Jockey Club, Inc. v. Jockey Club of Las Vegas, Inc.

Citation595 F.2d 1167
Decision Date30 April 1979
Docket NumberNo. 77-1408,77-1408
PartiesThe JOCKEY CLUB, INC., and Jockey Clubs International, Inc., Plaintiffs-Appellants, v. JOCKEY CLUB OF LAS VEGAS, INC., Jockey Club Corp., Sultan Corporation and Scribe Property Group, Inc., Defendants-Appellees.
CourtUnited States Courts of Appeals. United States Court of Appeals (9th Circuit)

Leslie D. Taggart (argued), New York City, for plaintiffs-appellants.

Roland N. Smoot, Los Angeles, Cal., Leonard I. Gang, Las Vegas, Nev., for defendants-appellees.

Appeal from the United States District Court for the District of Nevada.

Before SNEED and KENNEDY, Circuit Judges, and D. WILLIAMS, * District Judge.

SNEED, Circuit Judge:

Plaintiffs appeal from a judgment in favor of defendants in a suit for trade name and service mark infringement and for unfair competition under 15 U.S.C. § 1125(a). The case was tried before the District Court for the District of Nevada without a jury. Jurisdiction of the district court was founded upon 15 U.S.C. § 1125(a) and 28 U.S.C. § 1338. We affirm.

Plaintiffs operate condominium apartments with a private membership club on the premises in Miami, Florida. They also operate a hotel in St. Croix and have plans for further expansion under the Jockey Club name. Although restaurants and bars in many cities use the name Jockey Club, apparently plaintiffs were the first to use it in connection with such a condominium and club. Defendants operate a subsequently created condominium and club facility in Las Vegas under the Jockey Club name. Plaintiffs contend that the name Jockey Club is unique as applied to its facility and that defendants should not be allowed to use this name for a similar facility that caters to the same type of clientele.

In both trademark and trade name cases, the test of infringement is whether a likelihood of confusion exists. Fleischmann Distilling Corp. v. Maier Brewing Co., 314 F.2d 149, 151-52, 160 (9th Cir.), Cert. denied, 374 U.S. 830, 83 S.Ct. 1870, 10 L.Ed.2d 1053 (1963). Each case turns on its own facts. The factors to be considered in applying this test include "the strength or weakness of the marks, similarity in appearance, sound, and meaning, the class of goods in question, the marketing channels, evidence of actual confusion, and evidence of the intention of defendant in selecting and using the alleged infringing name." J. B. Williams Co. v. Le Conte Cosmetics, Inc., 523 F.2d 187, 191 (9th Cir. 1975), Cert. denied, 424 U.S. 913, 96 S.Ct. 1110, 47 L.Ed.2d 317 (1976). The question of likelihood of confusion can be one of fact or law. Id. at 190.

In this case the trial court's conclusion was predicated upon the resolution of three critical factual issues the strength or weakness of the mark in question, the existence or no of a secondary meaning (I. e., whether the mark indicates the source of the product), and defendants' motives in adopting "Jockey Club" as the name of their Las Vegas facility. The trial court's findings of fact are not to be set aside unless clearly erroneous. See id. at 190-91; Carter-Wallace, Inc. v. Procter & Gamble Co., 434 F.2d 794, 799 (9th Cir. 1970).

The district court found that "the term Jockey Club is neither fictitious, fanciful nor arbitrary. It is not distinctive immediately and of itself." Clerk's Record at 456. See HMH Publishing Co. v. Brincat, 504 F.2d 713, 717-18 (9th Cir. 1974). Plaintiffs, the court found, chose the name because of its known connotations of wealth and high social status....

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6 cases
  • Sega Enterprises Ltd. v. Maphia, C 93-04262 CW.
    • United States
    • U.S. District Court — Northern District of California
    • December 18, 1996
    ...the goods. New West Corp. v. NYM Co. of California, Inc., 595 F.2d 1194, 1201-02 (9th Cir.1979); see also Jockey Club, Inc. v. Jockey Club of Las Vegas, 595 F.2d 1167 (9th Cir.1979). The latter element can be broken down into two requirements: (a) that use of the mark is likely to cause con......
  • Sony Computer Entertainment America v. Gamemasters
    • United States
    • U.S. District Court — Northern District of California
    • November 4, 1999
    ...suit and 2) likelihood of confusion or mistake amongst the public from the defendants' use of the marks. Jockey Club, Inc. v. Jockey Club of Las Vegas, 595 F.2d 1167 (9th Cir.1979). 14. Plaintiffs have provided the Court with trademark registration certificates for the titles and designs fo......
  • Sega Enterprises Ltd. v. Maphia
    • United States
    • U.S. District Court — Northern District of California
    • March 28, 1994
    ...and (2) that the Defendants' use of the mark is likely to cause confusion or mistake among the public. See Jockey Club, Inc. v. Jockey Club of Las Vegas, 595 F.2d 1167 (9th Cir.1979). 27. There is no question that the trademarks at issue are owned by Sega. See Compl.Exhs. A, F. Sega's feder......
  • Carson Mfg. Co., Inc. v. Carsonite Intern. Corp., Inc.
    • United States
    • U.S. Court of Appeals — Ninth Circuit
    • October 13, 1981
    ...(quoting Scott Paper Co. v. Scott's Liquid Gold, Inc., 589 F.2d 1225, 1229 (3d Cir. 1978); accord Jockey Club, Inc. v. Jockey Club of Las Vegas, Inc., 595 F.2d 1167, 1168 (9th Cir. 1979) (quoting Fleischmann Distilling Corp. v. Maier Brewing Co., 314 F.2d 149, 151-52 (9th Cir. 1963)). Thoug......
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