District Court finds that Casino De Monte Carlo owner has no enforceable trademark rights to CASINO DE MONACO

The Casino de Monte Carlo in Monaco

A New York District Court has determined that the owner of the Casino De Monte Carlo does not have enforceable trademark rights in the mark CASINO DE MONACO and has granted summary judgment in favor of a UK company that had been sued for trademark infringement and cybersquatting over its use of the name GRAND MONACO CASINO in connection with an online casino. See In re. Casino de Monaco Trademark Litigation, 2010 U.S. Dist. LEXIS 33950 (S.D.N.Y. March 31, 2010).

Societe des Bains de Mer et du Cercle des Etrangers a Monaco’s (“SBM”) is the operator of all casino properties in the Principality of Monaco, most notably the Casino De Monte Carlo. Playshare PLC (“Playshare”) is a UK company that acquired an online casino that has used or is using various online designations including GRAND MONACO, GRAND MONACO CASINO, GRAND MONDIAL and GRAND MONDIAL CASINO and related domain names.

SBM holds a U.S. trademark registration for the mark CASINO DE MONACO for “providing casino services within a hotel resort environment” which issued on December 20, 2005, under Section 44(e) of the Lanham Act based on SBM’s registration of the mark in Monaco but also with a claim of acquired distinctiveness based on Section 2(f) of the Lanham Act. SBM also has a second application pending for CASINO DE MONACO for “casino services” but that application (filed in the midst of the dispute at issue) has been opposed by Playshare. See Societe Anonyme Des Bains De Mer Et Du Cercle Des Etrangers v. PlayShare PLC, Opposition No. 91188636 (T.T.A.B. Filed Jan. 30, 2009).

On March 21, 2007, SBM filed a Uniform Domain Name Dispute Resolution Policy (“UDRP”) complaint with the World Intellectual Property Organization (“WIPO”) against the approximately 65 domain names that Playshare acquired as part of the online casino it acquired which included the words “grand” and/or “monaco” with “casino” as part of a URL that led to Playshare’s online casino. In response to SBM’s UDRP complaint, Playshare made a decision to change the name of its online casino to GRAND MONDIAL and even registered the name as a trademark (although the opinion is not clear where the mark was registered and no records appear with the PTO). Despite the name change, SBM continued forward with its claims regarding the “monaco casino” domain names. On May 25, 2007, the WIPO arbitration panel decided in favor of SBM finding Playshare’s domain names confusingly similar to SBM’s trademark and ordered Playshare’s domain names transferred to SBM. See Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Lucan Toh and Max Wright, Case No. D2007-0249 (WIPO May 25, 2007).

On June 6, 2007, SBM sued Playshare alleging that Playshare’s use of the aforementioned names and domain names infringed its trademark rights to the mark CASINO DE MONACO, including even Playshare’s new name GRAND MONDIAL. On June 19, 2007, Playshare filed its own declaratory judgment action against SBM in Arizona district court seeking a declaratory judgment that its use of the domain names did not violate the Anticybersquatting Consumer Protection Act (“ACPA”) and that SBM’s registered mark for CASINO DE MONACO is invalid and unenforceable. The Arizona action was consolidated with the New York action and Playshare’s declaratory judgment causes of actions were treated as counterclaims.

Both sides filed cross motions for summary judgment. The Court denied SBM’s motion and granted Playshare’s motion with respect to SBM’s claims and Playshare’s counterclaims related to CASINO DE MONACO.

The court first addressed the validity of SBM’s CASINO DE MONACO mark. Playshare argued that despite SBM’s registration of CASINO DE MONACO, SBM has no protectable rights under the Lanham Act in its mark since it does not provide any goods or services using the mark in the U.S. SBM does not operate an on-line gaming business, does not operate any casinos in the U.S and has no casino by the name of Casino de Monaco

Nonetheless, SBM argued that it did use the mark as a service mark in the U.S. in connection with an established business or trade.SBM focused on its New York subsidiary that engages in “sales offerings” to U.S. residents of casino services at SBM’s casinos in Monaco. SBM also contended that the name CASINO DE MONACO is an umbrella term for all its Monaco-based casinos, that the mark is used on SBM’s website and verbally when promoting its casino and casino-related services, and that CASINO DE MONACO is a nickname for the Casino de Monte-Carlo, and many people, including Americans, use the name CASINO DE MONACO to refer to the Casino de Monte-Carlo “which embodies tremendous goodwill, glamour, elegance and style in the gaming industry.”

