MGM’s “The Signature” Condo-Hotel goes after unit owner for trademark infringement

On June 20, 2008, MGM Grand Hotel, LLC (“MGM”) and Signature Condominiums, LLC (“Signature” and together with MGM, the “Plaintiffs”) filed a trademark infringement lawsuit in the U.S. District Court for the District of Nevada against an individual named Jarrett Curd. See MGM Grand Hotel, LLC et al v. Curd, Case No. 08-cv-00753 (D. Nev). A copy of the complaint can be downloaded here.

The Signature at MGM Grand

Signature manages the three tower condominium-hotel project gracing the Las Vegas skyline known as "The Signature at MGM Grand.” (“The Signature”). MGM owns a federal trademark registration for the design mark THE SIGNATURE AT MGM GRAND (pictured below) (the “Signature Logo”).

For those not familiar with the condo-hotel concept, condo-hotel units, such as those at The Signature, are traditional condominium units in that they are privately owned. However, the owners of these condo-hotel units also have the option of making their units available to be booked as hotel rooms by, in the case of units at The Signature, MGM-Mirage (the owner of the MGM Grand Hotel & Casino) through the MGM Mirage Central Reservation Service – the same service that all MGM Mirage hotel properties use to make their hotel rooms available for guest booking. These condo-hotel units are available for booking through such Global Distribution Service (“GDS”) providers, such as Sabre, Amadeus, Apollo, Worldspan and Pegasus. For those owners who choose to have their units booked as hotel rooms, Signature handles the management of the room during the duration of the guest’s stay (e.g. check-in/check-out, maid service, maintenance, etc.). The revenue generated is then shared by Signature and the unit owners. Unit owners do not have to use the MGM Mirage Central Reservation Service and can make their condos available for booking through other means, so long as they pay a so-called “transient service fee.”

Curd allegedly owns one or more units in The Signature. According to the complaint, Curd independently offers his units at The Signature for booking by guests using the business name “Owners Suites at Signature MGM Grand." Curd also acquired the domain name http://www.signaturemgmgrandownerssuites.com/, which now simply forwards to the Curd’s current website -- http://www.ownerssuitesatsignature.com/ (although it may not have at the time). It should be noted that Curd’s current website does not actually use the whole name “Owners Suites at Signature MGM Grand" (probably after advice from counsel), but instead uses “Owners Suites® at Signature” (a name which has its own problems, but I will address that later).

Plaintiffs maintain that this domain name is likely to cause confusion as to the source or origin of Curd's services or as to an affiliation or relationship with Signature or as to Signature's sponsorship or approval of Curd's services. Plaintiffs also maintain that Curd’s website “emulates the look and feel of the official web site for The Signature.” [Comment: hmmm, judge for yourself, although it’s possible his older website may have looked more similar, but protectable trade dress?]

What makes this case a little more interesting are the allegations that Curd sometime around November 26, 2007, sent a letter to the aforementioned GDS partners on letterhead bearing the Signature Logo, without the knowledge or consent by Signature, stating in part the following:

Please be advised that effective immediately, The Signature at MGM Grand,Las Vegas, Nevada will no longer be represented by MGM/Mirage (MV)Central Reservation Services. This hotel will now be represented by InnLink Central Reservation Services as Owners Suites at Signature MGM.

ven more, Curd provided MGM MIRAGE’s GDS property codes and chain code to enable the GDS providers to change these codes. Curd supposedly signed the letter as President of Signature. Someone at InnLink later followed up with the GDS partners regarding the new codes, the result of which is that travel agents could not for some period of time use the GDS system to book rooms at The Signature.

After Signature realized what had happened, Plaintiffs’ counsel, on December 21, 2007, sent a cease and desist letter to Curd demanding that he stop his conduct, stop using the name “Owners Suites at Signature MGM Grand,” take down his website and transfer the ownership of http://www.signaturemgmgrandownerssuites.com/ to MGM. When Curd responded to Plaintiffs’ counsel on December 29, 2007, he claimed that the changing of the reservation codes was a “misunderstanding.” Shortly thereafter, Curd deactivated the http://www.signaturemgmgrandownerssuites.com/ website (although now it forwards to Curd’s other website).

