Orient-Express Hotels, Inc.v.Cipriani Group Inc. Hotel Cipriani SrL v. Cipriani Group Inc.

Trademark Trial and Appeal Board

May 27, 2008

OPP (T.T.A.B. May. 27, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION
IS NOT A PRECEDENT
OF THE T.T.A.B.

DUNN
Mailed: May 27, 2008

Opposition No. 91176217
Opposition No. 91177038

Orient-Express Hotels Inc.

v.

Cipriani Group Inc.

Opposition No. 91176218
Opposition No. 91177039

Hotel Cipriani SrL

v.

Cipriani Group Inc.

Before Walters, Zervas, and Mermelstein, Adminstrative
Trademark Judges:

Cipriani Group Inc. filed applications for the mark
CIPRIANI for real estate and real estate development
services (Application Serial No. 78572590) and restaurant
and food delivery services (Application Serial No.
78615135). Orient-Express Hotels Inc. and Hotel Cipriani
SrL separately filed notices of opposition against both
Opposition Nos. 91176217, 91176218, 91177038, and 91177039
applications, both claiming that applicant’s use and
registration of CIPRIANI is barred by an agreement between
the parties reached in settlement of a district court
infringement action, and that the specimens submitted in
support of the applications were inadequate. Further,
Orient-Express Hotels Inc. has pleaded that there is a
likelihood of confusion between the mark of its pleaded
Registration No. 2146899 and the applied-for marks, and
Hotel Cipriani SrL has pleaded that there is a likelihood of
confusion between its common law use of the mark HOTEL
CIPRIANI for hotel and restaurant services and the applied-
for marks.
In each proceeding applicant filed an answer in which
it denies the salient allegations of the notice of
opposition and asserts unclean hands as an affirmative
defense. On October 10, 2007, the Board consolidated the
four proceedings and accepted applicant’s amended answers
which clarified that applicant's unclean hands defense was
based on applicant’s allegation that opposer violated the
settlement agreement by registering the mark CIPRIANI in
Europe and opposing applicant’s use and registration of the
mark CIPRIANI LONDON in Europe.
On December 28, 2007, opposers filed a motion for
summary judgment in the consolidated proceeding on its claim
that registration of the two applications is barred by the
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Opposition Nos. 91176217, 91176218, 91177038, and 91177039
agreement between the parties reached in settlement of the
district court infringement action.
On January 7, 2008, the Board suspended proceedings
pending decision on the motion for summary judgment, and
granted opposer Orient-Express Hotels Inc.’s consented
motion to amend the notices of opposition in Opposition Nos.
91176217 and 91177039 to specify that it was opposer’s
predecessor which was a party to the settlement agreement.
In the same order, the Board sua sponte struck opposer’s
claim that the specimens submitted in support of the
applications were inadequate, finding that the allegations
related to an ex parte matter which did not state a valid
basis for opposition. Applicant subsequently filed a second
amended answer denying the salient allegations of the
amended notices of opposition.

THE SETTLEMENT AGREEMENT
Before turning to the provisions of the settlement
agreement in the infringement action, namely, in Sea
Containers America, Inc. and Hotel Cipriani, SpA v. Harry
Cipriani, Inc., Vittoria Corporation, Resteq Corporation and
Arrigo Cipriani (92 Civ. 1686 (MP), United States District
Court for the Eastern District of New York), approved by the
district court on April 4, 1997, the Board notes that, while
the parties to the agreement and the parties involved in the
3
Opposition Nos. 91176217, 91176218, 91177038, and 91177039
consolidated opposition are not identical, neither party
disputes that it is subject to the agreement. On September
16, 1997, Sea Containers America Inc., the first listed
plaintiff in the civil action, recorded a name change to
Orient-Express Hotels Inc. in connection with pleaded
Registration No. 2146899 (Reel 1634, Frame 0979). Orient-
Express Hotels Inc. is the opposer in Opposition Nos.
91176217 and 91177038. With respect to Hotel Cipriani, SpA,
the second listed plaintiff in the civil action, Hotel
Cipriani SrL maintains that Hotel Cipriani, SpA modified its
form of organization under Italian law and was thereafter
known as Hotel Cipriani, SrL, which is the opposer in
Opposition Nos. 91176218 and 91177039. See opposer's
summary judgment motion at p. 2. Hotel Cipriani, SpA and
Hotel Cipriani, SrL are essentially the same legal entity.
As to the defendants to the civil action, opposer’s
motion for summary judgment was accompanied by a copy of
applicant’s August 23, 2006 response to the examining
attorney’s refusal of registration based on the likelihood
of confusion with opposer’s registration. Applicant’s
response refers to its earlier submission of the settlement
agreement and states (page 3) “the defendants in [the
district court action] were the parent organizations of
Applicant, their successors in interest or in the case of
Harry Cipriani, Inc. part of the US Group of Cipriani
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Opposition Nos. 91176217, 91176218, 91177038, and 91177039
companies … Arrigo Cipriani … also controls Applicant …” and
“Arrigo Cipriani is currently a director of Cipriani
International SA and effectively is the head of the Cipriani
organization. This organization owns or controls all
Cipriani organizations worldwide. In the U.S. Cipriani
companies include Cipriani USA Inc., the Applicant Cipriani
Group Inc. and various other companies. Hence, the
submitted Settlement Agreement is binding on the Applicant.”
In view of the foregoing, the Board finds that the parties
to the consolidated opposition are bound by the provisions
of the settlement agreement reached in the district court
infringement action.
The agreement itself is brief, stating in relevant
part:
1. [Opposer] may use the name HOTEL CIPRIANI in
the United States in connection with the hotel
business. In addition, [Opposer] may operate
restaurants in a hotel which it owns or manages in
the United States which shall be identified as
HOTEL CIPRIANI RESTAURANT or RESTAURANTE HOTEL
CIPRIANI or its equivalent. [Opposer] may not in
any such restaurant use the name CIPRIANI alone or
the names HARRY CIPRIANI or BELLINI BY CIPRIANI,
and [Opposer] will not commence use of the HOTEL
CIPRIANI name in a restaurant located in a city in
which [Applicant] is already using the CIPRIANI
name in a restaurant.