In the end, however, the court rejected SBM’s arguments and concluded that SBM’s activities in the United States relating to SBM’s mark CASINO DE MONACO did not constitute “services” within the meaning of the Lanham Act (services that are not “solely for the benefit of the performer” but rather services “rendered to others”). The court also rejected SBM’s attempt to conflate its CASINO DE MONACO mark with its more established CASINO DE MONTE-CARLO service mark. CASINO DE MONACO is not an actual casino unlike Casino de Monte-Carlo. The court also noted that “any secondary meaning that the mark CASINO DE MONACO can acquire vis-a-vis the use of the mark CASINO DE MONTE-CARLO is limited by the fact that SBM is in an on-going dispute with U.S.-based Victoria Partners over the Monte-Carlo designation when used with the casino business. Without some resolution, the mark CASINO DE MONTE-CARLO can be reasonably construed as not “identifying a single source of origin.” (italics in original). [For prior blog posts on this ongoing dispute, click here and here].

The court noted that SBM’s Section 44(e) based registration only required it to affirm that it had a bona fide intent to use its foreign registered mark. The court went on the state:

However, regardless of SBM’s intent, which is disputed, SBM has not used the mark in any meaningful way anywhere. And SBM has not shown that it has used the mark in the United States at all. SBM argues that its “U.S. based direct sales activities represent ‘material aspects’ of SBM’s casino business...and thus are properly considered ‘services...rendered in commerce.” for SBM’s mark CASINO DE MONACO. However, the record is devoid of evidence that would create a genuine issue of material fact that SBM uses the mark CASINO DE MONACO to identify its services, anywhere, but particularly in the United States. First, there does not exist in Monaco, or anywhere else, a casino identified by the name Casino de Monaco. Nevertheless, SBM asserts that the mark CASINO DE MONACO is: (1) used as a nickname or moniker for Casino de Monte-Carlo; (2) employed on casino website(s); and (3) an umbrella term/brand to refer to SBM’s five casinos in Monaco. However, all that SBM can show to support these representations are self-serving affidavits. Even if this claimed use of the mark CASINO DE MONACO was not insignificant on this record, which it is, all of its use of the mark occurs outside of the United States. There is no real evidence that the claimed nickname/moniker/umbrella term that signifies CASINO DE MONACO has ever existed in the United States.

(internal citations omitted) (emphasis in original).

Furthermore, regarding the one example that SBM could show of use in the United States of the mark CASINO DE MONACO on SBM’s own website, it turns out that such webpages were created on or after April 14, 2008 (almost a year after the lawsuit was filed) and SBM did not show any evidence that anyone in the U.S. ever viewed the pages. The court added that “[i]t does not bolster SMB’s [sic] position that all activity SBM engages in the United States amounts to nothing more than advertising and promotion of SBM’s operations outside the U.S., i.e., in Monaco. What is clear is that there is no evidence on the record that this limited activity ever implicated the mark CASINO DE MONACO.” (emphasis in original).

The court decided that SBM’s “utter lack of use of the mark CASINO DE MONACO anywhere, let alone in the United States,” required it to refuse to enforce any purported trademarks rights by SBM in the mark. Accordingly, the court did not have to engage in any likelihood of confusion analysis. The court did find enough limited activity to protect SBM’s purported right to the unregistered mark CASINO DE MONTE-CARLO because SBM actually utilizes that mark in the United States – but since SBM’s complaint did not allege any infringement of this mark, such rights were irrelevant for purposes of deciding the motions.

Based on its determination that SBM held no enforceable trademark rights to the mark CASINO DE MONACO, the court granted summary judgment on Playshare’s declaratory judgment causes of actions direct to SBM’s CASINO DE MONACO mark. The court found SBM’s trademark registration for CASINO DE MONACO invalid and unenforceable and ordered it to be canceled. The court further granted Playshare’s Motion for Summary Judgment on all of SBM’s federal claims based on the CASINO DE MONACO mark (and choosing to dismiss all state claims by declining to exercise supplemental jurisdiction). Moreover, the court declared that Playshare’s use of the designations GRAND MONACO, GRAND MONACO CASINO, GRAND MONDIAL CASINO and GRAND MONDIAL does not infringe on SBM’s (now cancelled) mark CASINO DE MONACO. Finally, because SBM’s entire basis for its cybersquatting claim was based on rights to the mark CASINO DE MONACO and since the mark was found invalid and unenforceable, then, as a matter of law, Playshare cannot be in violation of the ACPA with respect to its domain names. The court vacated the WIPO decision and ordered the domain names to remain with Playshare.

TTAB upholds opposition based on applicant’s failure to show bona fide intent to use

On March 28, 2008, the Trademark Trial and Appeal Board (the “Board”) handed down a precedential decision upholding an opposition by L.C. Licensing, Inc., the owner (at the time the opposition was filed) of the word mark ENYCE and mark ENYCE and design (pictured above) both for apparel and headwear, against Cary Berman, the applicant for the mark ENYCE for custom automotive accessories. See L.C. Licensing, Inc. v. Cary Berman, Opposition No. 91162330 (TTAB March 28, 2008) (precedential) (decision here).

While a more detailed analysis of this precedential decision (which also had a 2(d) likelihood of confusion issue) can be found on The TTABlog®, what makes this decision interesting and important is that one of the grounds for sustaining the opposition was the applicant’s lack of bona fide intent-to-use when the application was filed.

