Caesars Entertainment, Florida man in legal battle over ‘Octavius Tower’ name
11 April 2011
A Florida man and his company own an "Octavius Tower" trademark and have ordered Caesars Palace on the Las Vegas Strip to stop using the mark.
Caesars, owned by Caesars Entertainment Corp., disputes the claims of ownership by Marcel July of Port Charlotte, Fla., and his company Octavius Tower LLC.
Caesars sued July and his company on Friday in federal court in Las Vegas, alleging trademark fraud.
The lawsuit charges that two days after Caesars announced plans in July 2007 to build Octavius Tower, July registered website domain names using the Octavius Tower name and the Caesars name including octaviustower.com and caesarstower.com.
Caesars, which opened part of the tower in 2009 and now plans to complete construction of the building charged July's websites proclaimed "The new Caesars Palace Towers are Coming Soon" and that the websites included offers to sell the domain names.
Caesars' suit says that in September 2007, it demanded that July stop using the "infringing domain names" and when he refused, Caesars took the dispute to the National Arbitration Forum, charging July had used the Caesars domain names in bad faith. This complaint didn't cover the Octavius name since Caesars had not obtained a trademark for that name.
"The National Arbitration Forum found that July's registration of the Caesars domain names two days after Caesars announced its plans to open its new tower was 'opportunistic action' undertaken in bad faith," Friday's lawsuit alleged.
The lawsuit notes that in 2008, July had filed trademark applications for the name Octavius Tower for "entertainment services," particularly a website featuring musical performances with a first date of use in 1992.
This trademark was granted, with the U.S. trademark office finding no likelihood of confusion between July's trademark for entertainment services and Caesars' Octavius Tower trademark registration application for hotel services.
Caesars' lawsuit, however, charges July has never "made bona fide use" of the Octavius Tower name for entertainment services as claimed in his trademark application.
A letter from a Caesars' attorney to July's attorney says: "Your client claims to have used this mark in connection with a heavy metal band, but we can find no evidence that this band is still in existence or that it performed in the United States prior to our client's announcement of the building of its Octavius Tower. The specimen Mr. July submitted in connection with his trademark registration application is for a concert in Germany and therefore does not demonstrate his ownership of any rights in the United States," the letter says.
Caesars suffered a setback in February when the federal trademark office denied Caesars' registration application for Octavius Tower covering hotel services. Caesars, however, said in court papers it expects to have this ruling overturned.
After this setback, an attorney for July sent a cease and desist letter to Caesars demanding Caesars stop using the trademarked name Octavius Tower "in any manner whatsoever" including advertising.
Caesars offered to enter into a coexistence agreement in which July would use the Octavius Tower name for entertainment purposes and Caesars would use it for hotel services.
In support of this offer, Caesars claimed July, using the name "OctaviusTower," had left a comment on the Las Vegas Sun website on Jan. 26, 2010 stating: "Can't wait to see the big show of Octavius Tower Band. More info at the www.OctaviusTower.com website. Cheers to all."
Despite this, July's attorney on March 23 rejected the co-existence agreement and again demanded Caesars stop using the Octavius Tower trademark.
July, in the meantime, has modified at least one of the websites to include trademark warnings not just to Caesars, but to Fitch Ratings, a debt-rating service that has commented on Caesars and its Octavius Tower financing plans.
Caesars, in its lawsuit, seeks a declaration that it "does not infringe, and at all times has not infringed, any service mark, trade name or domain name rights, if any, defendants own under federal law by Caesars offering and plans to offer hotel services at Caesars Palace under the Octavius Tower mark."
The lawsuit also seeks cancellation of July's Octavius Tower trademarks, charging "he began use of the mark for these services only after becoming aware of Caesars' planned use of the Octavius Mark for hotel services and in an effort to fabricate legal rights to be asserted against Caesars."
"July's intentional misrepresentations to the U.S. Patent and Trademark Office to obtain the (registrations) constitute fraud on the Trademark Office," the suit asserts.
July and his attorney have not yet responded to the lawsuit. A message for comment was left with July.
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