” name in connection with its Las Vegas hotel/casino (although the Las Vegas hotel/casino may have only been known just by the words “Plaza” since 2004 which gives El-Ad some argument that its rights are superior -- and also helps should Tamares attempt to assert a laches defense to any counterclaim of infringement by El-Ad). In addition, “The Plaza” is famous for hotels, but can the same be true for “casino services.”
However, if El-Ad cannot stop Tamares’ use of the “Plaza” name, I would think that El-Ad would be more concerned that consumers might actually think that the Plaza Hotel & Casino is somehow affiliated with El-Ad’s Plaza Las Vegas and be disappointed when the Plaza Hotel & Casino is not as upscale as they would have expected from the owners of “The Plaza Las Vegas” – which ultimately harms El-Ad’s goodwill in its own “Plaza” brand. But I guess if you pay $675 million for an old piece of New York property with a well-recognized name, you might be eager to try and exploit that name to get your money's worth on your investment.
1 comment:
I've just read some of the stories on the closing arguments at this goes to a decision and you brought up something that I have yet to see much of elsewhere:
Despite owning the prestigious Plaza name in New York City, they need to be very careful about possibly being mistaken for the Las Vegas Plaza (which truth be told... I've had more than a few drinks and late night food specials at over the years).
Analogy: I own Rob's Steak House in Dallas (fictitious high end fine dining establishment) and the restaurant has been around 100 years.
I want to start a Rob's in Las Vegas and find out that a Rob's Family Restaurant already exists. On top of that... the existing Las Vegas restaurant is pretty much a dive serving cheap food in a modest setting with no ambiance at all.
I can't say I'd be in such a hurry to keep my Dallas restaurant name and invite the negative confusion.
Unfortunately, many in New York City feel that it is the center of the Universe and that everyone around the world is probably familiar with the Plaza in New York (hence their push to keep the name). In reality, I bet 99% of Las Vegas visitors have never heard of the NYC Plaza.
Be interesting to see how this shakes out.
Ted Newkirk
Managing Editor
Las Vegas Insider Vibe
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