Since that time, Signature has apparently received several complaints from customers who booked a unit at The Signature through Curd and his website. Curd supposedly told one guest that Curd would pay for all service charges during the customer’s stay; however, the guest was ultimately charged for such services and the guest informed Signature representatives that Curd’s practices do not “look good” for Signature. In May, Signature supposedly received another complaint from a customer who had booked a room at The Signature from a "Jonathan Jared” although the actual unit was owned by Curd. On May 29, 2008, another guest showed up at The Signature who said that he had booked a unit through Curd’s website; however, Signature had no record of the reservation and Curd’s unit had already been booked. Plaintiffs, without citing any evidence, also maintain that Curd is offering to book units that he does not own and is booking units without paying the required transient service fees to Signature.

Plaintiffs allege that Curd's conduct has injured and is likely to continuing injuring the goodwill and reputation of Signature and MGM’s mark. Plaintiffs’ causes of action are for registered trademark infringement, unfair competition, false advertising, trade dress infringement, common law trademark infringement and unfair competition, and intentional interference with a prospective economic advantage. Plaintiffs seek injunctive relief, the usual damages (compensatory, punitive, exemplary, statutory, treble, and all other damages), costs and attorneys’ fees.

Vegas™Esq Comments:
Interestingly, the first thing I notice upon viewing Curd’s website was not the references to Signature, MGM, or even any kind of similarity with Signature’s website – what I noticed was the following: “Owners Suites® at Signature.” I checked the U.S. Patent and Trademark Office’s (“USPTO’s”) TARR database and there is no federal registration for the mark “Owners Suites.” There is not even an application pending. As every trademark practitioner knows, use of the ® for a mark that is not registered with the USPTO can constitute fraud. I’m surprised Plaintiffs did not throw in a “fraud” claim based on Curd’s use of the ® symbol (maybe it would force them to acknowledge that Curd had changed his website and removed references to MGM Grand, although he still references Signature, but arguably a fair use reference). I also checked with the Nevada Secretary of State (many people think that a state registration allows a person to use the ® symbol, even though it does not), but found nothing. Of course, this little misuse of the ® symbol is the least of Curd’s troubles right now.

Is Pussycat Dolls Founder in for a catfight over GIRLICIOUS?

In browsing through some recent trademark filings, I noticed an application for the mark GIRLICIOUS. What I found interesting about this mark is that a quick search revealed the same mark for the same type of goods from three different applicants – all filed within 3 months of each other. What’s even more interesting, however, is the story that is unveiled when you start to look more closely at the applications themselves as well as the registrants filing them.

On June 28, 2007, Robin Lee Antin filed a Section 1(b) intent-to-use application for the mark GIRLICIOUS (for 13 different classes of goods, including clothing under Class 25). On September 20, 2007, Pussycat Dolls, LLC (the company apparently established to own and manage the intellectual property of the famed Pussycat Dolls music group) filed twelve separate Section 1(b) intent-to-use applications for the mark GIRLICIOUS, one of which was for various articles of clothing under Class 25. One thing to note – Robin Antin is the founder of the Pussycat Dolls group and is the co-producer/creator of the reality TV show Pussycat Dolls Present: The Search For The Next Doll. According to Wikipedia, there is going to be a season 2 of the show which will search for three women to make up a new all-female group named . . .surprise surprise . . . Girlicious. Click here to see Ms. Antin herself talk about the new season.

Finally, on September 24, 2007, a company named Girlicious, Inc. submitted a Section 1(a) use-in-commerce application for the mark GIRLICIOUS (for clothing) claiming a first use in commerce of July 16, 2005.

Ms. Antin’s application already received a non-final office action on September 21, 2007 (coincidentally, one day after the Pussycat Dolls’ filings). The examining attorney cited two pending applications with earlier filing dates that if registered may create a likelihood of confusion – the first is for the mark COWGIRLICIOUS and the second is for the mark LADYLICIOUS.

With respect to the LADYLICIOUS mark, this is an §66A (Madrid Protocol) application filed by a Swiss limited liability company named kreis3production on October 31, 2006 (the application’s international registration date) for three classes of goods, one of which is clothing under Class 25. The application’s base registration date in Switzerland is May 18, 2005.

