Trademark Law

Las Vegas Review Journal Sues Companies Over ?The Best of Las Vegas?

By Ryan Gile

Stephens Media LLC (?Stephens?), the owner of the Las Vegas newspaper The Las Vegas Review Journal, has sued three companies for trademark infringement over the use of the mark ?The Best of Las Vegas.? Two of the lawsuits were filed earlier this week and one filed earlier this month. See Stephens Media LLC v. Gault Millau, Inc., Case No. 09-cv-02403 (D. Nev. December 21, 2009) (complaint here); Stephens Media LLC v. US Commerce Association et al, Case No. 09-cv-02405 (D. Nev. December 21, 2009) (complaint here); and Stephens Media LLC v. CitiHealth, L.L.C., Case No. 09-cv-02285 (D. Nev. December 2, 2009) (complaint here).

An article on the lawsuits, written by the Las Vegas Sun (the print version of which is owned by a separate company, but distributed with the Review Journal), can be found here.

Stephens has several federal trademark registrations for both the design mark ?The Best of Las Vegas? (pictured above) and the word mark ?Best of Las Vegas? including:

• The design mark THE BEST OF LAS VEGAS for ?section of a newspaper featuring consumer preferences and recommendations regarding people, places, goods, services, restaurants, entertainment, arts, sports and recreation in the Las Vegas area?;
• The design mark THE BEST OF LAS VEGAS for ?Newspaper articles, periodicals and pamphlets featuring general information about people, places, goods, services, restaurants, entertainment, arts, sports and recreation; paper award certificates?;
• The word mark BEST OF LAS VEGAS for ?Newspaper articles, periodicals and pamphlets featuring general information about people, places, goods, services, restaurants, entertainment, arts, sports and recreation; paper award certificates?;
• The word mark BEST OF LAS VEGAS for ?promoting the sale of goods and services of others by conducting and disseminating business surveys featuring consumer preferences and recommendations regarding people, places, goods, services, restaurants, entertainment, arts, sports and recreation in the Las Vegas area?; and
• The word mark BEST OF LAS VEGAS for ?providing a web site featuring business and consumer preferences and recommendations regarding people, places, goods, services, restaurants, entertainment, arts, sports and recreation in the Las Vegas area.

For those of you wondering how Stephens could possibly obtain trademark registrations for such a descriptive mark, the answer lies in Section 2(f) of the Trademark Act which allows a trademark owner to register a descriptive mark on the basis of acquired distinctiveness. All of the above marks are registered on the Principal Register based on a Section 2(f) claim of acquired distinctiveness (in-part for the design marks do have a distinctive design) ? and all registrations have disclaimers of the word ?Las Vegas.?

According to the complaint against Gault Millau, its travel website gayot.com has a section named ?The Best of Las Vegas Top Restaurants Hotels Travel Guide? (click here to see what I could find) that Stephens finds infringing.

As for the complaint against US Commerce Association, the company is allegedly selling ?award? plaques ($80 each) or award trophies ($180 each) to small businesses by sending e-mails stating that they have won a ?Best of Las Vegas Award? which are bestowed upon such businesses by US Commerce Association. [Comment: kind of like those scam Who?s Who?s directories that will honor you by listing you in their "Who's Who" book ? with the payment of a fee which gets you a copy of the book listing the names of thousands of others suckers as well as a pretty piece of paper]. Stephens feels that the company's actions harms the goodwill associatd with its ?Best of Las Vegas? marks.

Finally, the lawsuit against CitiHealth relates to the company?s publication of a magazine in December 2008 called ?Healthy Living Las Vegas? that included the phrase on the cover ?Best of Las Vegas? (the cover picture appeared online as well at www.citihealth.com). Las Vegas Sun reporter Steven Green spoke with the publisher of the Healthy Living, who stated that the company was not aware of Stephens? trademarks for ?Best of Las Vegas? at the time the magazine was published and that after the company received notice from Stephens, the company took action to remove the magazines from circulation and removed it from the website. [So why the lawsuit after all this time? That?s the real question isn?t it?]

Full post as published by Las Vegas Trademark Attorney on December 23, 2009 (boomark / email).