2. [Applicant] may conduct any business it
chooses to engage in, providing that it is
designated, with or without the bartender logo, as
CIPRIANI with the identity of the product or
service offered or any other descriptive terms or
name except use of the word HOTEL in connection
therewith.

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Opposition Nos. 91176217, 91176218, 91177038, and 91177039
3. Both parties consent to registration by the
other in the United States Patent and Trademark
Office consistent with the rights set forth in
paragraphs one (1) and two (2) above.
The agreement includes two additional provisions which
provide that applicant may exhaust its present inventory of
products and packaging with only the name CIPRIANI, and that
require the parties to maintain the quality of their goods
and services.

OPPOSERS’ MOTION FOR SUMMARY JUDGMENT
Summary judgment is an appropriate method of disposing
of cases in which there are no genuine issues of material
fact in dispute, thus leaving the case to be resolved as a
matter of law. See Fed. R. Civ. P. 56(c). A party moving
for summary judgment has the burden of demonstrating the
absence of any genuine issue of material fact, and that it
is entitled to summary judgment as a matter of law. See
Celotex Corp. v. Catrett, 477 U.S. 317 (1986). A genuine
dispute with respect to a material fact exists if sufficient
evidence is presented that a reasonable fact finder could
decide the question in favor of the non-moving party. See
Opryland USA Inc. v. Great American Music Show, Inc., 970
F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992). Thus, all doubts
as to whether any factual issues are genuinely in dispute
must be resolved against the moving party and all inferences
must be viewed in the light most favorable to the non-moving
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Opposition Nos. 91176217, 91176218, 91177038, and 91177039
party. See Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d
200, 22 USPQ2d 1542 (Fed. Cir. 1992).
In support of its motion for summary judgment, opposers
contend that the plain wording of the agreement precludes
use and registration by either party of the term CIPRIANI
alone, and that the provision applicable to applicant states
that any business of applicant must be designated CIPRIANI
with “the identity of the product or service offered or any
other descriptive terms or name”, except HOTEL. Because
applicant now seeks to register the term CIPRIANI alone,
without “the identity of the product or service offered or
any other descriptive terms or name”, opposers contend that
the opposed applications are barred by the agreement, and
that the Board should enter summary judgment for opposers.
In opposition to the motion for summary judgment,
applicant contends that while the agreement bars opposers’
ability to use the term CIPRIANI alone, the agreement does
not contain a parallel restriction on applicant. Rather,
applicant argues that “[t]he Settlement Agreement just does
not mandate Opposers’ consent so that it does not preclude
Opposers from objecting to such use or from opposing
Applicant’s attempts to register the mark.” Applicant also
contends that it has a valid defense to any contract
estoppel claim inasmuch as opposers’ violation of the
7
Opposition Nos. 91176217, 91176218, 91177038, and 91177039
settlement agreement demonstrates unclean hands in bringing
this opposition.
As a preliminary matter, we note that the motion for
summary judgment was accompanied by the settlement
agreement. Inasmuch as the agreement provides evidence of
opposers’ real interest in this proceeding, opposers have
established its standing. Vaughn Russell Candy Co. v.
Coolies in Bloom Inc., 47 USPQ2d 1635, 1638 n. 7 (TTAB
1998).
“Whether a mark otherwise entitled to registration is,
nevertheless, barred therefrom by an agreement between the
parties … [is an issue] within the jurisdiction of the board
and may constitute an independent basis for sustaining the
opposition.” Kimberly-Clark Corp. v. Fort Howard Paper Co.,
772 F.2d 860, 863, 227 USPQ 36, 38 (Fed. Cir. 1985). The
Board may consider “the agreement, its construction, or its
validity if necessary to decide the issues properly before
[the Board].” See M-5 Steel Mfg. Inc. v. O'Hagin's Inc., 61
USPQ2d 1086, 1094 (TTAB 2001), quoting Selva & Sons, Inc. v.
Nina Footwear, Inc., 705 F.2d 1316, 1324, 217 USPQ 641, 647
(Fed. Cir. 1983). Accord, 2 J. McCarthy, McCarthy on
Trademarks and Unfair Competition, §18:82 (4th ed. 2004)
(“Many consent agreements also embody a promise not to use a
trademark in a certain format or on a certain line of goods.
Such agreements are routinely upheld and enforced.”).
8
Opposition Nos. 91176217, 91176218, 91177038, and 91177039
The construction of an agreement is a question of law,
