Wynn Resorts Xs Declaratory Judgment Action

Case 2:09-cv-01258-PMP-PAL

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Mark G. Tratos (Bar No. 1086) Peter H. Ajemian (Bar No. 9491) GREENBERG TRAURIG, LLP 3773 Howard Hughes Parkway Suite 400 North Las Vegas, Nevada 89169 Telephone: (702) 792-3773 Facsimile: (702) 792-9002

5 Counsel for Plaintiff 6 7 8

UNITED STATES DISTRICT COURT

9

DISTRICT OF NEVADA

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WYNN RESORTS HOLDINGS, LLC a Nevada limited liability company,

Case No.

Greenberg Traurig, LLP Suite 400 North, 3773 Howard Hughes Parkway Las Vegas, Nevada 89109 (702) 792-3773 (702) 792-9002 (fax)

11 Plaintiff,

COMPLAINT FOR DECLARATORY RELIEF

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NYLO HOTELS, LLC a Delaware limited liability company, Defendant.

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Plaintiff Wynn Resorts Holdings, LLC (“Wynn”), for its Complaint against Defendant NYLO Hotels, (“NYLO”), hereby alleges as follows:

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NATURE OF CLAIMS 1.

Wynn seeks a declaratory judgment that its use of the XS trademark for

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restaurant, bar, nightclub, entertainment or other services or goods has not infringed or

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otherwise violated NYLO’s alleged trademark or other rights in XS for hotel, hotel

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management, restaurant, bar, spa or any other services or goods.

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2.

Wynn further seeks damages, attorneys’ fees, costs, and preliminary and

permanent injunctive relief.

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JURISDICTION 3.

This case arises under the Federal Declaratory Judgments Act, 28 U.S.C. §§

2201 and 2202, and the Lanham Act, 15 U.S.C. § 1051 et seq., related to trademark 1. 418791567_1.DOC LV 418,791,567v1 7-3-09

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infringement, unfair competition, and/or deceptive trade practices. 4.

This Court has jurisdiction under 15 U.S.C. § 1121 and 28 U.S.C. §§ 1331

and 1338. 5.

This Court has personal jurisdiction over NYLO because it: (a) attempted to

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contract with Wynn, whom they knew was located in the State of Nevada, by offering

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licensing opportunities; (b) solicit or have solicited business in the State of Nevada; and (c)

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have sent threatening correspondence to Wynn in the State of Nevada threatening to take

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action if Wynn does not comply with their demands.

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Greenberg Traurig, LLP Suite 400 North, 3773 Howard Hughes Parkway Las Vegas, Nevada 89109 (702) 792-3773 (702) 792-9002 (fax)

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NYLO has created an actual case and controversy and a reasonable

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apprehension of litigation by, among other things, sending letters threatening to file suit

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against Wynn on April 22, 2009 and May 28, 2009.

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THE PARTIES 7.

Plaintiff, WYNN RESORTS HOLDING, LLC is a limited liability company

doing business in the State of Nevada. 8.

Defendant, NYLO HOTELS, LLC, upon information and belief is a Delaware

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limited liability company with a principal place of business at 260 Peachtree Street, NW,

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Suite 2301, Atlanta, Georgia 30303.

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ALLEGATIONS COMMON TO ALL COUNTS 9.

Plaintiff Wynn Resorts Holdings, LLC, is the sole member of Wynn Las

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Vegas, LLC, a Nevada limited liability company that owns and operates the “Wynn Las

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Vegas” resort hotel casino in Las Vegas, Nevada.

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10.

The “Wynn” name and mark, as seen in “Wynn Resorts” and “Wynn Las

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Vegas” is attributed to the President and Chief Executive Officer of Wynn Resorts, Stephen

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A. Wynn (“Mr. Wynn”), who is world-renowned as a creator, developer and operator of

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destination casino resorts.

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11.

Before “Wynn Las Vegas,” Mr. Wynn was responsible for conceiving,

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developing and managing several prominent resort hotel casinos in Las Vegas, namely

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“Golden Nugget”, “The Mirage”, “Bellagio”, and “Treasure Island”, as well as the “Golden 2. 418791567_1.DOC LV 418,791,567v1 7-3-09

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Nugget” in Atlantic City, New Jersey, “Golden Nugget” in Laughlin, Nevada and “Beau

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Rivage” in Biloxi, Mississippi.

