Taj Mahal Enterprises, Ltd. v. Trump
| Decision Date | 15 August 1990 |
| Docket Number | Civ. A. No. 90-1503 (JFG). |
| Citation | 745 F. Supp. 240 |
| Parties | TAJ MAHAL ENTERPRISES, LTD., Plaintiff, v. Donald J. TRUMP, Trump Taj Mahal Associates Limited Partnership, and Trump Taj Mahal, Inc., Defendants. |
| Court | U.S. District Court — District of New Jersey |
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John J. Barry, Clapp & Eisenberg, Newark, N.J., John M. Donnelly, Clapp & Eisenberg, Atlantic City, N.J., W. Mack Webner, Baker & Hostetler, Washington, D.C., for defendants Donald J. Trump, Trump Taj Mahal Associates Limited Partnership, and Trump Taj Mahal, Inc.
Robert M. Skolnik, West Long Branch, N.J., John K. Donaghy, Brandywine, Md., Robert G. McMorrow, Sughrue, Mion, Zinn, MacPeak & Seas, Washington, D.C., for plaintiff Taj Mahal Enterprises, Ltd.
Plaintiff, Taj Mahal Enterprises, Ltd., brought this action against defendants, Donald J. Trump, Trump Taj Mahal Associates Limited Partnership and Trump Taj Mahal, Inc., for service mark infringement and unfair competition under the Lanham Act, 15 U.S.C. § 1051 et seq., as well as common law unfair competition. Plaintiff owns a restaurant under the registered mark TAJ MAHAL, and it alleges that defendants have infringed this mark by naming their new casino and hotel in Atlantic City, New Jersey, the TRUMP TAJ MAHAL. On June 4, 1990, the court denied plaintiff's motion for a preliminary injunction that would have stopped defendants' continued use of the name TAJ MAHAL. At this time, defendants have moved for summary judgment and for dismissal of plaintiff's punitive damages claim. Defendants also have moved for an award of attorneys' fees under 15 U.S.C. § 1117.
Plaintiff opened an Indian restaurant in 1965 and named it the TAJ MAHAL. The restaurant has been located at 1327 Connecticut Avenue, N.W., in Washington, D.C., for the past 25 years. It was initially owned and operated by plaintiff, but now plaintiff leases the restaurant to C & M, Inc., which currently operates it. C & M, Inc. has operated the restaurant since May 1, 1984, and C & M, Inc. is now solely responsible for the advertising and promotion of the TAJ MAHAL restaurant, as well as for hiring and managing the employees and purchasing, preparing and serving the food. C & M Inc. pays $4,500 rent plus property taxes to plaintiff each month.
Plaintiff is a corporation owned entirely by Raj Mallick and incorporated under the laws of the District of Columbia. Mr. Mallick owns other establishments, including hotels and other restaurants, in the District of Columbia, California, Pennsylvania and Virginia. There is no evidence that any of Mr. Mallick's other properties is or has been named the TAJ MAHAL. In fact, plaintiff has never done business outside of the District of Columbia. Plaintiff's sole current business is the collection of rent for the TAJ MAHAL restaurant. On June 23, 1981, the United States Patent and Trademark Office granted plaintiff registered service mark number 1,158,610 for the provision of restaurant services under the name TAJ MAHAL.
The TAJ MAHAL restaurant serves exclusively Indian cuisine, and it is located on the second floor of a two story building in a commercial section of Washington. In order to get to the restaurant, a patron must climb a flight of stairs with 25 steps. The restaurant seats approximately 74 people at a given time, and it employs six people. Its gross sales are approximately $300,000 per year or $830 per day. The most expensive single dish on plaintiff's menu is shrimp biryani, which is rice cooked with shrimp and flavored with nuts and spices, at a cost of $12.25. The complete "Taj Dinner" costs $18.00 and includes soup, meat curry, vegetable, rice, raita, puri, dessert, and tea or coffee.
Plaintiff has submitted a list of 25 patrons who have dined at the restaurant over the past 25 years to show the national and international scope of its clientele. During that time, diners at the TAJ MAHAL have come from such faraway places as India, Pakistan, Canada, France, and Great Britain, in addition to such places as Stamford, Connecticut, Glenolden, Pennsylvania and Bismarck, North Dakota. The TAJ MAHAL restaurant advertises by using its name on its napkins and menus, hand-billing at subway stations in Washington, and purchasing space in the Yellow Pages. The restaurant is also advertised in magazines, local Indian-American and Pakistani-American newspapers, and local hotel patron guides. C & M, Inc., not plaintiff, pays for the advertising.
At least 24 other restaurants in the United States currently are named TAJ MAHAL, including two in New Jersey and two in the metropolitan New York area. Two such TAJ MAHAL restaurants, located in Colonia, New Jersey and Seattle, Washington, have used that name for 14 years. Prior to February 1990, plaintiff never tried to stop any other restaurant from using the name TAJ MAHAL. At least 70 businesses in the United States have used the name TAJ MAHAL, and plaintiff has never brought suit to stop any of them from using its name. In February 1990, plaintiff had a company name search conducted in order to uncover other uses of the name TAJ MAHAL. As a result of the search, plaintiff sent five cease and desist letters to third parties who use the mark without plaintiff's authorization. Plaintiff sent these letters to restauranteurs in San Francisco, Sacramento and Fresno, California, as well as Dallas, Texas and West Hempstead, New York.
