Hollywood Casino LLC v. Chateau Celeste, Inc.

Hollywood Casino LLC v. Chateau Celeste, Inc.

Opposition No. 91203686

United States Patent and Trademark Office, Trademark Trial and Appeal Board

December 14, 2015

Before Seeherman, Lykos, and Wellington, Administrative Trademark Judges.

Background

Chateau Celeste, Inc. ("Applicant") seeks to register the mark HOLLYWOOD HOTEL, in standard character format, for "[b]ar and cocktail lounge services; hotel, restaurant and catering services; providing social meeting, banquet and social function facilities; [and] provision of conference exhibition and meeting facilities, " in International Class 43.^[1]

On February 6, 2012, Hollywood Casino Corp., the original opposer in this proceeding, filed a notice of opposition on the ground of likelihood of confusion, pleading ownership of two registrations, both for the mark HOLLYWOOD CASINO, in standard characters, for "casino services, " in International Class 41;^[2] and "hotel services, " in International Class 42.^[3] 1 TTABVUE 3-4, ¶ 2.^[4] Opposer attached copies of printouts from the USPTO's electronic database, which show the current status and title of Opposer's pleaded registrations as of the filing date of the notice of opposition. See Trademark Rule 2.122(d).^[5]

Applicant in its answer filed September 13, 2012, denied the salient allegations of the notice of opposition.

Now before the Board is Opposer's renewed combined motion filed January 8, 2015: (i) to amend its notice of opposition to add a claim that "Applicant is not the owner of the applied-for HOLLYWOOD HOTEL mark, " based upon certain responses given during Applicant's Fed.R.Civ.P. 30(b)(6) deposition, 49 TTABVUE 31, ¶ 18; and (ii) for summary judgment based upon the proposed claim that Applicant does not own the mark.^[6]

With respect to its motion to amend the notice of opposition Opposer asserts that: (i) its "request is timely because the facts underlying Opposer's amendment did not come to light until the deposition of Applicant's President and CEO, " id. at 22; (ii) "Opposer's amendment is well-pled, " id. at 23; and (iii) "Applicant will not be prejudiced by the amendment because the facts concerning ownership of the applied-for mark are exclusively within Applicant's control and Applicant needs no discovery from Opposer on this topic." Id.

By way of its motion for summary judgment, Opposer alleges that "Applicant, by its own admission, does not control the nature and quality of the services rendered at the HOLLYWOOD HOTEL property. Applicant is a mere licensee of the applied-for mark HOLLYWOOD HOTEL, " and therefore "its Application is void ab initio, and judgment should be entered" in Opposer's favor. Id. at 8.

Both motions are fully briefed.

Motion to Amend Notice of Opposition – Fed.R.Civ.P. 15(a)

In contesting Opposer's motion for leave to file an amended notice of opposition, Applicant states only that "Opposer should … not be granted leave to amend its notice of opposition to add improper ownership of the application as a basis for opposing the subject application." 51 TTABVUE 9.

The Board liberally grants leave to amend pleadings at any stage of a proceeding when justice so requires, unless entry of the proposed amendment would be prejudicial to the rights of the adverse party or would violate settled law. See Fed R. Civ. P. 15(a); see also Trademark Trial and Appeal Board Manual of Procedure ("TBMP") § 507.02 (2015) and cases cited therein. Inasmuch as the information that forms the basis of Opposer's proposed claim was learned through Applicant's deposition responses just days before the filing of Opposer's motion for leave to amend its pleading, the claim was timely raised. Although this proceeding has passed the discovery stage, the Board does not find, and Applicant has not pointed to any specific prejudice that would result from amendment of Opposer's pleading. See Metromedia Steakhouses Inc v. Pondco II Inc., 28 U.S.P.Q.2d 1205, 1206-07 (TTAB 1993); Focus 21 Int'l Inc. v. Pola Kasei Kogyo Kabushiki Kaisha, 22 U.S.P.Q.2d 1316, 1318 (TTAB 1992) (motion to amend filed prior to opening of petitioner's testimony period permitted). As Opposer points out, much if not all of the information needed for Applicant to defend the proposed additional claim is already in Applicant's custody or control. Therefore, no reopening of the discovery period is necessary. Additionally, the allegation of facts supporting the proposed added claim provides sufficient detail as to the basis thereof. Conolty v. Conolty O'Connor NYC LLC, 111 U.S.P.Q.2d 1302, 1309 (TTAB 2014); Great Seats, Ltd. v. Great Seats, Inc., 84 U.S.P.Q.2d 1235, 1244 (TTAB 2007).

Accordingly, the motion for leave to file an amended notice of opposition adding a claim of nonownership is GRANTED, and Opposer's amended pleading filed January 8, 2015, is now Opposer's operative pleading. We now turn to Opposer's motion for summary judgment. For purposes of deciding the motion, we will deem Applicant to have denied the allegations regarding the newly added ground.