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Mr. Wynn and his related companies have also developed and built a highly

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publicized casino resort in Macau called “Wynn Macau,” and built an enormous new resort

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adjacent to the “Wynn Las Vegas” resort called “Encore Wynn Las Vegas” (hereinafter

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“Encore”).

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13.

Wynn has spent a significant amount of time, resources and money in

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developing and promoting a restaurant, bar, nightclub and indoor and outdoor

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entertainment venue at Encore under the XS mark.

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Greenberg Traurig, LLP Suite 400 North, 3773 Howard Hughes Parkway Las Vegas, Nevada 89109 (702) 792-3773 (702) 792-9002 (fax)

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In furtherance of the development and promotion of Wynn’s XS mark, and to

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protect its trademark rights nationally, on February 4, 2008 Wynn filed two federal

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trademark applications for the marks XS as follows: (1) U.S. Application Serial No.

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77/388300 for XS in International Class 41 for “special event planning; arranging and

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conducting nightclub entertainment events; arranging for reservations for shows and other

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entertainment events; night club services;” and (2) U.S. App. Serial No. 77/388304 for XS

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in International Class 43 for “restaurant and bar services; cocktail lounges.” (See Printouts

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of Electronic Records of Federal Trademark Application Serial Nos. 77/388300 and

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77/388304, attached hereto as Exhibit 1.)

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15.

Additionally, to further develop and promote Wynn’s XS mark, on August 19,

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2008 Wynn acquired through assignment prior U.S. Registration No. 2,158,323 for the

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mark XS in International Classes 41 for “entertainment in the nature of indoor and outdoor

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amusement complexes” and 42 for “restaurant services, namely, restaurant and bar

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services” (the “XS Registration”) from XS Entertainment, Inc., Wynn’s predecessor in

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interest in the XS Registration.

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Registration No. 2,158,323, attached hereto as Exhibit 2.)

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16.

(See Printouts of Electronic Records of Federal

On November 28, 2008, Wynn successfully renewed the XS Registration in

its name, and as such, through its predecessor in interest Wynn’s date of first use of the XS

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mark in commerce for the identified services relates back December 22, 1996. (See id.)

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That registration is now incontestable.

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17.

NYLO filed an “Intent to Use” Federal Trademark Application for the mark XS

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in International Classes 35, 43 and 44 for, hotel, bar and restaurant services, among

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various other services, on February 6, 2007 (“NYLO’s XS Mark”).

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Electronic Records of Federal Trademark Application Serial No. 77/100257, attached

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hereto as Exhibit 3.)

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Greenberg Traurig, LLP Suite 400 North, 3773 Howard Hughes Parkway Las Vegas, Nevada 89109 (702) 792-3773 (702) 792-9002 (fax)

Document 1

18.

(See Printout of

Because NYLO’s XS mark was filed on an “Intent to Use” basis, there is no

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first date of use of the mark in commerce, and upon information and belief, to date NYLO

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has not begun using its XS mark in commerce for any of the services identified in its

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Federal Trademark Application Serial No. 77/100257. (See id.)

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19.

On April 22, 2009, NYLO sent a cease and desist letter to Wynn, claiming

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exclusive rights in the XS mark for the identified services and demanding that Wynn

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“immediately cease [its] use of ‘XS’ to avoid any conflict with NYLO, or contract NYLO’s

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General Counsel…to discuss licensing opportunities.” (See Correspondence from David E.

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Rogers, dated April 22, 2009, attached hereto as Exhibit 4.)

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20.

By and through the undersigned counsel, Wynn responded to NYLO’s April

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22, 2009 correspondence by teleconference with NYLO’s counsel David E. Rogers, Esq.,

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and directed his attention to Wynn’s valid ownership of its prior XS Registration and its

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actual use of the XS mark in commerce at Encore. Mr. Rodgers responded by requesting

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additional time to investigate Wynn’s assertion of priority of use of the XS mark, which

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request was granted by the undersigned.

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21.

On May 28, 2009, after having ample opportunity to investigate the facts

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surrounding Wynn’s ownership of the XS Registration and priority of use of the XS mark,

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NYLO sent correspondence to Wynn’s counsel, again demanding that Wynn cease all use

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of the XS mark, or enter into a licensing agreement with NYLO, and basing its second

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demand on the allegations that Wynn’s XS Registration was invalid because (1) its renewal

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was wrongly accepted by the United States Patent and Trademark Office; (2) the original 4. 418791567_1.DOC LV 418,791,567v1 7-3-09

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application was impermissibly broadened; and (3) the mark had been abandoned. (See

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Correspondence from David E. Rogers, dated May 28, 2009, attached hereto as Exhibit 5.)

