Thursday, April 14, 2011

Caesars Palace Files Declaratory Judgment Action Over OCTAVIUS TOWER

In so many trademark lawsuit stories that grab the media’s attention, the story is often one of a large corporation enforcing its trademark rights against individuals and small businesses in a manner that is often described as “trademark bullying” (but which, of course, from the corporation’s perspective could be seen as zealous protection of the company’s valuable trademark rights). The story behind this lawsuit is quite the opposite – in this case, it is the large corporation that is being bullied (or more accurately, majorly inconvenienced since a large corporation has sufficient resources to fight a legal battle in court) by an individual that is seeking to enforce highly questionable trademark rights.

On April 8, 2011, Caesars World, Inc. (“Caesars”), the owner of the CAESARS PALACE brand of hotel-casinos (including Caesars Palace in Las Vegas), filed a declaratory judgment action against a German man named Marcel July and his Nevada limited liability company, Octavius Tower LLC, based on the defendants claims to have exclusive ownership rights to the mark OCTAVIUS TOWER and demands that Caesars stop using the name in connection with a hotel tower. See Caesars World, Inc. v. July et al, Case No. 11-cv-00536 (D. Nev. April 8, 2011). A copy of the complaint (with exhibits) can be downloaded here.

Back in 2007, Caesars World’s parent company, Harrah’s Entertainment, Inc. (which has since been renamed Caesars Entertainment Corporation) announced a $1 billion expansion of the Caesars Palace Hotel-Casino in Las Vegas. One of the new hotel towers built as part of the expansion was going to be named the “Octavius Tower” (going along with Caesars “Roman” themed hotel/casino – presumably named after Julius Caesar’s adopted nephew, Gaius Octavius [for you Roman history scholars, feel free to correct me]).

The Octavius Tower at Caesars Palace in Las Vegas

Two days after Caesars’ announcement regarding its plans to build Octavius Tower, Mr. July, being the enterprising fellow that he appears to be, decided to registered several domain names such as octaviustowercom; octaviustowers.com; octaviustowerlasvegas.com; and octaviustowerslasvegas.com. The same day, July also registered the domain namescaesarstower.com; caesarstowers.com; caesarspalacetower.com; caesarspalacetowers.com; and caesarspalacetowerslasvegas.com. The websites at those domain names promoted that “The new Caesars Palace Towers are Coming Soon” and that the domain names were for sale (see Exhibit B of the Complaint). Caesars filed domain name arbitration actions against July under the UDRP with respect to those domain names that incorporated the mark Caesars Palace (but chose not to go after the Octavius Tower domain names without any trademark registration). The domain names were transferred to Caesars after the arbitrator determined that the domain names had been registered in bad faith. See Caesars World, Inc. v Marcel July Ra Christian Kaldenhoff, Nat'l Arb. Forum, FA 0801001126341 (March 3, 2008).

On July 20, 2007, Caesars filed its own intent-to-use application for the mark OCTAVIUS TOWER for “hotel services.” The application was allowed by the PTO on January 29, 2008; however, because of well-publicized construction delays due to lack of funding after the major downturn in the economy (see news articles here and here), Caesars was not able to provide a Statement of Use before the January 29, 2011 deadline and the application went abandoned (although Caesars, anticipating that its original application would go abandon, filed a new application on December 10, 2010).

Of course, what happened during the interim? Mr. July filed his own trademark registration applications with the PTO for the mark Octavius Tower in connection with entertainment services – specifically on May 7, 2008, July filed for the mark OCTAVIUS TOWER for “Entertainment services, namely, providing a web site featuring musical performances, musical videos, related film clips and photographs”. A registration was issued September 1, 2009. [Query—given that Caesars was already aware of Mr. July propensity for opportunism as illustrated by his domain name registrations and the fact that the marks were identical, why didn’t Caesar file an Opposition against Mr. July’s applications when it had the chance?] On July 23, 2009, July filed a second application for OCTAVIUS TOWER for “Entertainment in the nature of visual and audio performances, and musical, variety, news and comedy shows; Presentation of live show performances; Theatrical and musical floor shows provided at discotheques and nightclubs; Theatrical and musical floor shows provided at performance venues.” A registration for this second application issued on January 12, 2010. In addition to these federal registrations, July also filed three Nevada state trademark registrations for the mark OCTAVIUS TOWER in connection with entertainment services (here, here, and here) as well as a Florida trademark registration. Caesars alleges in its complaint that July has not used the mark in connection with any of the entertainment services identified in the registration (while I have not reviewed the specimens of use submitted by July in order to get his marks registered, I would not be surprised if they are questionable on their face).

