United States District Court, D. Nevada
GLORIA M. NAVARRO, Chief District Judge.
Pending before the Court is the Motion for Preliminary Injunction (ECF No. 27) filed by Plaintiff Boyd Gaming Corporation ("Boyd Gaming"), to which Defendant B Hotel Group, LLC ("B Hotel Group") has filed a Response (ECF No. 35), Plaintiff has filed a Reply (ECF No. 44), and Defendant has filed a Sur-Reply (ECF No. 50). The Court also conducted a hearing on February 27, 2014. (Mins. of Proceedings, ECF No. 37.)
Plaintiff filed its Complaint before this Court on June 4, 2013, alleging causes of action against Defendant "for trademark infringement, unfair competition and trademark dilution under federal statutes, with pendent state and common law claims for trademark infringement and dilution." (Compl., 2:26-27-2:1, ECF No. 1.) Plaintiff alleges that it owns the exclusive rights to trademarks related to its operation of hotel casino entertainment companies located throughout the United States, and that Defendant has infringed upon these rights and Plaintiff's "BOYD" brand in violation of federal and state law. ( Id. at 2-3.) Plaintiff served Defendant with the Summons and Complaint on June 6, 2013. (Aff. of Service, ECF No. 6.)
Plaintiff alleges that it began using its B CONNECTED trademark nationwide in 2008, and later adopted additional "B-formative" trademarks that "utilize the verb be' substituted as a single letter B (representing BOYD) in connection with a term that is suggestive of Boyd's Services." ( Id. at 3:¶¶11-14.) Plaintiff describes these marks as its "B Marks, " which include: B CONNECTED; B RELAXED; B ENTERTAINED; B REWARDED; B SATISFIED; and B RECOGNIZED. ( Id. at 3:¶13.) For these B Marks, Plaintiff has nineteen trademark registrations with the United States Patent Office ("USPTO"). ( Id. at 4-6:¶18.) Plaintiff also has three Nevada registrations for B CONNECTED, B RELAXED, and B RECOGNIZED. ( Id. at 6:¶19.)
Plaintiff also has a trademark registration with the USPTO for its QUENCH Mark. ( Id. at 6-7:¶¶20-21.) Collectively, Plaintiff describes the QUENCH Mark and the B Marks as its "Boyd Marks." ( Id. at 7:¶21.)
In mid-2010, Defendant filed "intent-to-use" trademark applications with the USPTO for several marks in relation to hotel and resort lodging and services, including: B PAMPERED; B SOCIAL; and B HAPPY. ( Id. at 8-9:¶31.) In July 2010, the USPTO issued notices of its refusal to register these three marks based on a likelihood of consumer confusion with several of Plaintiff's B Marks. ( Id. at 9:¶32.) Plaintiff describes these three marks as the "Refused Marks." ( Id. at 9:¶31.)
Plaintiff alleges that in January 2011 Defendant opened its "B Ocean Resort" in Florida. ( Id. at 7-8:¶30.)
As alleged in the Complaint, even after receiving notice from the USPTO of Plaintiff's similar marks and of the likelihood that the marks would create confusion among consumers, Defendant nevertheless continued to prosecute its applications for ten other marks, which Plaintiff describes as the "Prosecuted Infringing Marks": B HAPPY; B WIRED; B OUR GUEST; B MINE; B IN TOWN; B IN THE CITY; B CAPITAL; B ON THE BEACH; B MAGIC; and B DOWNTOWN. ( Id. at 10-13:¶39.)
Plaintiff alleges that Defendant continues to create and use multiple marks that are similar in the same way, even after receiving written notice of Plaintiff's rights in the B Marks, including eleven "New Infringing Marks" for which Defendant has submitted USPTO applications: B VEGAS; B INDULGED (two); B NOURISHED; B IN TOUCH; B SCENE; B ACTIVE; B INTERACTIVE; B WED; B GREEN; and B CHIC. ( Id. at ¶40.)
Plaintiff also alleges that Defendant has adopted and uses two marks that are identical to Plaintiff's B RELAXED Mark and Plaintiff's QUENCH Mark, described as the "Identical Marks." ( Id. at 16-17:¶43.)
Plaintiff alleges that Defendant has also adopted the following B-formative marks, described as "Common Law Infringing Marks":
( Id. at 17-18:¶44.)
Collectively, Plaintiff refers to these Common Law Infringing Marks, the Refused Marks, the Prosecuted Infringing Marks, the New Infringing Marks, and the Identical ...