L.C. Licensing maintained that Mr. Berman lacked the requisite bona fide intention to use the ENYCE mark in commerce on the identified goods. The Board, citing Lane Limited v. Jackson International Trading Company Kurt D. Bruhl Gesellschaft m.b.G. & Co. KG, 33 USPQ2d 1352 (TTAB 1994) and Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503 (TTAB 1993), stated that the determination of whether applicant had the requisite bona fide intention to use the mark ENYCE on the goods identified in the application must be a fair objective determination based on all of the circumstances and that “absent other facts which adequately explain or outweigh the failure of an applicant to have any documents supportive of or bearing upon its claimed intent to use its mark in commerce, the absence of documentary evidence on the part of an applicant regarding such intent is sufficient to prove that the applicant lacks a bona fide intention to use the mark in commerce as required by Section 1(b).”

Mr. Berman acknowledged not having any documents evidencing an intent to use the ENYCE mark on any custom automotive accessories. The Board also quoted the following deposition exchange regarding Mr. Berman’s intent to use the ENYCE mark:

Q. Did you intend – when you filed this [application] did you intend to actually use [the ENYCE mark] on all these goods?
A. Again, there is no business model associated with this until I receive permission to go ahead and use it and then the business model will be produced.
Q. That’s not the question. When you filed this application, serial number 78320850, did you intend to use the mark ENYCE on fitted car covers?
A. Perhaps –
Q. It’s a yes or no answer.
A. I don’t have any – there’s no specific intentions at this time.
Q. No. At that time though. At the time you filed the application.
A. A car bra, if you want to call that a fitted car cover.
Q. Is that a fitted car cover?
A. Yes, I guess.
Q. Shift knobs?
A. Shift knobs, yes.
Q. You intended to use ENYCE on shift knobs.
A. Yes.
Q. On brake pads?
A. Probably not.
Q. No?
A. No.
Q. You didn’t intend to use ENYCE on brake pads?
A. No.
Q. License plate holders?
A. Probably.
Q. Spoilers?
A. Probably.

The Board found no evidence which explained or which outweighed the failure of Mr. Berman to have any documents to support his claimed intent to use the ENYCE mark in connection with custom automotive accessories at the time he filed the application. Furthermore, his explanation of not wanting to create a business model until the opposition had been decided did not explain his failure to have any documents whatsoever at the time the application that would demonstrate his bona fide intent to use the mark. The Board further noted that the mere assertion of an intent to use the mark without corroboration of any sort, documentary or otherwise, is unlikely to provide credible evidence to establish a bona fide intention to use a mark.

In short, Mr. Berman’s lack of any evidence to corroborate a bona fide intent to use the mark when he filed the application supported the conclusion that Mr. Berman did not have a bona fide intent to use the ENYCE mark on custom automotive accessories when he filed his intent—to-use application.

This decision builds on the Board’s non-precedential decision last year in Intel Corp. v. Emeny, Opposition No. 91123312 (TTAB May 15, 2007) (decision here). In that case, the applicant, Steven Emeny, filed an intent-to-use application to register the mark IDEAS INSIDE for what the Board described as a “broad listing of goods and services.” When the application was published for opposition, Intel opposed registration on the grounds of likelihood of confusion and dilution over its mark INTEL INSIDE. Intel later added an additional ground for opposing registration – that the applicant did not have a bona fide intention to use the mark in connection with the recited services. While "bona fide" is not defined in the Lanham Act, the legislative history which introduced intent-to- use applications suggest that Congress intended the test of “bona fide” to be shown by “objective” evidence of “circumstances” showing “good faith.”

Intel had the initial burden to prove by a preponderance of the evidence that Emeny lacked a bona fide intent to use his mark in connection with the recited services. Intel focused on the fact that Emeny had no documentation to show his plans to use the mark. The Board found this complete absence of any clear, objective evidence to be sufficient for Intel to meet its burden that Emeny lacked the requisite bona fide intention to use the mark unless Emeny could provide an explanation as to why no such documents exist.

The Board found that the evidence in the case supported the conclusion that Emeny lacked the requisite bona fide intent. The application filed by Emeny (along with 8 others like it, which went abandoned) included “an unreasonably broad listing of goods and services.” The Board focused on the fact that there was no evidence of any business plans, nor any evidence of a single business contact with any potential partner who would supply the goods that Emeny would sell. Emeny did not divulge any business or marketing plans and admitted that he conducted no specific planning and never promoted or sold any goods under the mark. The Board concluded that he had no evidence of a bona fide intent to use the mark and upheld Intel’s opposition.

Conclusion
The important lesson for all trademark applicants is that when you file Section 1(b) intent-to-use trademark application, you had better have both a bona fide intent to use the mark for which you are filing as well as some kind of objective evidence documenting such bona fide intent.