and the meaning and interpretation of a contract may be
resolved by the Board on summary judgment. See Interstate
Gen. Gov't Contractors, Inc. v. Stone, 980 F.2d 1433 (Fed.
Cir. 1992). Here, the parties' settlement agreement lacks a
choice of law clause. The Board therefore applies general
principles of contract interpretation. In interpreting
contracts, “unless a different intention is manifested, …
where language has a generally prevailing meaning, it is
interpreted in accordance with that meaning.” See
Restatement (Second) of Contracts, Section 202(3)(a) (1981).
Thus, the interpretation of an agreement must be based, not
on the subjective intention of the parties, but on the
objective words of their agreement. See Novamedix Ltd. v.
NDM Acquisition Corp., 166 F.3d 1177, 49 USPQ2d 1613 (Fed.
Cir. 1999).
Here, the settlement agreement requires applicant to
designate its business “as CIPRIANI with the identity of the
product or service offered or any other descriptive terms or
name.” This is a very plain restriction of applicant’s
right to use the term CIPRIANI, and flatly prohibits
applicant’s use of the term CIPRIANI without the identity of
the product or service or other descriptive term or name.
We see no basis in the words of the agreement for
applicant’s contention that it may use the term alone
9
Opposition Nos. 91176217, 91176218, 91177038, and 91177039
without opposers’ consent. Based on our construction of the
settlement agreement, applicant is barred from use of the
term CIPRIANI alone. Because applicant may not seek
registration of a mark which it cannot use, opposers are
entitled to judgment on its contract estoppel claim.
We turn then to a determination of whether applicant
has established its affirmative defense of unclean hands,
based on opposers’ alleged violation of the settlement
agreement through its efforts to register the mark CIPRIANI
outside the United States, and to oppose and bring civil
actions against the use of CIPRIANI by applicant outside the
United States. As set forth above, with respect to
opposers, the agreement restricts opposers’ use in the
United States (Paragraph 1) and sets forth opposers’ consent
to registration by applicant in the United States Patent and
Trademark Office consistent with rights set forth in the
agreement (paragraph 3). On its face, the agreement does
not address actions taken by opposers outside the United
States, and applicant has failed to prove its affirmative
defense of unclean hands based on an alleged violation of
the agreement.
In sum, there is no genuine issue of material fact in
regard to opposers’ claim that the settlement agreement bars
registration of the opposed applications for the term
CIPRIANI alone, and opposers are entitled, as a matter of
10
Opposition Nos. 91176217, 91176218, 91177038, and 91177039
law, to judgment in its favor in the opposition. Further,
there is no genuine issue of material fact in regard to
applicant's affirmative defense of unclean hands, and
opposers are entitled to judgment in its favor on this
defense. It was applicant's duty, once opposers
demonstrated that it is entitled to judgment on its contract
estoppel claim, to establish that applicant has a valid
affirmative defense and genuine issues of fact exist, for
resolution by trial, in regard to such defense. Applicant
has failed to do so.
Accordingly, the Board enters summary judgment in favor
of opposers on both its contract estoppel claim, and on
applicant's affirmative defense of unclean hands.
In view our disposition of the contract estoppel claim
and unclean hands defense, we need not address opposers’
additional claims regarding likelihood of confusion and the
adequacy of applicant's specimens, or Orient-Express Hotels
Inc.’s pending request for reconsideration of the Board’s
interlocutory order striking its claim regarding the
adequacy of the specimens.
However, Orient-Express Hotels Inc. is advised that its
allegations regarding the adequacy of the specimens and the
examining attorney’s acceptance of the specimens are not
legally sufficient. Asserted error by an examining attorney
is not a proper ground for opposing an application. Demon
11
Opposition Nos. 91176217, 91176218, 91177038, and 91177039
Int’l LC v. Lynch, 86 USPQ2d 1058, 1060 (TTAB 2008). See
also Phonak Holding AG v. ReSound GmbH, 56 USPQ2d 1057 (TTAB
2000)(failure to enforce requirement of filing of foreign
registration is examination error and not a ground for
opposition); Century 21 Real Estate Corp. v. Century Life of
America, 10 USPQ2d 2034, 2035 (TTAB 1989) (the issue of the
adequacy of the specimens is solely a matter of ex parte
examination).
Accordingly, opposers’ motion for summary judgment is
GRANTED, the consolidated opposition is sustained, and
registration of all four opposed applications is refused.
***
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