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Based upon NYLO’s allegations that Wynn’s XS Registration is invalid, NYLO

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has asserted that Wynn only has common law trademark rights in the XS mark stemming

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from its actual use of the mark in commerce at Encore beginning in January of 2009, and

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NYLO claims that “[t]he filing date of NYLO’s ‘XS’ application predates these common-law

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rights and, when NYLO’s use commences, it would clearly have the right to enjoin Wynn’s

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use.” (See id.)

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Greenberg Traurig, LLP Suite 400 North, 3773 Howard Hughes Parkway Las Vegas, Nevada 89109 (702) 792-3773 (702) 792-9002 (fax)

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Due to NYLO’s threats and demands against Wynn, Wynn has a reasonable

apprehension that NYLO will file legal action against it.

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CLAIMS FOR RELIEF

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FIRST CLAIM FOR RELIEF

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Declaration as to Rights Pursuant to 28 U.S.C. § 2201 and Trademark Infringement

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under The Lanham Act, 15 U.S.C. § 1125(a)

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24.

Wynn incorporates the allegations in the preceding paragraphs as if set forth

fully herein. 25.

Declaratory relief actions are available when an actual case or controversy

exists between two parties. 26.

Beginning on April 22, 2009, NYLO has asserted that Wynn’s use of the XS

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mark constitutes an infringement of trademark rights allegedly held by NYLO in violation of

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The Lanham Act, and demanding, inter alia, that Wynn immediately cease and desist all

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use of the XS mark and similar variations thereof.

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27.

Wynn maintains that its use of the XS mark is lawful and does not infringe

upon the rights of NYLO.

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28.

Therefore, an actual case or controversy exists between the parties.

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29.

Wynn has no adequate remedy at law under administrative law and before

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the United States Patent and Trademark Office. 30.

NYLO’s assertions that Wynn is violating its legal rights irreparably injures 5.

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and adversely affects Wynn and, unless prevented by this Court, will continue to so affect

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Wynn's business and the immense investment it has made in the XS mark and attendant

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good will. To resolve the legal and factual questions raised by NYLO and to afford relief

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from the uncertainty and controversy which NYLO’s assertion has precipitated, Wynn is

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entitled to a declaratory judgment of its rights under 28 U.S.C. §§ 2201-02. Wynn’s use of

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the XS mark is not in violation of any rights NYLO might have pursuant to 15 U.S.C. §

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1125(a).

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Greenberg Traurig, LLP Suite 400 North, 3773 Howard Hughes Parkway Las Vegas, Nevada 89109 (702) 792-3773 (702) 792-9002 (fax)

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31.

Wynn hereby seeks a judicial declaration of its continued right to use the XS

mark free and clear of interference or harassment by NYLO and without any obligation or

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liability to NYLO.

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32.

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Wynn additionally seeks reimbursement of its attorneys’ fees and costs from

NYLO associated with bringing the action at hand.

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PRAYER FOR RELIEF

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WHEREFORE, Wynn respectfully requests that the Court grant the following relief:

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A.

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A determination and adjudication of the rights and liabilities of the parties with

regard to the XS marks as they relate to this dispute; B.

A declaration that Wynn’s use of the XS mark is lawful and does not infringe

upon any rights of NYLO; C.

A permanent injunction prohibiting NYLO from further vexing conduct or

harassment of Wynn; D.

An award of interests, costs, and attorneys’ fees incurred by Wynn in

prosecuting this action; and E.

All other relief to which Wynn is entitled.

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GREENBERG TRAURIG, LLP

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/s/ Mark G. Tratos

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Mark G. Tratos (Bar No. 1086) Peter H. Ajemian (Bar. No. 9491) 3773 Howard Hughes Pkwy, Suite 400N. Las Vegas, NV 89169

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Word Mark Goods and Services Standard Characters Claimed Mark Drawing Code Serial Number Filing Date Current Filing Basis Original Filing Basis Owner

XS IC 041. US 100 101 107. G & S: special event planning; arranging and conducting nightclub entertainment events; arranging for reservations for shows and other entertainment events; night club services