However, on March 16, 2007, the PTO issued a non-final action refusing to register the LADYLICIOUS specifically for the Class 25 goods. The examining attorney found a likelihood of confusion with the registered mark LADY LUSCIOUS for women’s clothing – the marks are similar in appearance and in sound, the goods are similar (clothing), the goods will go through the same trade channels (department stores, boutiques, etc.) and are likely to be encountered by the same consumers who are likely to believe the goods derive from one common source. The fact that no response to the office action was filed by the September 16, 2007 deadline seems to indicate that the company is not interesting in pursuing the application further (although they could come back later within two months of abandonment to revive the application).

Regarding the COWGIRLICIOUS mark, the application was originally filed under Section 1(b) on June 14, 2006. The mark was published and received a notice of allowance. The applicant submitted her statement of use on May 31, 2007 – claiming first use in commerce on July 11, 2006. However, the examining attorney notified the applicant on August 21, 2007, that it was refusing to register the mark because the mark, as used on her submitted specimens, was merely a decorative or ornamental feature of the goods and did not serve as a indication of the source of the goods or to distinguish the goods from those of others. See In re Owens-Corning Fiberglass Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985).

The applicant submitted a picture of T-shirt with the word “COWGIRLICIOUS” in the middle of the shirt. The examining attorney found such use to be more of a slogan and by its size and location in the middle of the shirt would not be perceived as a source identifier or as a trademark which identifies applicant’s goods and distinguishes such goods from those of others. The larger the display of the mark relative to the size of the goods, the more likely that consumers will not view it as a mark. In addition, the location of where the mark is fixed on the goods is a consideration of how it will be viewed by the public. Where consumers are used to seeing a trademark in certain locations on clothing (i.e. collar label for shirts, above or on the rear pocket for jeans), consumers are less likely to perceive the mark as a source indicator when such mark is placed in a location that is less often associated with a brand name (i.e. the breast area of a shirt).

In order to overcome the ornamental rejection, the applicant must --
a) argue and submit evidence showing that the marks has become distinctive of applicant’s goods (Section 2(f) acquired distinctiveness argument);
b) submit evidence that the mark would be recognized by the public as a trademark through applicant’s use of the mark with goods or services other than those identified in the application (the mark is an indicator of secondary source or sponsorship);
c) amend the application to seek registration on the Supplemental Register; or
d) submit a new specimen showing non-ornamental use.

I doubt that the COWGIRLICIOUS applicant can provide evidence to obtain the mark under 2(f), show that the public identifies the mark with applicant’s other services, or has any other specimens showing non-ornamental use of the mark COWGIRLICIOUS. Her only option is likely to be registration on the Supplemental Register (see previous blog entry here regarding the benefits of registration on the Supplemental Register). The only question is – will she recognize the benefit of having this registration as opposed to no registration at all? She does not have an attorney representing her in the case, and is likely to just forgo registration altogether. Which, as discussed below, is what Ms. Antin needs to hope for to the extent she wants to get a registration for GIRLICIOUS for clothing.

The final hurdle for Ms. Antin would appear to be the application submitted by Girlicious, Inc. While the filing date is after her application (and even after those by Pussycat Dolls, LLC), the application is a Section 1(a) use-in-commerce application claiming use in commerce beginning July 16, 2005, which certainly predates that of Ms. Antin.

But this Pussycat Doll need not roll over and play dead just yet. A review of the specimen submitted by Girlicious, Inc. shows a T-shirt with the word “Girlicious” on the chest. Sound familiar? This application will likely end up suffering the same ornamental rejection as COWGIRLICIOUS. In this case, however, Girlicious, Inc. may have a stronger argument that the mark is an indicator of secondary source (see the company’s official website here).

Should COWGIRLICIOUS be registered (even if on the Supplemental Register), the examining attorney will likely cite the registration against Girlicious, Inc.’s GIRLICIOUS application as grounds for a likelihood of confusion refusal. In such case, Girlicious, Inc. may have to pursue a petition to cancel the COWGIRLICIOUS registration given Girlicious, Inc.’s earlier use in commerce.