Mr. Mallick, plaintiff's owner, admits that he learned about the defendants' new establishment, the TRUMP TAJ MAHAL CASINO-RESORT, in September 1989. Mr. Mallick visited Atlantic City in August-October 1989 and saw the building which is now the TRUMP TAJ MAHAL. He denies seeing the name on the building. In early February 1990, defendants attempted to buy the registered TAJ MAHAL service mark from plaintiff. On February 22, 1990, plaintiff's attorney wrote defendants and requested that they cease using the name TAJ MAHAL for their hotel and casino project. Except for defendants, plaintiff apparently did not send cease and desist letters to any other New Jersey establishment which uses the name TAJ MAHAL.
The facility which now bears the name TRUMP TAJ MAHAL was first named the TAJ MAHAL in the Spring of 1986, before it was purchased by defendants. The previous owners, Merv Griffin and Resorts International, spent over $2 million to promote this project, and they sold the facility to defendants sometime in 1987. Signs bearing the name TAJ MAHAL were placed on the facility during its construction, at least as early as 1988. The TRUMP TAJ MAHAL cost hundreds of millions of dollars to build, and its estimated operating costs are $1.2 million per day. Defendants opened the hotel and casino on April 2, 1990. They estimate that the property's daily gross income will at least equal the daily operational costs.
The TRUMP TAJ MAHAL is the tallest building in New Jersey at 51 stories, and it contains 4.2 million square feet of space, 1250 guest rooms, a 120,000 square foot casino, and 175,000 square feet of meeting and conference rooms. The most expensive suite, the Alexander the Great Suite, costs $10,000 per night. The TRUMP TAJ MAHAL employs over 7,000 people and contains ten restaurants and four cocktail lounges. None of the restaurants are named TAJ MAHAL or feature Indian cuisine. The variety of restaurants include a steak house, a delicatessen and a seafood restaurant, in addition to others which serve ethnic foods such as Italian and Oriental cuisine.
Defendants spent $3.2 million advertising the project between November 1988 and April 2, 1990. The signs which currently display the name TRUMP TAJ MAHAL were placed on the building in October 1988, and they cost several thousand dollars per letter. Moreover, the name TAJ MAHAL, along with the name TRUMP, appears on the four faces of the building, and the name TRUMP TAJ MAHAL appears literally thousands of times throughout the hotel and casino. For instance, this name is found on each of the 3,008 slot machines in the casino. In many of defendants' signs, the term TAJ MAHAL appears in different lettering and proportion than does the name TRUMP. The cost of the signs bearing the names TAJ MAHAL or TRUMP TAJ MAHAL was $11 million.
Prior to June 20, 1990, no one had expressed any confusion to plaintiff concerning its possible relationship to defendants' casino. Since that time, eight individuals have indicated some confusion to plaintiff's owner, Mr. Mallick. Only four of these people have submitted affidavits, and the other four instances of confusion appear in copies of letters or handwritten notes to Mr. Mallick. These eight people appear to be an assortment of Mr. Mallick's personal friends, business associates and patrons. None of these people actually went to the TRUMP TAJ MAHAL and patronized it under the mistaken impression that it was related to plaintiff's restaurant. Their confusion was manifested in one of two ways. Some of them simply expressed concern to Mr. Mallick about any links he may have to defendant Donald Trump and his allegedly beleaguered financial empire. Others asked Mr. Mallick to help them get reservations or discounts at the TRUMP TAJ MAHAL under the belief that he was associated with the casino in some way. Defendants have never heard anyone express confusion about their relationship, or lack of relationship, to plaintiff.
Although the underlying facts are undisputed, the parties strongly disagree about the propriety of granting summary judgment in this case. The parties' dispute emerges from the ambiguity about whether the element of consumer confusion is an issue of law or an issue of fact. See American Home Products v. Barr Laboratories, 834 F.2d 368, 370-71 & n. 2 (3d Cir. 1987) (); WSM, Inc. v. Tennessee Sales Co., 709 F.2d 1084, 1086 (6th Cir.1983) (issue of law). In response to this dispute, we...
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...must compare the appearance,sound and meaning of the marks, as well as the manner in which they are used." Taj Mahal Enters., Ltd. v. Trump, 745 F. Supp. 240, 247 (D.N.J. 1990). Marks "are confusingly similar if ordinary consumers would likely conclude that" the services presented under the......
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...a plaintiff fails to raise a genuine issue of material fact as to any one of the three elements."), citing Taj Mahal Enterprises, Ltd. v. Trump, 745 F.Supp. 240, 252-53 (D.N.J.1990); Woodsmith Publishing Co. v. Meredith Corp., 904 F.2d 1244 (8th Cir.1990). While our analysis could well stop......
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Radiance Found., Inc. v. Nat'Lass'N, Civil Action No. 2:13cv53.
...compare the appearance, sound and meaning of the marks, as well as the manner in which they are used.” Taj Mahal Enters., Ltd. v. Trump, 745 F.Supp. 240, 247 (D.N.J.1990). Marks “are confusingly similar if ordinary consumers would likely conclude that” the services presented under the marks......
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Radiance Found., Inc. v. Nat'l Ass'n for the Advancement of Colored People
...compare the appearance, sound and meaning of the marks, as well as the manner in which they are used.” Taj Mahal Enters., Ltd. v. Trump, 745 F.Supp. 240, 247 (D.N.J.1990). Marks “are confusingly similar if ordinary consumers would likely conclude that” the services presented under the marks......