(4) STANDARD CHARACTER MARK 77388300 February 4, 2008 1B 1B

(APPLICANT) Wynn Resorts Holdings, LLC LTD LIAB CO NEVADA 3131 Las Vegas Blvd. South Las Vegas NEVADA 89109 Attorney of Record Lauri S. Thompson SERVICE MARK Type of Mark PRINCIPAL Register Live/Dead LIVE Indicator

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Word Mark Goods and Services Standard Characters Claimed Mark Drawing Code Serial Number Filing Date Current Filing Basis Original Filing Basis Owner Attorney of Record Type of Mark Register Live/Dead Indicator

XS IC 043. US 100 101. G & S: Restaurant and bar services; Cocktail lounges

(4) STANDARD CHARACTER MARK 77388304 February 4, 2008 1B 1B (APPLICANT) Wynn Resorts Holdings, LLC LTD LIAB CO NEVADA 3131 Las Vegas Blvd. South Las Vegas NEVADA 89109 Lauri S. Thompson SERVICE MARK PRINCIPAL LIVE

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Record 1 out of 1 ( Use the "Back" button of the Internet Browser to return to TESS) Typed Drawing Word Mark Goods and Services

XS IC 041. US 100 101 107. G & S: entertainment in the nature of indoor and outdoor amusement complexes. FIRST USE: 19961222. FIRST USE IN COMMERCE: 19961222 IC 042. US 100 101. G & S: restaurant services, namely, restaurant and bar services. FIRST USE: 19961222. FIRST USE IN COMMERCE: 19961222

Mark Drawing Code Serial Number Filing Date Current Filing Basis Original Filing Basis Published for Opposition Change In Registration Registration Number Registration Date Owner

(1) TYPED DRAWING 75193932 November 6, 1996 1A 1B February 24, 1998 CHANGE IN REGISTRATION HAS OCCURRED 2158323 May 19, 1998 (REGISTRANT) XS ENTERTAINMENT INC. CORPORATION DELAWARE 877 Supreme Drive Bensenville ILLINOIS 60106 (LAST LISTED OWNER) WYNN RESORTS HOLDINGS, LLC LIMITED LIABILITY COMPANY NEVADA 3131 LAS VEGAS BLVD. SOUTH LAS VEGAS NEVADA 89109

Assignment Recorded Attorney of Record Type of Mark Register Affidavit Text Renewal Live/Dead Indicator

ASSIGNMENT RECORDED Peter H. Ajemian SERVICE MARK PRINCIPAL SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20081128. 1ST RENEWAL 20081128 LIVE

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Word Mark Goods and Services

XS IC 035. US 100 101 102. G & S: Providing facilities for business meetings; Managing and operating hotels, resort hotels and business conference centers; Franchising, namely, offering technical assistance in the establishment and/or operation of hotels and resorts; Offering technical assistance in the establishment and/or operation of restaurants; On-line business directories featuring hotels, resorts, restaurants, bars and spas; Restaurant franchising IC 043. US 100 101. G & S: Hotels; Resort Hotels; Resort Lodging services; Motels; Tourist homes; Reservations for hotel rooms; Providing travel lodging information services and travel lodging booking agency services for travelers; Travel agency services, namely, making reservations and booking for temporary lodging; Hotel, bar and restaurant services; Preparation of food and beverages; Serving of food and drink/beverages; Cafe Restaurants; Delicatessens; Restaurant reservation services; Self service restaurants; Carry out/take out restaurants; Bar services; Coffee house and snack-bar services; Wine bars; Providing convention facilities; Provision of conference, exhibition and meeting facilities; Providing banquet and social function facilities for special occasions; Catering for the provision of food and beverages; Arena services, namely, providing facilities for sports, concerts, conventions and exhibitions; Health resort services, namely, providing food and lodging that specialize in promoting patron's general health and well being IC 044. US 100 101. G & S: Health spa services for health and wellness of the body and spirit offered at a health resort; Health spa services, namely, cosmetic body care services; and providing sauna, hot tub and Turkish bath facilities

Standard Characters Claimed Mark Drawing Code Serial Number Filing Date Current Filing Basis Original

(4) STANDARD CHARACTER MARK 77100257 February 6, 2007 1B

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July 31, 2007 (APPLICANT) NYLO Hotels, LLC LIMITED LIABILITY COMPANY DELAWARE 260 Peachtree Street, NW, Suite 2301 Atlanta GEORGIA 30303 David E. Rogers SERVICE MARK PRINCIPAL LIVE

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