But Girlicious, Inc. has other issues to deal with -- a review of its website shows that the company is using the ® symbol next to the mark GIRLICIOUS. However, I was unable to find a federal registration for this mark (either word or design). Misuse of the ® symbol can be grounds for claims of false advertising and can be used as a grounds for the PTO to refuse registration of the mark. See my previous blog entry here regarding misuse of the ® symbol. It could also impact Girlicious, Inc.’s ability to cancel the COWGIRLICIOUS mark should it desire to do so. In addition, according to the Illinois Secretary of State, Girlicious, Inc. was dissolved on November 1, 2005, which not only raises the issue of a dissolved corporation filing a trademark application, but also raises the issue of whether the corporation is capable of suing and being sued in a court of law (which it must be in order to be a “juristic person” that can file a petition for cancellation).

So what’s the bottom line with all of this? While she still has some hurdles to overcome, I suspect that Ms. Antin will ultimately come out the winner in this catfight.

Unless the COWGIRLICIOUS applicant opts for Supplemental Registration, that application will go abandoned and will not be a problem. The LADYLICIOUS mark will not likely be registered (at least not for clothing goods). Finally, Girlicious, Inc., which was probably in the best position to argue that it was the first to use such mark on clothing, may have harmed its case by misusing the ® symbol and not keeping up its annual corporate filings.

Furthermore, given Ms. Antin’s efforts to make the public associate the mark GIRLICIOUS with her and the Pussycat Dolls, she will have some good evidence for a 2(f) acquired distinctiveness argument or that the mark is recognized by the public as a trademark through use of the mark in connection with this new girl group that will undoubtedly be highly publicized.

The GIRLICIOUS applications filed by Pussycat Dolls, LLC likely will be suspended pending resolution of Ms. Antin’s GIRLICIOUS application (where there are conflicting goods and services). But given her intimate involvement with the Pussycat Dolls, I would presume that the two parties will work it out any claims of priority amongst themselves (she may even be the sole member of Pussycat Dolls, LLC, but this I could not confirm).

All this fuss over a mark ending in “licious” would not be complete without some mention of three pending Section 1(b) applications for FEGALICIOUS filed September 25, 2006 for musical programs, clothing, and, surprisingly, ice cream and candies. Just imagine Fergie dancing around in a commercial for FERGALICIOUS ice cream.

TM/SM versus ® --- State versus Federal Trademark Registration

Several years ago, I was speaking with the publisher of a local Las Vegas restaurant guide “Taste of Vegas” (Disclaimer: the communications were not as attorney-client, but rather … well that’s a longer story for another time).

Maybe it’s the natural instinct of a trademark attorney, but when I saw the ® symbol next to his logo TASTE OF VEGAS, my first instinct was to go online to the USPTO’s TARR database to view the registration. To my surprise, the PTO did not have any records of any such trademark registration. The closest registration was A TASTE OF LAS VEGAS, which is owned by Ethel M. Chocolates and covers the goods “candy.” When I spoke to the publisher again, I inquired about his trademark registration. He informed me that he did file a trademark registration. After further inquiry, I figured out that what he had done was register the mark TASTE OF VEGAS with the Nevada Secretary of State and not the USPTO. He was confused when I explained to him that obtaining a state trademark registration does not provide the same benefits as filing for a federal registration – most notably, a trademark owner cannot use the ® symbol unless the mark is federally registered.

I thought about this business owner when I came across a recent article written by Paul E. Thomas, an attorney with Manatt, Phelps & Phillips, LLP , entitled “Unclean Hands Accusation Makes Trademark Owner Take Notice.”

The article describes a trademark opposition by Barbara’s Bakery, Inc., which holds the registered mark BARBARA’S (and design) for bakery goods (note: Barbara’s Bakery in its recent Section 8 filing cancelled the remaining goods that remained in IC 29 as well as some goods in IC 30, leaving only bakery goods), BARBARA’S for food products in two different classes, and has a pending application for BARBARA’S BAKERY (and design) for potato chips and processed organic foods. Barbara’s Bakery filed an opposition against Barbara Landesman, who was seeking registration of the trademark BARB’S BUNS BAKERY, INC. for printed recipes, recipe books, and newsletters containing recipes.