Given that the PTO allowed Mr. July’s applications to register despite Caesars pending application for OCTAVIUS TOWER for hotel services, one would naturally not expect Caesars second application for OCTAVIUS TOWER to encounter any objections from the PTO, right? Wrong. On February 24, 2011, the PTO issued a non-final office action rejecting Caesars new application on the basis of a likelihood of confusion with Mr. July’s registration. So what did Mr. July do once he learned of the rejection? He got an attorney to send a cease and desist letter to Caesars (see Exhibit D of the Complaint) demanding that Caesars stop using Mr. July’s “trademarked name” Octavius Tower in any manner and threatening to pursue “all legal remedies available to him.” Caesars counsel wrote back on March 21, 2011, arguing no likelihood of confusion and offering to enter into a coexistence agreement. On March 23, 2011, July’s attorney later wrote back rejecting the coexistence agreement and reiterating the threat to take legal action. Subsequently, July purportedly modified his website at http://www.octaviustower.com/ to add a page that includes Caesars' 2007 announcement of its plan to launch Octavius Tower and includes copies of the correspondence July’s counsel sent to Caesars along with the message to the public about Caesars “infringement” of July’s trademark rights:

Public awareness of this unacceptable corporate behavior is crucial to eradicating it and we are asking you to take a stand and make a difference on this issue. Your collective voice is more compelling than the lobbying power of corporate giants and it is a voice that cannot be ignored. Together we can make a difference and help keep our freedom intact, for us, for our children, and for our grandchildren.

Caesars, recognizing its opportunity to file a declaratory judgment action against Mr. July in order to redress this mess, filed the instant action. In addition to seeking declarations of non-infringement of Mr. July’s trademark rights, Caesars also seeks to cancel July’s federal and state trademark registrations on the basis of non-use and fraud.

So with all of Mr. July’s talk about enforcing his trademark rights, we shall see how important those marks truly are to him and how strongly he feels about his trademark rights (and the strenghth of such rights). Too many individuals seem to have this impression that registration of a particular mark is the end-all-be-all for solidifying exclusive rights to a particular term. But registration is merely prima facie evidence of trademark rights. If you don't actually have any underlying trademark rights to a mark (i.e., some associated goodwill that the consuming public associates with your mark and thegoods/serivces sold using the mark), then you will not be entitled to make a claim of exclusive rights to a term (especially against a third party using the mark in connection with a substantially differnet good or service).

And while I suspect that Mr. July may try to turn this dispute into a "David vs. Goliath" battle (as reflected by his website) of a large corporation using its corporate power and the legal system to steal his valuable trademark, this is one time where I side with the big company.


5 comments:

victoria said...

Great Blog! Can you make it more Facebook friendly for sharing?

octavius.tower said...

OCTAVIUS TOWER/MARCEL JULY


PRESS RELEASE

To our fans and friends, I would like to apologize for not responding to your phone calls and emails. This has been a very trying time for me and my family. As you are aware, Caesars World, Inc. has filed a federal civil lawsuit against me, and, in this suit, they have called me a criminal and stated that I have committed fraud when applying for my federal and state registrations for the name “Octavius Tower”. As many of you know, the band and the website have been around since 1993, which is some 14 years before Caesars even thought about a new hotel tower called Octavius Tower. I believe that Caesars hired their attorneys from Las Vegas, NV and Atlanta, GA to try to steal my trademarks, and, because they are big and powerful, they think that they can do anything to a small guy like me. After Caesars received my “Cease and Desist” letter, they then had an attorney in Atlanta, GA, send me a letter calling me a “fraud” and an “opportunist” AND this attorney also wrote: “We can cancel your client’s US Trademark Registrations”, but yet, in that same letter, they also said that they would like to “co~exist” with me (imagine that: they want to co~exist with someone they believe to be a fraud and an opportunist?!) So, of course, I told them that I had NO intention of co~existing with people like them, so then…. their next move…….they sue me!! Now I am forced to respond to these ridiculous and frivolous allegations, and I have to spend my time trying to prove our “Octavius Tower” existence from nearly 20 years ago (which by the way I have done and submitted to the court). I have provided indisputable proof, and yet, they are still pursuing this matter, which forces me to deal with Caesars instead of taking care of my wife who is dealing with a serious medical matter. This ordeal has caused a tremendous amount of stress and financial hardship for both of us, and it has nearly destroyed our spirits. We are not sure if it is worth all of the time, stress and money, but I’ll be dammed if I will let these vultures ruin my good name, make these allegations, and steal my legally obtained trademarks (to say nothing about what this is doing to my wife) without a good fight.

Thank you all for your good wishes and support. God bless you.

Marcel / co. OCTAVIUS TOWER (R)

octavius.tower said...

Dear Mr.Ryan Gile,
I like to thank you for posting my PRESS RELEASE on your blog.
I wonder if you had a chance to look up some details and hope for a word of your expertise.
Have a great day,
M.July

octavius.tower said...

Hear and read the "LIVE CBS INTERVIEW" with M.July about Caesars Inc. using M.July's registered Trademark. Just paste and copy the link:

http://octaviustower.com/octavius_tower_2_013.htm

and see what is going on in the "name battle".
Thanks to all,
M.July

octavius.tower said...

CBS LIVE INTERVIEW WITH M.JULY about Caesars Inc. using his registered trade and servicemarks
Octavius Tower. Look behind and see the true story about tha "name battle" we fight. Just paste and copy the link to see, read and hear it.

http://octaviustower.com/octavius_tower_2_013.htm

You also can find all other Interviews and videos on our website www.OctaviusTower.com
Thank yo very much for posting this.
Regards to all,
M.July/Octavius Tower