Summary Judgment – Fed.R.Civ.P. 56(a)

Entry of summary judgment is appropriate only where there are no genuine disputes as to any material facts, thus allowing the case to be resolved as a matter of law. Fed.R.Civ.P. 56(a). A factual dispute is genuine if, on the evidence of record, a reasonable fact finder could resolve the matter in favor of the non-moving party. See Opryland USA Inc. v. Great Am. Music Show Inc., 970 F.2d 847, 23 U.S.P.Q.2d 1471, 1472 (Fed. Cir. 1992); Olde Tyme Foods, Inc. v. Roundy's, Inc., 961 F.2d 200, 22 U.S.P.Q.2d 1542, 1544 (Fed. Cir. 1992). Evidence on summary judgment must be viewed in a light favorable to the non-movant, and all justifiable inferences are to be drawn in the non-movant's favor. Lloyd's Food Prods., Inc. v. Eli's, Inc., 987 F.2d 766, 25 U.S.P.Q.2d 2027, 2029 (Fed. Cir. 1993); Opryland USA, 23 U.S.P.Q.2d at 1472. The Board may not resolve genuine disputes as to material facts; it may only ascertain whether genuine disputes as to material facts exist. See Lloyd's Food Prods., 25 U.S.P.Q.2d at 2029; Olde Tyme Foods, 22 U.S.P.Q.2d at 1542.

Under Fed.R.Civ.P. 56(a), the movant has the initial burden of demonstrating that there is no genuine dispute of material fact. See Celotex Corp. v. Catrett, 477 U.S. 317 (1986); Sweats Fashions Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4 U.S.P.Q.2d 1793 (Fed. Cir. 1987). If the evidence produced in support of the summary judgment motion does not meet the moving party's burden, "summary judgment must be denied even if no opposing evidentiary matter is presented." Id. (quoting Fed.R.Civ.P. 56 advisory committee notes to the 1963 amendments).

Trademark Act Section 1 requires that an Applicant "be the owner of the mark sought to be registered." 15 U.S.C. § 1051(a)(3)(A). See also In re Wella A.G., 787 F.2d 1549, 229 U.S.P.Q. 274, 277 (Fed. Cir. 1986) (C.J. Nies concurring) ("Under section 1 of the Lanham Act, only the owner of a mark is entitled to apply for registation.") "It is fundamental that ownership of a mark is acquired by use, not by registration." Holiday Inn v. Holiday Inns, Inc., 534 F.2d 312, 189 U.S.P.Q. 630, 635 n.6 (CCPA 1976). See also Huang v. Tzu Wei Chen Food, 849 F.2d 1458, 7 U.S.P.Q.2d 1335, 1336 (Fed. Cir. 1988). Therefore, "an application filed by one who is not the owner of the mark sought to be registered is a void application." In re Tong Yang Cement Corp., 19 U.S.P.Q.2d 1689, 1690 (TTAB 1991) (citing In re Techsonic Industries, Inc., 216 U.S.P.Q. 619 (TTAB 1982)). See also, 15 U.S.C. § 1051(a); Huang, 7 U.S.P.Q.2d 1335; Holiday Inn, 189 U.S.P.Q. at 635 n.6 ("One must be the owner of a mark before it can be registered."); Great Seats, 84 U.S.P.Q.2d at 1239 ("In a use-based application under Trademark Act Section 1(a), only the owner of the mark may file the application for registration of the mark; if the entity filing the application is not the owner of the mark as of the filing date, the application is void ab initio."); Trademark Rule 2.71(d).

Opposer asserts in its brief that "Applicant's President and CEO testified unequivocally at his deposition that someone other than Applicant – Zarco Hotels, Inc. – controls the nature and quality of the services rendered at the HOLLYWOOD HOTEL property." 49 TTABVUE 14. Citing, inter alia, Smith Int'l Inc. v. Olin Corp., 209 U.S.P.Q. 1033, 1044 (TTAB 1981), Opposer asserts that "[t]he owner of a mark is the entity that controls the nature and quality of the goods or services offered under the mark and is the only party who may apply to register the mark, " and therefore, Applicant is not the true owner of the applied-for mark. 49 TTABVUE 6. Opposer argues that Applicant is merely a licensee of non-party Zarco Hotels, Inc., "the only party that could seek to register the alleged mark HOLLYWOOD HOTEL." Id. at 15.

In support of its motion for summary judgment, Opposer introduced:

• the subject application including the specimens of use comprised of a photo of a hotel bearing the name "Hollywood Hotel The Hotel of Hollywood, " a printout from the website http://www.hollywoodhotel.net/, describing the hotel property, and an advertising flyer for the Hollywood Hotel;^[7]

• excerpts from the deposition transcript of Applicant's Fed.R.Civ.P. 30(b)(6) witness, Jeff Zarrinnam, Applicant's president and CEO, taken September 9, 2014; and

• Applicant's errata sheet, submitted pursuant to Fed.R.Civ.P. 30(e), making various substantive changes, clarifications and typographical and gramatical corrections to the transcript of Mr. Zarrinnam's deposition.

49 TTABVUE 40-79, Exhs. C-E.

Opposer's argument principally relies upon Mr. Zarrinnam's testimony, including the following:

Q Were you the president and CEO of Chateau Celeste since 1998?

...