While Barbara’s Bakery, Inc. successfully opposed Landesman’s registration (see the TTAB decision here; see also John Welch’s TTABlog entry on the decision here), one interesting argument raised by Landesman was that Barbara’s Bakery, Inc. had “unclean hands” through its misuse of the ® symbol on its BARBARA’S BAKERY mark before it had been registered.

The evidence tended to support Landeman’s argument, including the fact that the original drawing that Barbara’s Bakery submitted with its application contained the ® symbol rather than the TM symbol for unregistered trademarks where owners believe they have common law trademark rights. On September 29, 2002, the PTO informed Barbara’s Bakery that the ® symbol “may not be used until a valid registration is obtained” and instructed Barbara’s Bakery to provide a new drawing without the ® symbol, which it subsequently did.

The PTO thereafter suspended prosecution on the application on May 8, 2003 while the opposition was pending (which was not decided until January 23, 2007). Landesman also submitted evidence that Barbara’s Bakery was still using the BARBARA’S BAKERY mark with the ® symbol on the packaging in grocery stores in 2004 and 2005.

Barbara’s Bakery argued that the misuse of the ® symbol was not a deliberate attempt to mislead the public or to create the misimpression that Barbara’s Bakery had a registered mark when it did not. Barbara’s Bakery maintained that the mistake arose because Barbara’s Bakery has a federal registration for the word mark BARBARA’S, which was part of the design mark at issue. The TTAB accepted this explanation and ruled that Landesman failed to show that Barbara’s Bakery had deliberately misused the ® symbol.

On the one hand, I agree with the TTAB’s decision because if you look at the design mark, the ® symbol is clearly after the name BARBARA’S and not anywhere indicating that the whole logo itself is registered. Looking at it myself, I did not have the impression that the whole design was registered, but rather just the name BARBARA’S. On the other hand, Barbara’s Bakery was put on notice in 2002 about the impropriety of the ® symbol in that location, and yet continued to use it on its packaging. Can the company maintain that it was just a mistake to continue to display the design mark with the ® symbol even after being put on notice by the PTO’s office action (and later by the TTAB proceedings) that it was wrong to have it there.

If Barbara’s Bakery indeed corrected the problem, as its Vice President of Sales & Marketing told the TTAB it would, the company likely incurred great expense when it had to correct all of the printed packaging that had the ® symbol. I say “if” because a quick look at the design mark on the company’s website suggests that they never corrected this “misuse.” A close look seems to reveal that the ® symbol is still in the same location as the sample of the mark first submitted to the PTO. As of today, the BARBARA’S BAKERY (and design) mark has still not been registered, although it was published for opposition on July 31, 2007, so it should be registered sometime soon (unless some other company decides to start their own opposition).

So what are the lessons learned in the above stories.

First, state trademark registration is not the same as federal registration. While every state issues their own trademarks, getting a state trademark does not buy you much in the way of protection of your mark. While the process is often faster than federal registration, the state registration will only serve as evidence of use of the mark in commerce and the geographic area of use. If another party gets a federal registration, then such registration is constructive notice that the registrant has the right to use the mark throughout the entire country (even if the registrant is not using it in a specific geographic area) and can prevent others from using the same or similar mark anywhere in the U.S. unless the mark was in use before the date of first use of the registered mark, in which case the prior user may have some rights to use the mark but limited to a certain area. State registrations can serve as evidence for a prior user to help establish rights to the mark in those states where such a registration was obtained.

Second, the ® symbol can only be used when the trademark owner obtains a FEDERAL trademark registration, and not after receiving a state trademark registration and not after simply filing a federal trademark application. Instead, a trademark holder must continue to use the superscript TM or SM (for service marks), the same as would be used if there was no registration at all and the owner wished to proclaim to the world that the owner consider the mark to be a trademark protected under common law. In addition, “[d]eliberate misuse [the ® symbol] can have serious consequences. It can lead to the PTO’s final refusal to register a mark. It can give rise to claims of false advertising. And it can seriously injure a trademark owner’s enforcement rights in an infringement action: misuse of the ® symbol has led courts to deny requests for injunctions or damages. In most cases, however, both the TTAB and federal courts have been reluctant to divest trademark owners of rights and, absent persuasive evidence of a deliberate intent to deceive, have accepted reasonable explanations for inadvertent misuse of the ® symbol.” Thomas, supra.